Ex Parte Anderson et al

Patent Trial and Appeal Board

Jun 16, 2016

13212104 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/212, 104 08/17/2011
78833 7590 06/20/2016
DUKEW, YEE
YEE & ASSOCIATES P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Noel Wayne Anderson
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P20532-US 5583
EXAMINER
MARNE, KEVIN P
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
06/20/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOEL WAYNE ANDERSON and LARRY LEE HENDRICKSON
Appeal2014-005968
Application 13/212, 104
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Noel Wayne Anderson and Larry Lee Hendrickson ("Appellants")1
appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting
claims 1-28 in this application. The Board has jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Deere & Company as the real party in interest.
Appeal Br. 2.
Appeal2014-005968
Application 13/212, 104
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1 illustrates the subject
matter on appeal:
1. A method for managing soil compaction on a worksite,
comprising steps of:
generating a first map of soil compaction susceptibility of
at least a portion of the worksite;
generating a path within the worksite based on the first
map which minimizes the soil compaction while carrying out a
mission at the worksite;
guiding at least one vehicle along the path while
recording virtual foot parameters of the vehicle, wherein at
least one virtual foot parameter of the virtual foot parameters is
associated with a virtual foot of the vehicle comprising at least
one of a wheel, a track, a track wheel, an inflatable tire, a tire
with shape adjustment using magneto-rheological materials, a
tire with shape adjustment using electro-rheological materials
and a wheel which change footprint.
Appeal Br. 24 (Claims App., emphasis added).
REJECTIONS ON APPEAL
Claims 1, 2, 4, 5, 11, 12, 14, and 15 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Green (US 2012/0323452 Al, pub. Dec. 20,
2012).
Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Anderson (US 2007/0288167 Al, pub.
Dec. 13, 2007).
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Skotnikov (US 6,212,464B1, iss. Apr. 3,
2001).
2
Appeal2014-005968
Application 13/212, 104
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Adams (US 6,144,295, iss. Nov. 7, 2000).
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Wendte (US 2007/0068238 Al, pub. Mar. 29,
2007).
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Gallenberg (US 6,129,372, iss. Oct. 10, 2000).
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Craig (US 2009/0143936 Al, pub. June 4,
2009).
Claims 21, 22, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Pickett (US 2005/0228585 Al, pub. Oct. 13,
2005).
Claims 23, 24, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Green, Adams, and Craig.
ANALYSIS
A. Anticipation by Green
The method of independent claim 1 includes "recording virtual foot
parameters" (emphasis added), and independent claim 11 similarly recites a
data processor for recording virtual foot parameters. Appeal Br. 24, 26
(Claims App.). Appellants argue the Examiner errs in finding Green
discloses this mutual requirement. Appeal Br. 7-8; Reply Br. 2--4. For the
following reasons, we agree.
The Examiner pertinently cites Green's paragraph 56 as disclosing the
claimed recording of virtual foot parameters. Final Act. 12. That paragraph
states:
3
Appeal2014-005968
Application 13/212, 104
Moreover, the decision support system may further be
connected to a tyre pressure unit 92 which receives tyre
pressure data, and which outputs a signal suitable for
optimizing the tyre pressure in accordance with the soil
capacity of the work trajectory to be followed. Adjusting the
tyre pressure may assist in minimizing the impact of the work
vehicle on the soil.
Green i-f 56 (emphases added), Fig. 9; see also Spec. 3:15-18 (virtual foot
parameters include tire pressure). The Examiner interprets the claim term
"recorded" to mean "[t]o write, store, or otherwise preserve" information.
Final Act. 3. According to the Examiner, Appellants "overlook[] the fact the
tire pressure unit [92] disclosed in Green first receives the pressure data
prior to outputting a signal." Id. The Examiner reasons: "[W]hen the tire
pressure unit [92] in Green receives the tire pressure data the tire pressure
unit inherently stores the data, even if only temporarily, before outputting a
signal." Id. at 4 (emphasis added). The Examiner further states "the tire
pressure unit [92] in the Green reference has been interpreted to be a digital
system, rather than analog." Ans. 5.
Appellants concede that Green's paragraph 56 "describes that a tire
pressure unit [92] receives tire pressure data and outputs a 'signal' that is
suitable for optimizing tire pressure," but contend Green does not expressly
disclose the data or signal being "recorded" by unit 92. Appeal Br. 7.
Appellants further contend such recording "is not inherently performed by
'receiving' and 'outputting' a signal," and cite an analog transducer as a
component that receives data and outputs a signal without preserving or
recording the signal. Id.; Reply Br. 3. Thus, in Appellants' view,
"recording" of virtual foot parameters is not necessary to Green's operation,
4
Appeal2014-005968
Application 13/212, 104
and the Examiner has failed to present a basis in fact or technical reasoning
to establish inherency. Appeal Br. 7-8.
The Examiner responds that Appellants' discussion of an analog
transducer "is a mere assertion" unsupported by citation to Green's
disclosure, or explanation why Green should be interpreted to disclose tire
pressure unit 92 being an analog transducer. Ans. 6.
The Examiner's rejection is based on a theory of inherent disclosure.
"A reference may anticipate inherently if a claim limitation that is not
expressly disclosed 'is necessarily present, or inherent, in the single
anticipating reference."' In re Montgomery, 677 F.3d 1375, 1379-80 (Fed.
Cir. 2012) (quoting Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d
1325, 1337 (Fed. Cir. 2010) and Schering Corp. v. Geneva Pharm., Inc., 339
F.3d 1373, 1377 (Fed. Cir. 2003)). "The inherent result must inevitably
result from the disclosed steps; '[i]nherency ... may not be established by
probabilities or possibilities."' Id. at 1380 (quoting Bettcher Indus., Inc. v.
Bunzl USA, Inc., 661F.3d629, 639 (Fed. Cir. 2011) andin re Oelrich, 666
F.2d 578, 581(CCPA1981)).
We determine that a preponderance of evidence does not support the
Examiner's finding that Green's paragraph 56 inherently discloses
"recording" tire pressure data. Appellants assert an analog transducer is an
exemplary tire pressure unit 92 that would not record tire pressure data in
order to perform the functionality described in paragraph 56, and the
Examiner has not persuasively rebutted that assertion. It is the Examiner's
burden to establish inherent disclosure by a preponderance of evidence. The
Examiner does not cite any disclosure in Green to support the finding that
5
Appeal2014-005968
Application 13/212, 104
Green's tire pressure unit 92 is "a digital system, rather than analog."2 See
Ans. 5. Nor does the Examiner explain why tire pressure unit 92, if it were a
digital system, necessarily would have to "record" (i.e., write, store, or
otherwise preserve information according to the Examiner's definition of
"record") tire pressure data to perform the functionality described in Green's
paragraph 56.
The Examiner additionally states the outputting of a signal by Green's
tire pressure unit 92 is interpreted as recording tire pressure data. Ans. 6-7.
The Examiner cites a definition of "signal" as "[A ]nything, such as light,
sound, location, or movement which serves to convey information." Id. at 6
(citing Kaplan, Wiley Electrical and Electronics Engineering Dictionary).
According to the Examiner, Green's signal is a recording of tire pressure
data because it "conveys information about the tire pressure and that
information is stored in the signal during the transmission of the signal," and
"the term 'store' is synonymous with 'record."' Id.; see also id. at 5 (citing
Kaplan dictionary definition of "recording" as "[t]o write, store, or otherwise
preserve ... information").
Appellants reply that "[t]ransmitting a signal is not the same thing as
recording a signal," and "a signal is not inherently recorded when
transmitting the signal." Reply Br. 2. Appellants discuss an example in
which an outputted voltage signal is proportional to the tire pressure, but
nothing is recorded or stored in such outputting. Id. at 2, 3--4.
2 We acknowledge Green indicates the invention or some features thereof
can be implemented as software running on digital signal processors. Green
,-r 62. However, the Examiner does not cite that passage, or explain why a
digital signal processor would necessarily record tire pressure data.
6
Appeal2014-005968
Application 13/212, 104
While we appreciate that the signal outputted by Green's tire pressure
unit 92 conveys tire pressure information to the decision support system 10,
the Examiner errs in determining such a signal, by itself, "records" a tire
pressure as that term would by understood by a person of ordinary skill in
the art in light of the Specification.
[U]nder the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
Appellants' Specification indicates virtual foot parameters "are recorded for
record keeping and analysis." Spec. 3: 15-18 (emphasis added), 21: 14--17
(data "recorded for subsequent record keeping and analysis"). The mere
disclosure of a signal conveying information suitable for optimizing tire
pressure (Green ,-r 56), without more, is too ephemeral to constitute record
keeping and analysis relating to the information. Thus, the Examiner's
reliance on Green's signal transmission as a "recording" rests upon an overly
broad interpretation of the claim term in light of the present Specification.
For the foregoing reasons, we do not sustain the rejection of claims 1
and 11, and their respective dependent claims 2, 4, 5, 12, 14, and 15, as
anticipated by Green.
7
Appeal2014-005968
Application 13/212, 104
B. Obviousness based on Green and Other Prior Art References
The rejections of claims 3, 6-10, 13, and 16-28 as obvious over
Green and one or more of Anderson, Skotnikov, Adams, Wendte,
Gallenberg, Craig, and Pickett do not cure the deficiency of Green noted
above. See Final Act. 15-33. We, therefore, likewise do not sustain these
rejections.
DECISION
The decision of the Examiner to reject claims 1-28 is reversed.
REVERSED
8