Ex parte Ciarla et al.

Board of Patent Appeals and Interferences

Aug 10, 2001

09077102 (B.P.A.I. Aug. 10, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALBERTO CIARLA
and
FABIO LENCI
_____________
Appeal No. 2000-2128
Application No. 09/077,102
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT, and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 20,
21, 23 to 28 and 32. Claims 22, 29 and 30, the other claims
remaining in the application, have been allowed.
Appeal No. 2000-2128
Application No. 09/077,102
The examiner notes that claim 23 should be dependent on1
claim 21. Also in reviewing the claims it appears that
“receptacles” in claim 21, line 2, has no antecedent basis.
2
The appealed claims are drawn to an automated rental
system
for battery powered scooters, and are reproduced in the
appendix of appellant’s brief. 1
The references applied in the final rejection are:
Bae et al. (Bae) 4,983,903 Jan. 8,
1991
Guimarin et al. (Guimarin) 5,612,606 Mar. 18,
1997
The claims on appeal stand finally rejected on the
following grounds:
(1) Claims 20 and 27, anticipated by Bae, under 35 U.S.C.
§ 102(b);
(2) Claims 20, 21, 23 to 28 and 32, unpatentable over Bae
in view of Guimarin, under 35 U.S.C. § 103(a).
Rejection(1)
Claim 20, the only independent claim on appeal, reads
(letters in brackets and emphasis added):
20. An automated rental system for battery powered
scooters comprising in combination,

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[a] a scooter receptacle housing means for receiving
at least one scooter thereinto into a working
relationship for servicing a rental transaction therein
and delivering rental scooters therefrom[,]
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[b] battery servicing means within the housing for
processing batteries of scooters returned from a rental
transaction to ready the scooters for a further rental
transaction, and
[c] computerized control means operable for
automated monitoring, commanding and controlling both
vehicle renting and battery servicing operations for
scooter rentals and returns.
“To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently.” In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). “Furthermore,
with an element expressed in terms of a means plus function,
‘absent structure [in a prior art reference] which is capable
of performing the functional limitation of the ‘means,’ [the
prior art reference] does not meet the claim.’ In re Mott,
557 F.2d 266, 269, 194 USPQ 305, 307 (CCPA 1977).” RCA Corp.
v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In the present case, Bae
discloses a system for removing, servicing (recharging) and
replacing the batteries of battery-powered automatic guided
vehicles (AGVs). However, Bae does not disclose that the AGVs
are rented, nor any apparatus for servicing rental
transactions.
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Claim 20 would therefore seem to distinguish over Bae, in
that it recites a “housing means . . . for servicing a rental
transaction therein” in part [a], and “computerized control
means operable for automated monitoring, commanding and
controlling
. . . vehicle renting . . . for scooter rentals and returns”
in part [c]. However, the examiner takes the position that
this language is “merely intended uses which are given very
little patentable weight,” and that Bae “is able to meet this
functional language as it could receive and service a battery
powered scooter” (final rejection, page 3). He also asserts
at page 4 of the answer that “[t]he battery exchange as
performed by Bae et al. may be part of a ‘rental
transaction.’”
We do not consider the examiner’s position to be well
taken. The language which the examiner characterizes as
“merely intended uses” constitutes recitations of the
functions of two means-plus-function elements of claim 20 (the
“housing means” and the “computerized control means”); it
therefore cannot be minimized or ignored, but rather, in order
to anticipate the claim, Bae must disclose structure capable
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of performing those functions. RCA Corp., supra. Contrary to
the examiner’s assertion, supra, we do not consider that
“servicing a rental transaction,” even if given its broadest
reasonable interpretation (In re Van Geuns, 988 F.2d 1181,
1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993)), can be
considered to read on Bae’s disclosed system for exchanging a
battery, nor would Bae’s computer control of the battery
exchange system constitute the computerized control means
called for in claim 20, part [c], which, it should be noted,
is recited as being for “both vehicle renting and battery
servicing operations” (emphasis added).
Accordingly, rejection (1) will not be sustained.
Rejection (2)
The examiner applies Guimarin as follows (final
rejection, page 5):
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to modify
Bae et al. with the teachings of Guimarin in order to
have precise and efficient computerized control of the
battery servicing operation and to protect the batteries
during transport. It would have been obvious to one of
ordinary skill in the art to use this combination to
service any electric vehicle such as battery powered
scooters.
However, whatever may be the merits of this conclusion of
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obviousness, Guimarin does not disclose a vehicle rental
system, and therefore does not overcome the deficiencies of
Bae noted in the foregoing discussion of rejection (1).
At page 4 of the final rejection, the examiner seems to
be of the view that on page 7 of the amendment filed on July
16, 1999 (Paper No. 5), appellants admitted that a
computerized control means as recited in part [c] of claim 20
was prior art. We have reviewed the part of the amendment in
question, but do
not find therein any admission by appellants that a
computerized control for automated monitoring, commanding and
controlling of vehicle renting was known in the prior art.
Rejection (2) therefore will not be sustained.
Conclusion
The examiner’s decision to reject claims 20, 21, 23 to 28
and 32 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
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Application No. 09/077,102
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) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
IAC:hh
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Application No. 09/077,102
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