Ex Parte Davis

Patent Trial and Appeal Board

Jun 27, 2013

11759100 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/759,100 06/06/2007 Mark E. Davis 37742 5694
23589 7590 06/27/2013
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
CAPOZZI, CHARLES
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
06/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK E. DAVIS
____________

Appeal 2012-003017
Application 11/759,100
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-9. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 13 are the sole independent claims and illustrative of the
subject matter on appeal (key limitations in dispute italicized):
1. In a lane maintenance machine that is operable to
travel up and down successive generally parallel, elongated
bowling lanes performing a maintenance operation on each lane
and to index between the lanes on a common approach that
spans the lanes behind foul lines at one end of the lanes, the
improvement comprising:
a set of approach drive wheels for propelling the machine
while the machine is on the approach; and
control mechanism operably coupled with the approach
drive wheels in a manner to cause the approach drive wheels to
propel the machine on the approach away from the foul line of
one lane, tum the machine on the approach until the machine
generally faces the next lane, propel the machine transversely
on the approach to the next lane, tum the machine on the
approach until the machine is lined up with the next lane, and
propel the machine on the approach toward the foul line of the
next lane for movement down the lane.

13. In a lane maintenance machine, the improvement
comprising:
a pair of rotatable, axially spaced apart approach drive
wheels for propelling the machine while the machine is on an
approach behind the foul lines of a set of bowling lanes;
and
control mechanism operably coupled with said approach
drive wheels in a manner for driving the approach drive wheels
at relatively different speeds for turning the machine on the
approach.
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The rejection of claims 1-19 under 35 U.S.C. § 103(a) as unpatentable
over the combined prior art of Davis,1 Yan,2 and Klucznik3 is on appeal.
Appellant argues claims 1-12 as a group and claims 13-19 as a group.
App. Br. 12. We select claims 1 and 13 as representative of the claimed
subject matter on appeal. Therefore, claims 2-12 will stand or fall with
claim 1 and claims 14-19 will stand or fall with claim 13. See 37 C.F.R. §
41.37(c)(1)(vii); Hyatt v. Dudas, 551 F.3d 1307, 1313 (Fed. Cir. 2008).

ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
According to Appellant, Davis, Yan, and Klucznik are what is
referred to in a § 103 context as “non-analogous” art. If Appellant is correct,
then Davis cannot be combined with Yan or Klucznik to defeat Claims 1 and
13 under § 103.
The PTO and its reviewing courts have developed and applied a two-
step “test” to determine whether a prior art reference is “analogous” art and

1 U.S. 5,185,901, issued February 16, 1993.
2 U.S. 2005/0235451 A1, published October 27, 2005.
3 U.S. 2006/0143844 A1, published July 6, 2006.
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therefore may be used as evidence with respect to a question of obviousness
under § 103. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
Step 1 requires an answer to the following question: “Is the reference
within the field of the inventor’s endeavor?” If the answer is “yes,” then the
reference is “analogous” and therefore may be used as evidence.
If the answer is “no”, then Step 2 requires an answer to the following
question: “Is the reference reasonably pertinent to the particular problem the
inventor was trying to solve?” If the answer is “yes”, then the reference is
analogous and therefore may be used as evidence.
As pointed out by the Examiner, Davis, Yan, and Klucznik are all
concerned with cleaning apparatuses (e.g., Ans. 5, 8, 9). Appellant argues
that because Davis is related to maintaining a lane in a bowling alley and the
“Yan robotic vacuum” and “the Klucznik walk behind cleaning apparatus”
are not, the cited art is non-analogous and cannot be combined. App. Br. 22.
However, Appellant does not argue (1) that cleaning is not maintaining, (2)
that a lane is not a path, or (3) that a vacuum is not a machine or apparatus.
App. Br. 21- 25; Reply Br. 6-10. Appellant asserts that the inventor’s field
of endeavor is bowling lane maintenance machines and not generally “lane
maintenance machines.” Reply Br. 7-8. Appellant’s position is inconsistent
with the specification’s title (“Zero Turning Radius Lane Maintenance
Machine”) and the specification’s description of the invention drawings
depicting a machine that has a cleaning system 12. See Spec. Title, [0027].
Therefore, we are unpersuaded by Appellant that the Examiner erred in
finding the applied references analogous art.
It is well established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”). KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). It is likewise well established that ordinary
creativity is presumed on the part of one of ordinary skill in the art. Id. at
421 (“[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Appellant’s main argument is that “[t]he Davis machine does not
perform . . . and is not capable of performing, the turning actions [italicized
in claim 1 above] (App. Br. 25, emphasis in original; see also id. at 29 with
respect to claim 13) and that, although the robotic cleaning machine of Yan
is capable of turning (id. at 27), “this ability alone would not aid one skilled
in the art in arriving at the solution of the present invention.” Id.; see also
id. at 30 with respect to claim 13. More specifically, Appellant argues “[t]he
Yan machine does not turn purposefully to follow a path or in response to
precalculated positions, but instead turns either in a set pattern or randomly
in response to encountered boundaries and obstacles.” Id. at 27-28; see also
id. at 30 with respect to claim 30.
We find Appellant’s argument unpersuasive. A preponderance of the
evidence supports the Examiner’s reasonable finding that, contrary to
Appellant’s position, Yan does teach “the control mechanism being capable
of causing wheels (wheels 233) to turn a machine until the machine faces a
first path, and turn the machine until the machine is lined up with a second
path (para 0022), for the benefit of controlling the movement of a machine
and turning away from obstacles.” Ans. 5. One of ordinary skill in the art
would have found it obvious at the time of the invention “to incorporate the
sensors and control mechanism taught by Yan with the apparatus of Davis
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for the benefit of controlling movement of a machine and turning away from
obstacles.” Id.
Thus, a preponderance of the evidence supports the Examiner’s
determination that the claimed invention merely applies known programmed
turning operations as exemplified in Yan, combined with another known
lane maintenance machine exemplified in Davis, to yield the predictable
result of effectively turning the machine on a first path and a second path
(Ans. 5). See KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”). In re O’Farrell, 853 F.2d 894, 904 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.”)
Appellant’s arguments that the applied prior art does not suggest the
“turning actions” (App. Br. 26) and the control mechanism to move the
machine “in very precise and calculated ways” (id. at 27), as recited in claim
1, are unavailing. One cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). All of the features of the secondary
reference need not be bodily incorporated into the primary reference (see
Keller, 642 F.2d at 425) and the artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)) as Appellant appears to argue. As pointed out by
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the Examiner, the primary reference Davis “already provides the teaching of
calculation and awareness of its location with respect to bowling lanes . . . .”
Ans. 9 (citations to Davis omitted). Yan is relied upon for teaching that “it
is well known in the art to provide maintenance machines with programmed
turning operations . . . .” Id. (citations to Yan omitted). Therefore, it would
have been obvious for an artisan with ordinary skill to “incorporate the
sensors and control mechanism taught by Yan with the apparatus of Davis . .
. .” Ans. 5.
In light of these circumstances, Appellant has not adduced any
persuasive technical reasoning or evidence in response to the Examiner’s
reasonable determination that would have been within the level of ordinary
skill in the art to combine the programmed turning operations of Yan with
the lane maintenance machine of Davis to arrive at the claimed subject
matter (Ans. 9; App. Br. generally).
To the extent additional arguments are presented for other separately
rejected claims, we find them unpersuasive for the reasons set out by the
Examiner (App. Br. 25-36; Ans. 10-12).
Accordingly, the preponderance of the evidence supports the
Examiner’s § 103 rejections, and we sustain the § 103 rejections on appeal.

DECISION
The decision of the Examiner is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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