Ex Parte Erland

Board of Patent Appeals and Interferences

Jul 18, 2002

08338235 (B.P.A.I. Jul. 18, 2002)

-1–
The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MICHAEL J. ERLAND

Appeal No. 1998-2864
Application No. 08/338,235

ON BRIEF

Before KRASS, JERRY SMITH and BARRETT, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the rejection of claims 1,
2, 4, 6-8, 14-17 and 19.
The invention pertains to a control console remote
monitoring system. In particular, a portable monitoring unit is
used for remotely monitoring measurement data provided at a
Appeal No. 1998-2864
Application No. 08/338,235
-2–
control console. Thus, if the person responsible for monitoring
the control console is away from the console, that person can
still monitor the control console by observing the data on the
portable, remote unit.
Representative independent claim 1 is reproduced as follows:
1. A portable monitoring unit for remotely monitoring
measurement data provided at a control console that includes
processing means for processing measurement data related to a
plurality of monitored parameters and for responding to a request
for transmission of measurement data pertaining to a parameter
selected from said plurality of monitored parameters by causing a
radio coupled to the control-console processing means to transmit
said selected-parameter measurement data, the portable unit
comprising
a display device;
a keypad for selecting said parameter as to which
measurement data is to be displayed by the display device and for
enabling said measurement data that is to be displayed to be
requested from the control-console processing means;
a radio for transmitting a said request to the radio that is
coupled to the control console and for receiving said measurement
data transmitted by the radio that is coupled to the control
console; and
a processor coupled to the keypad, the portable-unit radio
and the display device, and adapted for responding to an
operation of the keypad to select a parameter as to which
measurement data requested from the control-console processing
means is to be displayed by causing the portable-unit radio to
transmit to the radio coupled to the control console a request
for transmission of said measurement data selected by operation
of the keypad and for causing the display device to display said
measurement data that is received by the portable-unit radio.
Appeal No. 1998-2864
Application No. 08/338,235
-3–
The examiner relies on the following references:
Freedman 3,082,413 Mar. 19, 1963
Kobayashi et al. 5,003,479 Mar. 26, 1991
Freeman 5,084,695 Jan. 28, 1992
Crane 5,257,190 Oct. 26, 1993
Claims 1-20 are pending, with many claims being rejected
under 35 U.S.C. 103. As evidence of obviousness, the examiner
cites Kobayashi with regard to claims 1, 2, 4, 7, 8, 14 and 19,
adding Crane with regard to claims 6 and 15. In a new ground of
rejection entered in the supplemental answer, the examiner also
rejects claims 8 (again) and 17 under 35 U.S.C. 103 over
Kobayashi.
In a new ground of rejection entered in the principal
answer, the examiner rejects claims 16 and 17 under 35 U.S.C. 103
over Kobayashi.
At page 9 of the principal answer, the examiner indicates
that claims 3, 5, 9-13, 18 and 20 would be allowable if rewritten
to overcome a rejection under 35 U.S.C. 112. Thus, the examiner
is indicating that claims 3, 5, 9-13, 18 and 20 are directed to
allowable subject matter.
We find it confusing that, in the principal answer, the
Appeal No. 1998-2864
Application No. 08/338,235
-4–
examiner refers to Paper No. 6 for the rejection of claims 1, 2,
4, 6-8, 14, 15 and 19 under 35 U.S.C. 103 but does not refer to
this Paper for the rejection under 35 U.S.C. 112. The examiner
also does not repeat the rejection under 35 U.S.C. 112 in either
of the answers. Moreover, the problem regarding the rejection
under 35 U.S.C. 112 involved the elimination of “a” in “a
parameter” rather than in “a keypad.” In light of this, and in
light of the fact that the appendix to the principal brief shows
the correction to the claims which would have overcome any such
rejection under 35 U.S.C. 112 and the examiner, in the principal
answer, indicates that this is a correct copy of the claims on
appeal, we will understand the rejection under 35 U.S.C. 112 to
have been withdrawn and that claims 3, 5, 9-13, 18 and 20, being
directed to allowable subject matter, are no longer on appeal
before us.
Accordingly, we limit our opinion herein to the rejection of
claims 1, 2, 4, 7, 8, 14, 16, 17 and 19 under 35 U.S.C. 103 over
Kobayashi and to the rejection of claims 6 and 15 under 35 U.S.C.
103 over Kobayashi in view of Crane (Paper No. 6, pages 5-6)
We are somewhat confused as to the listing by the examiner,
in the principal answer, page 4, of the Lemelson, Breit, Bomar,
Tin, Freedman and Freeman patent references since none of these
Appeal No. 1998-2864
Application No. 08/338,235
-5–
references appear in any statement of rejection against the
instant claims. Accordingly, we have not considered these
references in our decision infra.
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
Turning, first, to the rejection of claims 1, 2, 4, 7, 8,
14, 17 and 19 under 35 U.S.C. 103 over Kobayashi, it is the
examiner’s position, with regard to independent claim 1, that
Kobayashi discloses the claimed display device at 31, the claimed
keypad at 32 and the claimed processor at 28. The examiner
recognizes that Kobayashi does not teach or suggest the claimed
radio but contends that the inclusion of the claimed radio would
have been obvious, within the meaning of 35 U.S.C. 103, “since
wireless system [sic] is well-known and widely preferred nowadays
for its advantages of convenience and wiring reduction”
[principal answer-page 5].
Appellant does not argue any error in the examiner’s
correspondence of elements between Kobayashi and the instant
Appeal No. 1998-2864
Application No. 08/338,235
-6–
claimed subject matter. Moreover, appellant does not dispute
that wireless systems “are widely used and preferred for some
applications for advantages of convenience and wiring reduction”
[prinicipal brief-page 8]. Rather, appellant argues that it
would not have been obvious to apply wireless technology to
Kobayashi because Kobayashi is “not one of those applications in
which the use of a wireless system would provide such advantages”
[principal brief-page 8]. In particular, appellant urges that
because Kobayashi’s portable device 25 is used in the immediate
vicinity of the vehicle 1, a wireless system is not more
convenient and, in fact, because of the added cost and
possibility of interference, a non-wireless communication link is
preferred in Kobayashi.
Appellant further distinguishes the instant claimed subject
matter by reason of the processor 26 of the portable monitoring
unit 24 being coupled to the keypad 32 for responding to an
operation of the keypad 32 to select a parameter as to which
measurement data is to be displayed. Appellant points out that
in Kobayashi’s portable diagnosis device 25, processor 28 is
coupled to the keypad 32 for responding to an operation of the
keypad 32 to select a diagnosis mode as to which measurement data
is to be displayed. “This distinguishing feature enables display
Appeal No. 1998-2864
Application No. 08/338,235
-7–
of data for a specific monitored parameter in contrast to mere
display of data related to a given diagnostic mode” [principal
brief-page 9].
We do not find appellant’s arguments persuasive.
While Kobayashi does not employ radio communication because
of the proximity of the portable device to the vehicle, and so
non-wireless communication is the preferred embodiment in that
environment, appellant does not deny the obviousness of employing
wireless communication in certain applications. In those
situations where portable diagnosis devices are not so proximate
to the unit under diagnosis, it would appear then that even
appellant would agree that artisans would have found it obvious
to use wireless communications. Accordingly, even though
Kobayashi uses non-wireless communication, the skilled artisan
would have understood that for more distant applications, a
wireless communication system, such as radio communication, would
have been employed. Even in Kobayashi, while wireless
communication might be more costly and possibly cause some
interference problems, triggering the decision of a designer to
employ non-wireless communication, the artisan still would have
understood that wireless communication is an option, the choice
Appeal No. 1998-2864
Application No. 08/338,235
-8–
of its use being subject to the well known design considerations
of wireless vs. non-wireless communication.
Thus, we conclude, as did the examiner, that the artisan
would have found it an obvious modification of Kobayashi to
extend its teachings to a wireless environment where the portable
device 25 may be in wireless communication with vehicle 1.
With regard to appellant’s argument that the monitoring
nature of the instant invention distinguishes over the diagnosis
nature of Kobayashi, we, again, disagree. Clearly, monitoring is
part of diagnosing since a diagnosis cannot be made unless a
situation is monitored.
Thus, we will sustain the rejection of claim 1 under
35 U.S.C. 103 over Kobayashi. We will also sustain the rejection
of independent claim 7 under 35 U.S.C. 103 since this claim falls
with claim 1 [principal brief-page 6] and is not argued
separately.
Turning to claim 2, with which claims 4, 8 and 19 stand or
fall together, this claim recites an alarm provided by other than
the display device and the provision of both an alarm and a
display of an alarm condition in response to an alarm-condition
signal sent from the control-console processing means.
Appeal No. 1998-2864
Application No. 08/338,235
-9–
The examiner admits that Kobayashi does not disclose means
other than the display device for providing an alarm but contends
that the artisan would have “recognized using another alarm
device to provide an alarm to the operator, for instance, a
buzzer to indicate the alarm, because it is easier to recognize
an alarm situation when it is audibly notified. It is noted that
the system of Kobayashi includes alarm indicators 23a on the
control system 2 and LEDs 30 on the remote unit 25, although no
function is described” [principal answer-page 5].
It is appellant’s position that because Kobayashi displays
an alarm value only when the user selects for display a
particular diagnosis mode in which the alarm value is displayed
in response to such selection, Kobayashi does not suggest the use
of another alarm device whereby a user becomes aware of an alarm
condition transmitted from a control console without having to
either constantly monitor the display or request measurement data
for a given parameter in which an alarm condition might exist.
The examiner’s response is that the use of means other than
the display device for providing an alarm is “old in the art.”
We agree with the examiner that the use of means other than
the display device for generating an alarm is “old in the art.”
We recognize that where the examiner relies on what is asserted
Appeal No. 1998-2864
Application No. 08/338,235
-10–
to be general knowledge to negate patentability, that knowledge
must be articulated and placed on the record. In re Sang-Su Lee,
277 F.3d 1338, 1345, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002).
In the instant case, the examiner has articulated the knowledge
alleged to be “old in the art” by the examiner. That is, we view
Kobayashi as being very clear that the display may display what
can be considered an “alarm” and we agree that artisans know that
it was very common for devices to be supplied with more than one
alarm in order to alert a user to a condition which must be
attended to promptly. The buzzer, cited by the examiner, is such
an example. For example, if one is baking a cake, one may stand
in front of the oven and look through the door (as a “display”)
and being alert for an “alarm” condition whereby the cake may be
burning or over-baked. But cooking artisans, in this example,
know that one may also set a timer, which emits an audible alarm,
or buzzer, at a preset time, to alert the artisan that to leave
the cake in the oven any longer would invite the “alarm”
condition whereby the cake will be burned. That timer is but one
example of the use of a “means other than the display device for
providing an alarm.” We find that the use of an alternative
alarm means in addition to a display for alerting an operator to
a condition is so well known to artisans, and even to laymen,
Appeal No. 1998-2864
Application No. 08/338,235
-11–
that such an alternative alarm means in the instant invention
would have been obvious within the meaning of 35 U.S.C. 103.
We note, in passing, that in the response section of the
principal answer, at page 15, the examiner attempts to cite U.S.
Patents to Freedman and Freeman as evidence of the use of other
alarm means. While these references may, indeed, provide for
such alarm means, Freedman and/or Freeman form no part of the
statement of the rejection and we will not consider them. In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
In any event, we do not consider these references necessary as,
in our view, the rejection of claims 2, 4, 8 and 19 under
35 U.S.C. 103 is proper without them.
With regard to claim 14, this claim adds the limitation to
claim 7 of providing, by the control console, a display of
measurement data, whereas, as argued by appellant, Kobayashi
displays measurement data only by display 31 in the portable
diagnosis device 25. It is appellant’s position that the lamps
23a, 23b merely indicate an abnormality in the electronic control
system 2 and do not display measurement data. This
distinguishing feature is said to enable a person at the control
console to observe the requested measurement data.
Appeal No. 1998-2864
Application No. 08/338,235
-12–
It is the examiner’s position, with regard to claim 14, that
the claimed memory is met by Kobayashi’s element 4 and that the
claimed display is met by elements 23a and 23b, wherein the
processing unit 3 is adapted for causing the measurement data to
be transmitted in response to a request sent from 25 to be stored
in 4 and for causing the stored data to be retrieved for display
by lamps 23a and 23b. The examiner further explains, at pages
16-17 of the principal answer, that since the language of claim
14 does not specify exactly when the data is retrieved and how it
is retrieved, the control console display is broadly interpreted
as lamps 23a and 23b which indicates, respectively, trouble code
and trouble detected as a result of the self-diagnosis [column 3,
lines 16-26, of Kobayashi]. The examiner also points out that
since the claim fails to specify how measurement data is
displayed, it is broadly interpreted as being displayed in a
“yes” or “no” indication by lamps 23b and in a form of trouble
code indicated by lamps 23a whenever the measurement data reaches
the alarm threshold.
We will not sustain the rejection of claim 14 under
35 U.S.C. 103 because we view the examiner’s interpretation as
being overly broad. Claim 14 requires that the stored data to be
retrieved and displayed be “selected-parameter measurement data.”
Appeal No. 1998-2864
Application No. 08/338,235
-13–
The lamps 23a and 23b of Kobayashi, albeit, arguably, “displays”
of an alarm condition, do not, in any way, act to display
selected-parameter measurement data which has been retrieved from
memory in the control console.
With regard to claims 6 and 15, the examiner relies on Crane
for the teaching of a radio system that has memory to store
information received from another processor at another location.
The examiner then contends that the artisan would have recognized
the desirability of storing pluralities of information in
Kobayashi’s memory so that the information can be retrieved
locally. With regard to the limitation of a memory to store
measurement data in which the measurement data of a selected
parameter is selected by the operation of a keypad, the examiner
asserts that this claim limitation “lacks criticality” [principal
answer-page 8].
Even if we assumed that the examiner’s application of
Kobayashi and Crane is reasonable, we will not sustain the
rejection of claims 6 and 15 under 35 U.S.C. 103 because the
examiner may not dismiss an explicit claim limitation by stating
that it “lacks criticality.” As explained by appellant [page 12
of the principal brief], this feature enables an operator of the
Appeal No. 1998-2864
Application No. 08/338,235
-14–
portable monitoring unit to select any previously received
measurement data for display. Accordingly, the disputed
limitation, quite clearly, is “critical.” In any event, lack of
“criticality” is not a measure of the obviousness of the claimed
subject matter. The examiner was apparently using a “design
choice” rationale in rejecting claims 6 and 15 but we cannot
agree that the storage of information regarding measurement data
for later retrieval so that an operator may select, via a keypad,
measurement data of a selected parameter is a mere “design
choice.”
Since the examiner has not sufficiently addressed this claim
limitation in the rejection, we will not sustain the rejection of
claims 6 and 15 under 35 U.S.C. 103.
Claim 16 recites that the control console is in “the engine
room, the control room or the bridge of a ship and the monitored
parameters pertain to operation of the ship.” It is the
examiner’s position that while Kobayashi does not disclose such
an environment of use, teaching, instead, that the control is
located in an engine of an automobile, the artisan would have
readily recognized using Kobayashi’s system in a ship
environment, if desired. That is, the examiner contends that the
claim limitations of claim 16 merely indicate an intended use.
Appeal No. 1998-2864
Application No. 08/338,235
-15–
Appellant responds by alleging that one skilled in the art
of monitoring parameters of a ship, upon considering how to
remotely monitor such parameters from various locations within
the ship, would not have considered Kobayashi’s motor vehicle
system because the portable diagnosis device 25 of Kobayashi’s
diagnostic system is coupled to a motor vehicle engine electronic
control system 2 by a harness 27 and thereby used only within the
immediate vicinity of the motor vehicle engine.
We will sustain the rejection of claim 16 under 35 U.S.C.
103 as it appears reasonable to us that the artisan, having the
automotive monitoring/diagnostic system of Kobayashi before
him/her, would clearly have been led to employ such a system in
other environments, especially to other vehicle environments,
such as a ship. The claim specifies no language which would make
the claimed invention especially adapted to ship monitoring
systems but unworkable for other vehicle environments because of
something unique to ships. Accordingly, we agree with the
examiner’s rationale that this claim limitation is directed
solely to intended use.
We also will sustain the rejection of claim 17 under
35 U.S.C. 103 because we view the claim broadly as requiring only
a means for producing an alarm (the display of Kobayashi will
Appeal No. 1998-2864
Application No. 08/338,235
-16–
display alarm conditions to an operator) and coupling the
portable unit to the alarm providing means for responding to
receipt of an alarm-condition signal in order to display the
alarm condition (again, in Kobayashi, the display of the portable
unit 25 will indicate an alarm condition since an abnormality of
the vehicle system will be displayed to the operator and any
abnormality is an alarm condition).
CONCLUSION
We have sustained the rejection of claims 1, 2, 4, 7, 8, 16,
17 and 19 under 35 U.S.C. 103 but we have not sustained the
rejection of claims 6, 14 and 15 under 35 U.S.C. 103.
Accordingly, the examiner’s decision is affirmed-in-part.
Appeal No. 1998-2864
Application No. 08/338,235
-17–
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 1998-2864
Application No. 08/338,235
-18–
EK/RWK
EDWARD W. CALLAN
NO. 705 PMB 452
3830 VALLEY CENTRE DRIVE
SAN DIEGO, CA 92130