Ex Parte Gudat

Patent Trial and Appeal Board

Sep 30, 2016

12416061 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/416,061 03/31/2009 Adam John Gudat
58982 7590 10/04/2016
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York A venue, NW
WASHINGTON, DC 20001-4413
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.
08350.0065 3716
EXAMINER
PATEL, SHARDUL D
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
regional-desk@finnegan.com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM JOHN GUDAT
Appeal2013-009486
Application 12/416,061
Technology Center 3600
Before CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4--6, 9, 11, 12, 15-17, and 19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Appeal2013-009486
Application 12/416,061
CLAIMED SUBJECT MATTER
The claims are directed to a system and method for operating a
machine. Spec. 1 (Title). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system for operating a machine, comprising:
an input device configured to select from a plurality of
modes of operation for the machine, the plurality of modes of
operation comprising a manual mode, a remote mode, and an
autonomous mode;
a controller coupled to the machine, the controller
configured to:
place the machine in the manual mode of operation in
response to the selection of the manual mode;
perform a self-test of the machine in response to the
selection of the remote mode or the autonomous mode;
place the machine in the selected remote mode or the
autonomous mode only if the machine passes the self-test; and
place the machine in a safe mode if the machine does not
pass the self-test;
a first transreceiver located on the machine and configured
to transmit a heartbeat signal and receive a response signal; and
a second transreceiver located remote from the machine
and configured to receive the transmitted heartbeat signal and
transmit the response signal, wherein the heartbeat and the
response signals are signals used to confirm that the machine is
operating in a desired manner and shut down operation of the
machine if the machine is operating in an undesired manner.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hawkins
Brand
Ward
us 5,469,356
US 2002/0195275 Al
US 6,633,800 Bl
2
Nov. 21, 1995
Dec. 26, 2002
Oct. 14, 2003
Appeal2013-009486
Application 12/416,061
REJECTION
Claims 1, 2, 4---6, 9, 11-12, 15-17, and 19 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Ward, Hawkins, and Brand.
OPINION
Appellant correctly argues that it is unreasonable to interpret a
"heartbeat signal," as recited in each of the independent claims before us, to
include Brand's LOCK-OUT signal because Brand's LOCK-OUT signal
lacks any periodicity like that of a heartbeat. See Ans. 12; Reply Br. 4--5.
Although limitations from the Specification are not read into the claim, the
PTO' s application of the broadest reasonable interpretation does not involve
disregarding the meaning of terms that are expressly recited in the claim.
See, e.g., In re Prater, 415 F.2d 1393, 1404--05 (CCPA 1969).
Appellant also correctly argues that, although the Examiner did
provide "motivation to combine statement[ s ]" (Ans. 13), those statements
lack rational underpinnings. App. Br. 17-19. The Examiner does not
articulate any rational relationship between the motivation statement
regarding Hawkins, "controlling autonomous operation" and the subject
matter of Hawkins that the Examiner proposes to incorporate into Ward-
the self-tests. The Examiner also does not articulate why Brand's teaching
of "remotely altering operation of a horizontal directional drilling (HDD)
machine" (i-f 9) would be beneficial in machines such as Ward's Load Haul
Dump (LHD) vehicle. "[T]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (emphasis added).
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Appeal2013-009486
Application 12/416,061
In light of the shortcomings discussed above, the rejection cannot be
sustained on the basis set forth by the Examiner.
DECISION
The Examiner's rejection is reversed.
REVERSED
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