Ex Parte Herbold

Board of Patent Appeals and Interferences

Aug 13, 2008

10910415 (B.P.A.I. Aug. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL J. HERBOLD
____________

Appeal 2008-2446
Application 10/910,415
Technology Center 2600
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Decided: August 14, 2008
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 2, 3, 12, and 19-21. Claims 1 and 4-11 have been cancelled and
claims 13-18 have been indicated by the Examiner to contain allowable
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-2446
Application 10/910,415

We affirm.
Appellant’s invention relates to a method of monitoring the shift in
position of a vehicle or vessel in which a Global Positioning System (GPS)
unit and radio transmitter are included in a simulated article housing, such as
a simulated vent pipe. A signal is transmitted when the GPS unit determines
that the vehicle or vessel has moved a distance beyond a predetermined
maximum travel distance. (Spec. 2-4).
Claim 2 is illustrative of the invention and reads as follows:
2. A method of monitoring a position shift of a selected vehicle,
vessel, receptacle or hazardous material containing device comprising the
steps of:
a) providing a g.p.s. unit and radio transmitter contained within a
housing;
b) monitoring the position of the selected vessel or vehicle with
the g.p.s. units; and
c) transmitting a signal when the g.p.s. unit indicates that the
selected vessel or vehicle has moved a distance beyond a predetermined
selected maximum distance of travel; and
d) wherein the housing is a simulated article.
The Examiner relies on the following prior art references to show
unpatentability:
Rayne US 2002/0120394 A1 Aug. 29, 2002
Workman US 6,801,853 B2 Oct. 5, 2004
(filed Aug. 15, 2002)

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Application 10/910,415

Claims 2, 3, 12, and 19-21, all of the appealed claims, stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Rayne in view of
Workman.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUE
Under 35 U.S.C. § 103(a), with respect to the appealed claims 2, 3,
12, and 19-21, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Rayne and Workman to render
the claimed invention unpatentable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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Application 10/910,415

obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged 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., 127
S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
Claims 2 and 19-21
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claim 2, based on the combination of Rayne and
Workman, Appellant’s arguments assert a failure to set forth a prima facie
case of obviousness since the claimed limitations are not taught or suggested
by the applied prior art references. Appellant’s arguments focus on the
contention that, in contrast to the claimed invention, neither of the applied
Rayne or Workman references discloses placing position determining
equipment such as a GPS unit and a radio transmitter within a housing which
is a “simulated” article. In particular, according to Appellant (App. Br. 3-4;
Reply Br. 4), the Workman reference, relied upon by the Examiner as
providing a teaching of concealing position determining electronic
equipment within a simulated article housing, actually discloses a housing
which is a genuine article such as a glovebox, backpack, or briefcase. In
Appellant’s view, all of these suggested housings in the Workman reference
are not simulated since they are all used for their intended purposes.
We do not find Appellant’s arguments to be persuasive in convincing
us of any error in the Examiner’s position. As pointed out by the Examiner
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Application 10/910,415

(Ans. 5-6), independent claim 2 sets forth no structural limitations which
define the housing or container which holds the claimed GPS and radio
transmitting units. In fact, the only language in independent claim 2 which
attempts to limit the claimed housing is the use of the term “simulated,”
which, in its conventional meaning (App. Br. 4), describes something which
is artificial or fake. It is our view that the housing structures, in particular
the “briefcase,” disclosed by Workman (col.5, ll. 17-39) to conceal the
described position determining components fit precisely the conventional
definition of a “simulated” housing or container.
For example, the Encarta World English Dictionary defines
“briefcase” as a “small case for carrying papers: a small, rectangular case
with a handle, used for carrying books and papers.”1 Similarly, the
Merriam-Webster Online Dictionary (http://www.merriam-
webster.com/dictionary/briefcase) defines “briefcase” as ‘a flat, flexible case
for carrying papers or books.” It is apparent, therefore, that Workman’s
housing or container, presumably structured in the shape of a conventional
briefcase, is, in fact, an artificial, fake, or “simulated” briefcase since it is
holding, as its concealed contents, electronic positioning equipment rather
than papers or books as normally expected.
In view of the above discussion, since the Examiner’s prima facie case
of obviousness has not been overcome by any convincing arguments from
Appellant, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection, based on
the combination of Rayne and Workman, of independent claim 2, as well as
dependent claims 19-21 not separately argued by Appellant.

1 Appellant also makes reference (App. Br. 4) to the Encarta World English
Dictionary in proffering a definition of the term “simulated.”
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Claims 3 and 12
We sustain the Examiner’s obviousness rejection of these claims as
well. Independent claim 3 and dependent claim 12 differ from the
previously discussed claims 2 and 19-21 in that the “simulated” housing is
identified as a vent pipe.
We refer to our earlier discussion and again find that we agree with
the Examiner that Appellant has set forth no structural limitations which
distinguish the claimed housing or container from the prior art housing
resulting from the combined teachings of Rayne and Workman. While
claims 3 and 12 identify the simulated housing as a vent pipe, it is apparent
that such identification has no structural significance since the claimed
housing is not structurally a vent pipe, but merely takes the shape or
appearance of a vent pipe. It is well settled that matters relating to
ornamentation only which have no mechanical function cannot be relied
upon to patentably distinguish the claimed invention from the prior art. See
In re Seid, 161 F.2d 229, 231 (CCPA 1947).

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CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 2, 3, 12, and 19-21 is affirmed.
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)(iv) (2006).

AFFIRMED

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