Ex parte Holt et al.

Board of Patent Appeals and Interferences

Sep 23, 1997

08124361 (B.P.A.I. Sep. 23, 1997)

Application for patent filed September 20, 1993, entitled "Device For The Computerized1
Recording Of Mileage And Expenses In Vehicles," which is a continuation of Application 07/927,244,
filed August 7, 1992, now abandoned, which is a continuation of Application 07/771,511, filed
October 1, 1991, now abandoned, which is a continuation of Application 07/529,937, filed
May 29, 1990, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 44
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte GREGORY A. HOLT
and ELDEN E. DURAND

Appeal No. 95-3175
Application 08/124,3611

HEARD: September 16, 1997

Before HAIRSTON, BARRETT, and FLEMING, Administrative Patent Judges.
Appeal No. 95-3175
Application 08/124,361
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BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the final rejection of claims 15-19, 26-27,
and 31. Claims 1-14, 20-25, and 29-30 have been cancelled. We reverse but enter a new ground of
rejection pursuant to 37 CFR § 1.196(b).
BACKGROUND
The invention is directed to a system for storing and transferring data related to the operation of a
vehicle. In particular, the system automatically keeps track of the number of miles driven and provides for
recording of vehicular and non-vehicular information by the operator.
Claim 15, the sole independent claim, is reproduced below.
15. A computerized information processing system mounted in a vehicle and comprising:
a mileage sensor securable to the vehicle for automatically inputting information from said
vehicle representative of distance traveled by said vehicle;
a manual menu-driven input, operable by the occupant of said vehicle, having a display and
a keypad for entering both vehicular and non-vehicular information, said vehicular information
including data regarding cumulative vehicle travel mileage and vehicle operating expenses, said
non-vehicular information including travel expenses and characterization of said vehicle operating
expenses and said travel expenses for tax purposes;
a data storage and internal processor responsive to said mileage sensor and manual input,
having a microcomputer, a real time clock, and random access memory;
transfer circuitry attachable to said data storage and internal processor for transferring data
from said data storage and internal processor to an external data processor; and
Appeal No. 95-3175
Application 08/124,361
The first paragraph of § 103 was redesignated as § 103(a) as of November 1, 1995. 2
Pub. L. 104-41, sec. 1, 109 Stat. 351 (Nov. 1, 1995). This was after the Final Rejection was entered
but before the Examiner's Answer. Accordingly, the rejection should refer to § 103(a).
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a calibration system operable to calibrate the computerized information processing system
with an odometer of the vehicle, such that said information representative of distance traveled
corresponds to actual distance traveled as measured by said odometer.
The examiner relies on the following references:
Juhasz 4,067,061 January 3, 1978
Eshelman 4,646,042 February 24, 1987
Webb et al. (Webb) 4,852,000 July 25, 1989
Claims 15-19, 26-27, and 31 stand rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which appellants regard
as their invention. The examiner states (Examiner's Answer, page 3): "As per claim 15, it is unclear what
is meant by 'calibration system' (line 20), since an 'information processing system' is recited in the preamble
(line 2, emphasis added)."
Claims 15-19 and 26-27 stand rejected under 35 U.S.C. § 103 as being unpatentable over Webb2
and Eshelman. The examiner finds that Webb teaches a computerized information processing system for
keeping track of vehicular and non-vehicular expenses. The examiner finds Webb's disclosure of a "direct
mileage input" to mean "automatically inputting information" from a mileage sensor of the vehicle to the
processing system. The examiner finds that Webb does not disclose the sensor to provide the "direct
mileage input," but concludes that it would have been obvious to use a sensor as described in Eshelman.
The examiner finds that Webb does not disclose calibration, but finds that calibration is inherently
Appeal No. 95-3175
Application 08/124,361
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necessary in Webb and concludes that it would have been obvious to calibrate the system in Webb to the
odometer so the system will receive an accurate indication of mileage.
Claim 31 stands rejected under 35 U.S.C. § 103 as being unpatentable over Webb, Eshelman, and
Juhasz.
OPINION
35 U.S.C. § 112, second paragraph
The second paragraph of 35 U.S.C. § 112 requires that a claim set out and circumscribe a
particular area with a reasonable degree of precision and particularity when read in light of the disclosure
as it would be by the person of ordinary skill in the art. See In re Johnson, 558 F.2d 1008, 1015,
194 USPQ 187, 193 (CCPA 1977).
We agree with appellants' arguments (Brief, pages 3-4) that it is unclear from the examiner's
statement of the rejection in the Final Rejection exactly what the problem is with the term "calibration
system." In the response to argument section of the Examiner's Answer, the examiner explains the rejection
in more detail. The examiner apparently does not understand how the calibration system is "operable to
calibrate the computerized information processing system with an odometer of the vehicle,"
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Application 08/124,361
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as claimed, stating (Examiner's Answer, page 8):
It is not clear to the examiner how the "calibration system" (lines 21-25) is meant to fit within the
context of a "computerized information processing system" (line 1) as a whole. . . . [T]he examiner
referred to the specification (pages 15-17) for clarification on the claimed "calibration system".
However, the description found merely describes a "calibration procedure" (page 15, paragraph 1,
lines 5-6) from which the examiner cannot discern how the description comprises a "calibration
system."
The examiner apparently misses the detailed description of the calibration procedure, as performed with
the microcomputer attached to a mileage sensor on the vehicle and the vehicle odometer, at page 16, last
paragraph, of the specification. The claimed "calibration system" is not indefinite in view of the
specification. The "calibration system" is one subsystem of the overall "information processing system."
For these reasons, the rejection of claims 15-19, 26-27, and 31 is reversed.
35 U.S.C. § 103
The examiner's obviousness conclusion is based on an erroneous factual finding regarding the
content of Webb and must be reversed.
Webb states (column 1, lines 62-63): "Mileage data can be entered using a direct mileage input
or an odometer entry." This supports the examiner's finding that (Final Rejection, page 3; Examiner's
Answer, page 4): "Webb et al. teach that the mileage data can be entered using a direct mileage input in
column 1, lines 62-63." However, the examiner erroneously finds "direct mileage input" to mean
"automatically inputting information" from a mileage sensor of the vehicle and that Webb just fails to
describe a mileage sensor. Both entry methods in Webb involve manual entry of mileage or odometer
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Application 08/124,361
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readings by an operator via a keyboard as shown in figure 4B, steps 61 and 62 (entering odometer reading)
and steps 67 and 68 (entering mileage directly), and described at column 4, line 57, to column 5, line 20.
Since Webb does not suggest "automatically inputting information" from a mileage sensor of the vehicle,
and Eshelman does not suggest inputting the sensor output to a mileage recording device as claimed, the
examiner fails to provide the requisite motivation to combine the sensor teaching of Eshelman with the
computer system of Webb. For this reason, the rejection of claims 15-19, 26-27, and 31 is reversed.
The examiner also concludes, based on the erroneous finding that Webb discloses "automatically
inputting information" from a mileage sensor of the vehicle, that (Final Rejection, pages 4-5; Examiner's
Answer, pages 5-6):
Furthermore, calibration of the system of Webb et al. at the time of installation, although not
disclosed in Webb et al., is inherently necessary in the system of Webb et al. since the generated
reports of Webb et al. would not correspond to the correct mileage. For instance, if the system
were installed at a vehicle mileage of 10,000 miles and not calibrated then the reports would be
generated staring [sic] at 0 miles. One of ordinary skill in the art at the time of the invention would
thus have found it obvious to calibrate the system to the odometer because it would eliminate this
discrepancy.
Because Webb does not disclose "automatically inputting information" from a mileage sensor of the vehicle
and, because Webb involves manual input of mileage and odometer readings, there is no reason to provide
a calibration system in Webb. Webb just accepts the inputs from the operator. The rejection of claims 15-
19, 26-27, and 31 is also reversed for this reason.
NEW GROUND OF REJECTION PURSUANT TO 37 CFR § 1.196(b)
Appeal No. 95-3175
Application 08/124,361
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We are always reluctant to enter new grounds of rejection because the appeal should be the end
of prosecution. That is especially true in this case where this is the third continuation application.
Nevertheless, neither appellants nor the patent system are served by granting a patent where the best prior
art has not been considered. The duty of the Patent and Trademark Office is to issue valid patents. See
Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278 (1877) ("[In the Patent Office, applicant's]
claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled
to."); Burns v. Meyer, 100 U.S. 671, 672 (1880); Graham v. John Deere Co., 383 U.S. 1, 18 (1966)
("[T]he primary responsibility for sifting out unpatentable material lies in the Patent Office. To await
litigation is--for all practical purposes--to debilitate the patent system."). A new ground of rejection is
warranted in the present case.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Webb, Fogg et al. (Fogg)
(U.S. Patent 5,337,236, issued August 9, 1994, filed May 21, 1990, eight days before the effective filing
date of this application), Gulas et al. (Gulas) (U.S. Patent 4,755,832, issued July 5, 1988), and Whitaker
(U.S. Patent 4,685,061, issued August 4, 1987). We intentionally have not considered the patentability
of the dependent claims because it is not our responsibility to examine all the claims in the first instance, and
because it is our experience with Rule 196(b) rejections that examiners adopt whatever rejection has been
made without trying to find better art and without listening to arguments or showings of facts to overcome
the rejection. The examiner should independently decide whether the dependent claims are patentable.
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Application 08/124,361
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Every obviousness determination is based on the four factual inquiries of Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966): (1) the scope and content of the prior art;
(2) differences between the prior art and the claimed invention; (3) level of ordinary skill in the art; and
(4) any objective evidence such as commercial success, failure of others, long-felt need, and unexpected
results.
Scope and content of the prior art
Webb discloses a menu-driven system for maintaining expense records. The system "can be
tailored to operate in several environments such as a lap computer, desk-top computer, pocket calculator
or mainframe computer" (column 1, lines 28-31). The system has a display and keyboard for manual
entering of information and inherently has "a microcomputer, a real time clock, and random access
memory," as recited in claim 15. "Manual data entry can be accomplished on hardware integral to the
storage and calculating system or through external hardware interfaced to a computing system, such as a
modem or cellular telephone" (column 1, lines 34-37), which suggests that information can be transferred
to an external computer. Webb also discloses that "[d]ata can be provided to a disc memory" (column 1,
line 68), which would permit the disc to be taken to another computer. The system has twelve modular
expense routines for manually entering both vehicular information "including data regarding cumulative
vehicle travel mileage and vehicle operating expenses" (figure 1: mileage module 11, fuel module 15, tolls
module 17, miscellaneous module 18) and non-vehicular information "including travel expenses" (figure 1:
meals module 12, lodging module 13, etc.). "The user can enter unique identifying titles and descriptive
Appeal No. 95-3175
Application 08/124,361
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information for inclusion on printed reports" (column 1, lines 60-62), which allows "characterization of said
vehicle operating expenses and said travel expenses for tax purposes," as recited in claim 15. For example,
in figure 4B "the user is prompted at step 69 to enter the reason for the mileage traveled" (column 5,
lines 6-7).
Fogg discloses a trip distance recorder for a motor vehicle connected to a mileage sensor to
measure the distance traveled (e.g., column 3, approx. lines 30-42; column 4, lines 24-30). The sensor
may be a drive shaft sensor (column 3, lines 30-42). Fogg discloses that the trips may be characterized
by one of ten trip types (column 3, lines 64-66; column 4, table I). The system in figure 2 of Fogg is "a data
storage and internal processor responsive to said mileage sensor and manual input, having a
microcomputer, a real time clock, and random access memory," as recited in claim 15. The real time clock
is not shown but is described, for example, in column 4. Fogg further discloses a calibration procedure to
calibrate the TICKS/TENTH parameter value (e.g., column 6, lines 30-68; column 5, line 52, to
column 10, line 20).
Whitaker shows a device for recording distances for personal and business use using a vehicle
speed sensor. A mileage sensor attached to the vehicle is connected to the device for recording miles
driven (column 3, lines 43-46). "The speed pick-up can be from the drive shaft, transmission, speedometer
cable or electronic control module (ECM)/electronic control unit (ECU)" (column 3, lines 10-12). The
purpose of the trip can be characterized as "business," "investment," or "personal" (default) (column 3,
line 62, to column 4, line 10). The system in figures 3-6 of Whitaker is "a data storage and internal
Appeal No. 95-3175
Application 08/124,361
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processor responsive to said mileage sensor and manual input, having a microcomputer, a real time clock,
and random access memory," as recited in claim 15. Whitaker discloses (column 7, lines 64, to column
8, line 8):
The calculated odometer reading may, however, vary somewhat from the reading of the mechanical
odometer within the vehicle. Therefore, to prevent loss of confidence by the operator in the data
stored by the apparatus, microprocessor 60 is programmed to compare the next odometer reading
entered through keypad 12 with that stored in data file 112, and to calculate therefrom a correction
factor that is applied to all calculated updates of vehicle mileage until the next odometer reading is
manually entered. In this manner, the calculated values will more closely correspond with values
indicated by the mechanical odometer.
Therefore, Whitaker teaches a calibration system.
Gulas shows a device for recording distances traveled on personal and business use including a
vehicle speed sensor. A mileage sensor attached to the vehicle is connected to the device for recording
miles driven (column 3, lines 27-45). The device in Gulas "can include input keys for inputting details of
gas purchase and amount to keep an accurate record of the total costs for later division into the separate
characteristics" (column 2, lines 32-35); see also column 4, lines 35-41. Thus, Gulas provides for
recording "vehicle travel mileage and vehicle operating expenses." The mileage and expenses can be
characterized as business or non-business for tax purposes (e.g., column 3, lines 9-11; column 4, lines
26-34).
Differences between the prior art
and the claimed invention
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Application 08/124,361
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Webb does not disclose (1) "automatically inputting information" from a mileage sensor of the
vehicle, and (2) "a calibration system operable to calibrate the computerized information processing system
with an odometer of the vehicle."
Fogg and Whitaker do not disclose (1) a "menu-driven input," (2) recording "vehicle operating
expenses," (3) recording "non-vehicular information including travel expenses," and (4) "transfer circuitry."
Gulas does not disclose (1) "menu-driven input," (2) recording "non-vehicular information including
travel expenses," (3) "transfer circuitry," and (4) "a calibration system."
Level of ordinary skill in the art
The level of ordinary skill is not argued, so we find the references to be representative of the level
of skill in the art. See In re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("the PTO
usually must evaluate both the scope and content of the prior art and the level of ordinary skill solely on the
cold words of the literature"); In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir.
1995) (the Board did not err in adopting the approach that the level of skill in the art was best determined
by the references of record). Cf. Chore-Time Equipment Inc. v. Cumberland Corp., 713 F.2d 774, 779
n.2, 218 USPQ 673, 676 n.2 (Fed. Cir. 1983) ("We hold only that an invention may be held to have been
either obvious (or nonobvious) without a specific finding of a particular level of skill . . . where, as here, the
prior art itself reflects an appropriate level and a need for such expert testimony has not been shown.").
Those of ordinary skill in the art must also be presumed to know something about the art apart from what
the references expressly disclose. In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962).
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Application 08/124,361
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Objective evidence of nonobviousness
There is no objective evidence of nonobviousness in the record.
Obviousness
The exact alignment of references (which reference is being modified) is not important. See
In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 267 (CCPA 1961). The test for obviousness is what
the combined teachings of the references would have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
It would have been obvious to one of ordinary skill in the art to modify Webb to provide
"automatically inputting information" from a mileage sensor of the vehicle in view of the teachings of Fogg,
Whitaker, and Gulas to allow more accurate inputting of mileage information. It would have been obvious
to provide a "calibration system operable to calibrate the computerized information processing system with
an odometer of the vehicle" with such an automatic mileage input system given the teaching of calibration
systems in Fogg and Whitaker.
Alternatively, it would have been obvious to one of ordinary skill in the art to modify Fogg or
Whitaker to provide a "menu-driven input" and recording of "vehicle operating expenses" and
"non-vehicular information including travel expenses" in view of the teachings of menus and recording of
such information for expense account purposes in Webb and in view of the teaching of recording vehicle
operating expenses in Gulas (cost and amount of gasoline purchases at column 4, lines 35-41). It would
further have been obvious to provide circuitry for transferring information from the devices of Fogg and
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Application 08/124,361
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Whitaker to an external computer in view of the teaching in Webb at column 1, lines 34-37, because that
would allow working on the data outside the vehicle and would allow the main program to be on the
external computer. The transfer circuitry does not have to be a cable as shown in appellants' figure 1.
Webb discloses that "[d]ata can be provided to a disc memory" (column 1, line 68), which would permit
the disc to be taken to another computer.
CONCLUSION
The rejections of claims 15-19, 26-27, and 31 are reversed.
A new ground of rejection is entered against claim 15 pursuant to 37 CFR § 1.196(b).
Any request for reconsideration or modification of this decision by the Board of Patent Appeals
and Interferences based upon the same record must be filed within one month from the date of the decision.
37 CFR § 1.197. Should appellants elect to have further prosecution before the examiner in response to
the new rejection under 37 CFR § 1.196(b) by way of amendment or showing of facts, or both, not
previously of record, a shortened statutory period for making such response is hereby set to expire two
months from the date of this decision.
Appeal No. 95-3175
Application 08/124,361
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No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
REVERSED ) § 1.196(b)
KENNETH W. HAIRSTON )
AdministrativePatent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3175
Application 08/124,361
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Jerry W. Mills
BAKER & BOTTS
2001 Ross Avenue
Dallas, TX 75201-2916