Ex Parte Kane

Board of Patent Appeals and Interferences

Jul 10, 2009

10960970 (B.P.A.I. Jul. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK EDWARD KANE
____________________

Appeal 2009-001727
Application 10/960,970
Technology Center 3600
____________________

Decided:1 July 13, 2009
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001727
Application 10/960,970

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STATEMENT OF THE CASE
Mark Edward Kane (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1 through 11 and 13 through 22 and the
Examiner’s refusal to allow claim 12 as amended after final rejection. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to a method and system for
controlling a train’s electronic braking system. (Spec. 4, ll. 12-14.) Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for controlling a train comprising the
steps of:
determining on a train control computer separate from an
electronic braking system that the brakes of a train should be
activated in order to prevent the train from violating a
restriction on movement of the train, the brakes being
controlled by an electronic braking system on the train, the
electronic braking system being configured to activate the
brakes if power to the electronic braking system is disrupted;
and
controlling an electrically operated switch connected
between the electronic braking system and a power source so as
to prevent the power source from supplying power to the
electronic braking system such that the train’s brakes are
activated to prevent violation of the restriction.

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Application 10/960,970

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Borg US 4,107,253 Aug. 15, 1978
McGrane US 5,504,469 Apr. 2, 1996
Wu US 2004/0095737 May 20, 2004

WordReference.com English Dictionary, definition of “electronic device”;

WordReference.com English Dictionary, definition of “electronically”;

WordReference.com English Dictionary, definition of “electronic”; and

Appellant’s Admitted Prior Art (AAPA), page 2, lines 11-23 of the
Specification.

The following Examiner’s rejections are before us for review:
1. Claims 1-18 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Borg; and
2. Claims 19-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Borg and AAPA.

ISSUES
The Examiner found that Borg anticipates the methods and systems of
claims 1-18. (Ans. 3-4.) Appellant contends that Borg does not disclose an
“electronic braking system.” (App. Br. 5.) The Examiner found that Borg’s
brake device 45 and its coil 46 constitute an electronic braking system.
(Ans. 6.) Thus, the first issue presented is:
Has the Appellant shown that the Examiner erred in finding that Borg
discloses an electronic braking system?
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Appellant also contends that Borg does not disclose the step of
“determining … that the brakes of a train should be activated in order to
prevent the train from violating a restriction on movement of the train” as
recited in claim 1. (Id. at 7.) The Examiner found that Borg discloses the
recited step because Borg prevents train movement when there is a system
error. (Ans. 7.) Thus, another issue presented is:
Has the Appellant shown that the Examiner erred in finding that Borg
discloses determining that the brakes should be activated to prevent a
restriction on movement violation?
Concerning the obviousness rejection, the Examiner found that
Appellant’s Specification on lines 11-23 of page 2 is an admission that the
prior art teaches the use of a speed restriction and a block restriction as a
restriction on movement of the train. (Ans. 5.) Appellant contends that
there has not been an admission. (App. Br. 8.) Therefore, another issue is:
Has Appellant shown error in the Examiner’s finding that the
Specification contains an admission that the prior art teaches the use of a
speed restriction and a block restriction as a restriction on train movement?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Borg discloses a safety and test device for a train in which a
micro computer 11 delivers output signals to a brake for braking the train to
reduce speed, if necessary, and in the case of errors in the computer or its
input or output means. (Borg, col. 1, ll. 5-16; col. 2, l. 52.) Borg also
discloses a train brake device (indicated schematically as block 45 in Borg’s
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figure 1) that has a brake magnetic winding 46. (Id., col. 4, ll. 26-28; fig. 1.)
When any error is detected in the computer or its input or output means, the
current to the brake winding ceases and braking is initiated. (Id., col. 3, ll.
58-62; col. 4, ll. 40-55.)
2. McGrane pertains to electrical conductors in the context of the
miniaturisation of electronic components, and pertains particularly to those
conductors used for the winding of electric coil devices. (McGrane, col. 1,
ll. 3-5, 33-37.) McGrane states that “[t]he invention is not solely applicable
to transformers, but can also be applied to other electronic coil devices such
as chokes where conductor windings are applied and where miniaturisation
is desirable.” (Id., col. 5, ll. 38-40.)
3. Wu pertains to a packing structure for an electronic device in
which the electrical properties may be measured before subjecting the item
to plastic molding. (Wu, ¶ [0001].) Wu states that “[p]referably, the
electronic device is a coil.” (Wu, ¶ [0010]; see also id., claim 2.)
4. Therefore, McGrane and Wu indicate that, in the electronics art,
a coil may be considered to be an electronic device.
5. Appellant’s Admitted Prior Art (AAPA) teaches that train
control systems for controlling movement of the train were known in the art,
and that known passive systems assumed control if the operator attempted to
operate the train in an unsafe manner. (Spec. 2, ll. 11-20.) Examples of
operating in an unsafe manner include exceeding a maximum allowable
speed and entering an occupied block. (Id.) Therefore, AAPA teaches the
use of a speed restriction and a block restriction as a restriction on
movement of the train.

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PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is the Appellant’s
burden to precisely define the invention, not that of the United States Patent
and Trademark Office. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(citing 35 U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the
claims during prosecution, and broad interpretation by the Examiner reduces
the possibility that the claim, once issued, will be interpreted more broadly
than is justified. Prater, 415 F.2d at 1404-05.
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987) (citations omitted).

ANALYSIS
The Rejection of Claims 1-18 Under 35 U.S.C. § 102(b) as Being
Anticipated by Borg
Appellants argue claims 1-18 as a group. (App. Br. 5-7.) We select
claim 1 as the representative claim, and claims 2-18 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
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Appellant first argues that Borg does not disclose an “electronic
braking system.” (App. Br. 5.) The Examiner found that Borg’s brake
device 45 along with its magnetic winding 46, through which current passes,
constitutes an electronic braking system within the meaning of Appellant’s
claim. (Ans. 3, 5.)
Claim 1 describes the electronic braking system as “being configured
to activate the brakes if power to the electronic braking system is disrupted.”
The claim does not further elaborate on the meaning of the phrase
“electronic braking system.” The Specification generally discusses “typical”
electronic braking systems (see, e.g., Spec. 3, ll. 1-14), but does not define
with any specificity the scope of the subject matter encompassed by the
claim’s phrase.
Appellant argues that the presence of a coil in Borg does not support a
finding of an electronically controlled system because the Specification
“clearly distinguishes” between conventional, electrically controlled braking
systems with a valve having a coil and electronically controlled braking
systems. (App. Br. 5-6 (citing Spec. 1, l. 9 – 2, l. 4).) We do not find the
cited portion of the Specification to provide a clear distinction between
electronically controlled and electrically controlled braking systems. While
the Specification does describe an electrically controlled valve employing a
solenoid (Spec. 1, l. 19), it does not indicate that electronic braking systems
never utilize such a valve (cf. Spec. 7, ll. 9-12 (the electronic braking system
has an internal valve which will automatically open upon a loss of power,
causing a loss of pressure in the air brake pipe)). Further, Appellant’s
attempt to distinguish Borg is implicitly premised on the unsupported and
conclusory assumption that Borg’s system is a conventional, electrical
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braking system rather than the recited electronic braking system. Appellant
has not adequately explained how the claimed electronically controlled
system is structurally different from Borg’s brake system.
Appellant also argues that the mere presence of a coil in Borg does
not qualify that system as an electronic braking system because a coil is an
electrical device rather than an electronic device. (App. Br. 6.) Appellant
relies on definitions of “electronic device” in an electronics dictionary as
support for that proposition. (Id.) However, the Examiner points to an
issued patent and a published patent application indicating that, in the
electronics art, coils may also be regarded as electronic devices. (Facts 2-4.)
Appellant has not directed our attention to any portion of the
Specification that defines “electronic braking system” and has not offered
any persuasive evidence that indicates that the phrase has an ordinary
meaning in the art. As a coil may be regarded in the art as an electronic
device and as Borg’s brake device activates the brakes upon a disruption of
power (Fact 1), we perceive no error in the Examiner’s finding that Borg
discloses an “electronic braking system” when the claim is given the
broadest reasonable construction consistent with the Specification.
Appellant next argues that Borg fails to disclose the step of
“determining … that the brakes of a train should be activated in order to
prevent the train from violating a restriction on movement of the train.”
(App. Br. 7.) Appellant suggests that the claimed restriction on movement is
limited to a restriction such as a speed restriction or a restriction on entering
an unauthorized block. (App. Br. 7 (citing Spec. 3, ll. 15-24).) This
argument is not commensurate with the claim language, which does not limit
the scope to any specific movement restriction. Borg’s system will activate
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the brakes – thus preventing movement of the train – upon the detection of
an error in the micro computer or its input or output means. (See Fact 1.)
When given the broadest reasonable construction, the recited “restriction on
movement” includes the preclusion of movement while there is a system
error. Appellant has not shown error in the Examiner’s finding that Borg
discloses determining that the brakes should be activated to prevent a
restriction on movement.
Appellant has not shown that the Examiner erred in rejecting claim 1
as anticipated by Borg. Accordingly, we sustain the rejection of claim 1, as
well as the rejection of claims 2-18, which fall with claim 1.

The Rejection of Claims 19-22 Under 35 U.S.C. § 103(a) as Being
Unpatentable over Borg and AAPA
Claims 19-22 depend from either independent claim 1 or claim 10,
and define the restriction on movement as a speed restriction or a block
boundary. Appellant disputes the Examiner’s finding that the
Specification’s discussion of the prior art constitutes an admission that the
subject matter of these limitations was known in the prior art. (App. Br. 8.)
We are not persuaded that the Examiner’s finding is erroneous. (See Fact 5.)
Appellant also asserts that claims 19-22 are patentable over the
combination of Borg and AAPA because the AAPA does not cure the
deficiencies of the underlying anticipation rejection of independent claims 1
and 10. (App. Br. 8.) As discussed above, we have concluded that the
Appellant has not shown that the Examiner erred in rejecting independent
claims 1 and 10 as anticipated by Borg. Therefore, there are no deficiencies
in that regard for the AAPA to cure. Accordingly, Appellant has not shown
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that the Examiner erred in rejecting claims 19-22 as obvious over Borg and
AAPA.

CONCLUSIONS
We conclude that the Appellant has not shown that the Examiner
erred in finding that Borg discloses an electronic braking system, or that the
Examiner erred in finding that Borg discloses determining that the brakes
should be activated to prevent a restriction on movement violation.
We also conclude that the Appellant has not shown error in the
Examiner’s finding that the Specification contains an admission that the
prior art teaches the use of a speed restriction and a block restriction as a
restriction on train movement.
Therefore, Appellant has not shown that the Examiner erred in
rejecting claims 1-18 as anticipated by Borg, or in rejecting claims 19-22 as
obvious over Borg and AAPA.

DECISION
The decision of the Examiner to reject claims 1-22 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Appeal 2009-001727
Application 10/960,970

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