Ex Parte Kane et al

Patent Trial and Appeal Board

Dec 11, 2013

11846156 (P.T.A.B. Dec. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/846,156 08/28/2007 Mark Edward Kane 2007P50367 US 9911
28524 7590 12/11/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
WU, DANIEL J
ART UNIT PAPER NUMBER
2681
MAIL DATE DELIVERY MODE
12/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK EDWARD KANE and
JAMES FRANCIS SHOCKLBY
____________

Appeal 2011-008480
Application 11/846,156
Technology Center 2600
____________

Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-18, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard
November 14, 2013. A transcript of the hearing will be placed in the record
in due course.

1
The real party in interest is Siemens Rail Automation Corporation.
Statement under 37 C.F.R. § 3.73(b), dated Oct. 7, 2013, filed Oct. 10, 2013.
The real party in interest identified in the Appeal Brief is Invensys, plc., the
parent of Invensys Rail Corporation. App. Br. 1.
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2
We affirm and designate a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants’ disclosure relates to “[e]nsuring that an operator of a train
remains alert while operating the train . . . .” Spec., ¶ [0001]. Claim 1,
which is illustrative of the invention, reads as follows (parenthetical
reference letters in original):
1. A computerized method for ensuring that an
operator remains alert during operation of a train comprising
the steps of:
(a) monitoring at least one train control device to
determine whether the operator is operating the train control
device;
(b) if the operator has not operated the train control
device within a first time period, displaying at least one
sequence to an operator on a display device;
(c) determining whether the operator has entered a
corresponding sequence within a second time period; and
(d) stopping the train if the operator fails to enter the
corresponding sequence within the second time period.
The Examiner relies on the following prior art in rejecting the claims:
Love
2
US 5,012,226 Apr. 30, 1991
Adams US 5,392,030 Feb. 21, 1995
Puma US 5,729,619 Mar. 17, 1998
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Adams and Puma.

2
Discussed by Examiner (Final Rej. 2; Ans. 11) regarding the teachings of
Adams, but not relied on in rejecting claims 1-18.
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Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Sept. 23, 2010; “Reply Br.” filed Feb. 23, 2011) for the positions
of Appellants and the Final Rejection (“Final Rej.” mailed Mar. 1, 2010) and
Answer (“Ans.” mailed Dec. 23, 2010) for the positions of the Examiner.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).

ISSUES
Claims 1-18 are rejected on a common ground of rejection.
Appellants argue claims 1-18 together (see generally App. Br. 8-14; Reply
Br. 2-6). Claims 1 and 10 are independent and recite substantially similar
limitations. Appellants do not separately argue the patentability of claims 2-
9 and 11-18 with particularity. Therefore, we select claim 1 as the
representative claim, pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(vii). Claims 2-18 stand or fall with claim 1.
The pivotal issue raised by Appellants’ contentions is as follows:
Does the combination of Adams and Puma teach or suggest “(a) monitoring
at least one train control device to determine whether the operator is
operating the train control device; [and] (b) if the operator has not operated
the train control device within a first time period, displaying at least one
sequence to an operator on a display device,” as recited in clauses (a) and (b)
of representative claim 1?
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PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. “[T]he [obviousness] 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.” Id. at 418. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test 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 (CCPA 1981) (citations omitted).

ANALYSIS
Appellants contend the Examiner erred in rejecting claim 1 for the
following reason:
[N]othing in either Adams or Puma suggests to one of ordinary
skill in the art combining them in the manner recited in claims 1
and 18 [sic: 1-18], and the examiner has not identified any other
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reason why one of ordinary skill in the art would not be [sic:
would be] motivated to do so.

App. Br. 8. We are unpersuaded of error.
Appellants’ arguments focus on the details of how Puma uses
interaction between vehicle control devices and the vehicle operator,
drawing a distinction between how a potentially drowsy operator interacts
with the controls of an automobile and how a potentially drowsy operator
interacts with the controls of a train. See generally App. Br. 8-14; Reply Br.
2-6. However, the test of obviousness is not whether references may be
bodily inserted into each other or that the combination be expressly
suggested. Keller, 462 F.2d at 425. The test for obviousness is what the
combined teaching would have suggested to a person of ordinary skill in the
art, id., who is a person of ordinary creativity and not an automaton, KSR,
550 U.S. at 421, whose inferences and creative steps we may consider, id. at
418.
We agree with the Examiner that Adams’s invention teaches clauses
(c) and (d) of claim 1, and that portion of clause (b) that recites “displaying
at least one sequence to an operator on a display device.” Ans. 4-5 (citing
Adams, col. 1, ll. 5-8; col. 3, ll. 44-52; col. 4, ll. 11-23, 40-42; Figs. 1, 3; see
also col. 2, ll. 27-35) We further agree with the Examiner that Adams
teaches a two-step operator alertness process. See Ans. 4, 11 (citing Adams,
col. 1, ll. 44-52). Although the Examiner refers in passing to Love (Final
Rej. 2, Ans. 11), which is described by Adams, the teaching relied upon is
found within the four corners of Adams’s background section. We find that
one of ordinary skill in the art would have learned from Adams a process in
which failure of an operator to take action within a first period of time may
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indicate potential drowsiness which is confirmed if the operator fails to act
within a second period of time. See Adams, col. 1, ll. 44-52.
We agree with the Examiner’s implicit finding that the skilled person,
would learn from Adams’s background section together with Adams’s
invention the step of “if the operator has not [taken a prescribed action] . . .
within a first time period, displaying at least one sequence to an operator on
a display device,” thereby commencing the steps recited in clauses (c) and
(d) of claim 1. Such a step would be no more than a combination of familiar
elements, all found within the four corners of Adams, according to known
methods that yields no more than predictable results. See KSR, 550 U.S. at
417.
The Examiner finds that one of ordinary skill in the art would have
learned from Puma’s operator control input monitor 31 (Puma, col. 11. l.
60—col. 12, l. 5; Fig, 1C) to use interaction of the operator with at least one
vehicle control device as an indication of potential operator drowsiness
(Puma, col. 1, ll. 9-15; col. 12, ll. 2-5), and that such a vehicle may be a train
(Puma, col. 1, ll. 25-36). Ans. 4; see also Puma, col. 10, ll. 44-51. The
Examiner explains as follows:
The disclosure in Puma which is pertinent to claims 1, 10 . . .
relate[s] to frequency of input to a vehicle control e.g. the
number of movements in a steering over a given period of time
10:40-50 and module 31 figure 1A; Puma notes that a low
frequency of steering operations indicates possible drowsiness
(or inattentive) which relates to limitation (b) of claims 1, 10.
Not operating a control at all over a given time period
(limitation b) results in a frequency of zero operation cycles and
falls under the recitation of Puma, i.e., no operation over a
given time period suggests operator inattention which is a
opportune time to invoke an attention test as taught by Adams.

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Ans. 9-10. We agree with Appellants that “[w]hat Puma actually discloses
is that a low frequency of steering operations coupled with large movements
indicates operator drowsiness.” Reply Br. 4 (citing Puma col. 10, ll. 44-47,
49-51). However, that does not persuade us of error in the Examiner’s
reliance on Puma.
We agree with the Examiner that Puma teaches monitoring interaction
of the operator with at least one vehicle control device as an indication of
potential operator drowsiness, and that such a vehicle may be a train. Ans.
4. As pointed out by Appellants, “[a]s is well known in the art, trains
[unlike, e.g., automobiles] travel on rails and don't have steering wheels, and
have throttles which can be set to a desired horsepower (often referred to as
a throttle notch) and left alone until a different horsepower is desired.” App.
Br. 8 (emphasis added). Further, Appellants concede that “the operator is
alert when he is operating the train control devices.” App. Br. 9. In other
words, in resolving the level of skill in the pertinent art, see Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), we find the skilled person would have
understood the nature and characteristics of vehicle operator interaction with
differing types of controlled vehicles.
We find that one of ordinary skill in the art, learning from Puma that
operator interaction with vehicle controls can be used to indicate potential
operator drowsiness, would have used no more than ordinary creativity and
inferences, see KSR, 550 U.S at 418, to adapt the sensing of operator
interaction to the well-known characteristics of the particular vehicle, e.g., a
train. Thus, the combined teaching of Adams and Puma would have taught
or suggested the process recited in claim 1 to the person of ordinary skill in
the art. See Keller, 462 F.2d at 425. Such a combination would be no more
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than a combination of familiar elements according to known methods that
yields no more than predictable results. See KSR, 550 U.S. at 417. Further,
we agree with the Examiner that one of ordinary skill in the art would have
combined Puma with Adams motived by Puma’s teaching of using
interaction with operator controls to indicate potential drowsiness. Ans. 4
(citing Puma, col. 12, ll. 2-5).
Appellants have failed to persuade us of error in the rejections of
claim 1. Accordingly, we sustain the rejection of claim 1 and claims 2-18,
which fall with claim 1.
The factual thrust of our explanation of the rejection of claim 1 relies
on findings not articulated by the Examiner. Accordingly, we designate the
rejection of claims 1-18 as a new ground of rejection pursuant to our
authority within 35 U.S.C. § 41.50(b). See In re Leithem, 661 F.3d 1316,
1320 (Fed. Cir. 2011).

ORDER
The decision of the Examiner to reject claims 1-18 is affirmed.
We designate the rejection of claims 1-18 as a new ground of
rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED
37 C.F.R. § 41.50(b)

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