Ex Parte Kinkade et al

Patent Trial and Appeal Board

Feb 20, 2014

11457656 (P.T.A.B. Feb. 20, 2014)

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.
11/457,656 07/14/2006 Donald R. Kinkade DKMH1000 7505
59911 7590 02/20/2014
MITCH HARRIS, LLC - GENERAL
P.O. BOX 7998
ATHENS, GA 30604
EXAMINER
PENG, HUAWEN A
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
02/20/2014 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 DONALD R. KINKADE and
ANDREW MITCHELL HARRIS
________________

Appeal 2011-008015
Application 11/457,656
Technology Center 2100
________________

Before JOHN A. JEFFERY, ANDREW J. DILLON, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9, 13-17, 19, and 21-33. App. Br. 3. Claims 1-8, 10-12,
18, and 20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 9, 13-16, and 21 are rejected under 35 U.S.C. § 103(a) as
obvious over Birkner (US 2006/0015475 A1; published Jan. 19, 2006) and
Dunn (US 6,012,786; issued Jan. 11, 2000). Ans. 4-9.
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Claim 17 is rejected under 35 U.S.C. § 103(a) as obvious over
Birkner, Dunn, and Koz (US 5,581,297; issued Dec. 3, 1996). Ans. 9-10.
Claim 19 is rejected under 35 U.S.C. § 103(a) as obvious over
Birkner, Dunn, and Kucharczyk (US 6,300,873 B1; issued Oct. 9, 2001).
Ans. 11-12.
Claims 22-31 and 33 are rejected under 35 U.S.C. § 103(a) as obvious
over Dunn, Kucharczyk, and Birkner. Ans. 12-21.
Claim 32 is rejected under 35 U.S. C. § 103(a) as obvious over Dunn,
Kucharczyk, Birkner, and Koz. Ans. 21-23.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to “[a] job-site inspector
communications and plan storage unit . . . .” Abstract. Claim 9 is illustrative
and reproduced below:
9. A job-site inspection unit, comprising:
a frame for securing said unit at a location proximate to said job-site;
a graphical display device secured to said frame;
an input device secured to said frame; and
a processing system including a processor for executing program
instructions and a memory for storing program instructions and data and an
interface circuit for communicating with a remote computer system, wherein
said program instructions comprise program instructions for simulating a
job-card by displaying inspection data on said graphical display, receiving
user input from said input device to modify a status of said inspection data,
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and transmitting a notification through the interface circuit to a remote
computer system that the status of the inspection data has been modified.

ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 9, 13-16, AND 21 OVER BIRKNER
AND DUNN
The Examiner finds Birkner teaches all limitations of claim 9, except
for the recited frame for securing the unit at a location proximate to the job-
site, for which the Examiner relies on Dunn. Ans. 6 (citing Dunn, col. 2, ll.
17-20; col. 5, ll. 48-49).
The Examiner reasons
it would have been obvious to one of ordinary skill in the art,
having the teachings of Birkner and Dunn before him or her, to
modify the method of Birkner to include the method that “a
frame for securing said unit at a location proximate to said job-
site” of Dunn.
The suggestion/motivation for doing so would have been
to provide effective way to organize articles stored within the
display case by combining structural features and objects that is
suitable for construction sites (column 2 lines 12-17; column 3
lines 22, 24-27).
Ans. 6.
The Examiner further explains
in Birkner reference [0234], a user collects work in progress
data as shown in FIG. 11, Examiner interprets that the
exemplary screen, Daily Work Progress, on a handheld
computer is equivalent to an electronic form of a job-card.
Ans. 24.

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Appellants present the following principal arguments:
(i) “Securing the portable device of Birkner at a job-site would run
counter to the utility of the device disclosed in Birkner . . . .” App. Br. 7-8;
see also Reply Br. 3.
(ii)
Birkner does not disclose a physical or an electronic form of a
job-card, as the description of the inspection field notebook
system disclosed by Birkner, e.g[.], in ¶12 of Birkner, is that of
a notebook used by agents of a construction contractor, rather
than a job-card accessed by an inspector. See Birkner at ¶12, in
which the field notebook is described as containing “values that
are paid to the contractor”, information that would not generally
be shared on a job-card.
App. Br. 8; see also Reply Br. 4-5.
We are not persuaded of error by Appellants’ arguments.
Regarding argument (i), we find this argument unpersuasive.
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).
Here, Birkner teaches an electronic construction management system
including a handheld computer. Birkner, Abstract. Dunn teaches a
construction site display and storage case. Dunn, Abstract. The Examiner
reasonably explained why the combined teachings of Birkner and Dunn
would have suggested the addition of Dunn’s frame to Birkner’s handheld
computer — the effective organization of articles stored within the display
case. Ans. 6.
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We note that the broad language of claim 9 does not specify
particulars of the securing arrangement. Contrary to Appellants’ argument
(App. Br. 7-8; Reply Br. 3), securing the portable device of Birkner at a job-
site, for example, to allow the portable device to be temporarily secured in
an organized manner in Dunn’s display case, would not run counter to the
utility of the device disclosed in Birkner.
Regarding Appellants’ argument (ii), we find this argument
unpersuasive because we conclude that the terms “job-card” and
“inspection” merely describe the content of the “data” and do not affect the
recited functions, and, as such, recite non-functional descriptive matter. We
have fully considered the phrase “simulating a job-card by displaying
inspection data” and conclude it does not patentably distinguish from the
Daily Work Progress screen of Birkner (Fig. 11). See In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883,
1887-89 (BPAI 2008) (precedential) (discussing cases pertaining to non-
functional descriptive material).
Further, even giving patentable weight to the terms “job-card” and
“inspection,” we still are not persuaded of that the Examiner erred.
Birkner (¶234) describes:
FIG. 10 shows an exemplary process 500 for collecting data in
the field and uploading the data to the computer of FIG. 1. First,
a user collects work in progress data (step 510). The
information collected includes project/contract identification,
inspector identification, item number, location, and one or more
description of activities. Various exemplary screens on a
handheld computer for step 510 are shown as FIGS. 11-18.
Birkner (Fig. 11) depicts a Daily Work Progress screen on the
handheld device.
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Birkner’s collecting of work in progress data (510, Fig. 10) and Daily
Work Progress screen (Fig. 11) describes a job-card displaying inspection
data on the graphical display, as recited by claim 9.
Weighing Appellants’ arguments against the Examiner’s findings, we
conclude Appellants have not shown error in the Examiner’s obviousness
rejection based on Birkner and Dunn regarding claim 9. We, therefore,
sustain the Examiner’s rejection based on Birkner and Dunn of claim 9, as
well as claims 13-16 and 21, which are not separately argued.

THE OBVIOUSNESS REJECTION OF CLAIM 17 OVER BIRKNER, DUNN, AND KOZ
Appellants argue “[w]hile Koz discloses a camera, there is nothing in
Birkner, Dunn and Koz to suggest combining such a camera within a job-site
inspection unit as recited in Claim 17.” App. Br. 9; see also Reply Br. 6.
The Examiner explains “[t]he suggestion/motivation for doing so
would have been to verify an individual’s authorization to enter the area
under observation by providing a video security monitoring system (column
2 lines 32-35).” Ans. 10. We agree with the Examiner.
We, therefore, sustain the Examiner’s rejection of claim 17.

THE OBVIOUSNESS REJECTION OF CLAIM 19 OVER BIRKNER, DUNN, AND
KUCHARCZYK
Appellants argue “[w]hile Kucharczyk discloses an electronic lock
box, there is nothing in Birkner, Dunn and Kucharczyk to suggest combining
such an electronically accessible lock box within a job-site inspection unit as
recited in Claim 19.” App. Br. 10; see also Reply Br. 7.
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The Examiner explains “[t]he suggestion/motivation for doing so
would have been to ensure the security of accessing storage device by
providing and maintaining the one-time use access codes.” Ans. 12. We
agree with the Examiner.
We, therefore, sustain the Examiner’s rejection of claim 19.

THE OBVIOUSNESS REJECTION OF CLAIMS 22-31 AND 33 OVER DUNN,
KUCHARCZYK, AND BIRKNER
Appellants present the following principal arguments:
(i) “Birkner does not disclose a job-card at all, and for that reason
does not suggest transmitting any kind of message in response to access to a
container containing the job-card.” App. Br. 10-11; see also Reply Br. 8.
(ii) “Dunn does not disclose any electronic features, and for that
reason contributes nothing to further suggest transmitting a message
indicating access to a job card.” App. Br. 11; see also Reply Br. 8.
(iii) “Kucharczyk only discloses an electronic lock box for use by
delivery services, and adds no suggestion that the features disclosed therein
would be desirable at a construction site for containing a job-card and
notifying building personnel that the job-card has been accessed.”
App. Br. 11; see also Reply Br. 8.
The Examiner responds:
In response to the Appellant arguments examiner respectfully
submits that Birkner discloses a construction management
system that collects construction data, e.g. work in progress
data, and transmits the collected information to a server. The
system also handles project documentation, such as project
specifications, industry specifications, and drawing logs. Dunn
discloses a display and storage case that located at a
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construction site. As indicated above, it would have been
obvious and achievable to one having ordinary skill in the art to
install the construction management system disclosed by
Birkner at the construction site in a display frame fashion
disclosed by Dunn, since it has been held that rearranging parts
of an invention involves only routine skill in the art. Combine
with Kucharczyk’s teaching, secured access code mechanism,
to disclose the claimed invention of claims 22-31 and 33.
Ans. 28. We agree with the Examiner. We also note the proposed
combination does not require rearrangement of parts. Rather, the combined
teachings of the references suggest the claimed combination.
We, therefore, sustain the Examiner’s rejection of claims 22-31 and
33.

THE OBVIOUSNESS REJECTION OF CLAIM 32 OVER DUNN, KUCHARCZYK,
BIRKNER, AND KOZ
Appellants argue claim 32 depends from claim 27, and Dunn,
Kucharczyk, Birkner and Koz do not suggest the invention as recited in
Claim 27. App. Br. 11; see also Reply Br. 9.
Leaving aside the fact that claim 32 depends from claim 28—not
claim 27 as Appellants assert—we nonetheless are unpersuaded of error in
the Examiner’s rejection of claim 32 for the reasons discussed above and by
the Examiner.

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DECISION
The Examiner’s decision rejecting claims 9, 13-17, 19, and 21-33 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).

AFFIRMED

ELD