Ex Parte Kirk et al

Patent Trial and Appeal Board

Sep 21, 2016

13524610 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/524,610 06/15/2012
26710 7590 09/23/2016
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
John B. Kirk
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
780139.00347 5358
EXAMINER
TROOST, AARON L
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
09/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN B. KIRK, RYAN A. MAGILL, TIMOTHY E. DONAHUE,
and RICHARD M. DAY
Appeal2014--009181
Application 13/524,6101
Technology Center 3600
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John B. Kirk et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims
12-17, 19, 23-26, 28-30, 32, 33, and 35 as unpatentable over Ambrosio (US
7,471,066 B2, iss. Dec. 30. 2008), Eguchi (US 2012/0146776 Al, pub. June
14, 2012), and Hori (US 2006/0279265 Al, pub. Dec. 14, 2006); and claims
18, 27, and 34 as unpatentable over Ambrosio, Eguchi, Hori, and Yamashita
(US 2008/0303343 Al, pub. Dec. 11, 2008).2 We have jurisdiction under 35
U.S.C. § 6(b).
1 According to Appellants, the real party in interest is The Raymond
Corporation. Br. 1.
2 Claims 1-11, 20-22, and 31 have been canceled. Br. Al--4, Claims App.
Appeal2014--009181
Application 13/524,610
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 12, 23, and 29 are independent. Claim 12 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
12. A system for transmitting data between components
of an industrial vehicle that are powered by electricity received
through a power line, said system comprising
a first electrical choke with a conductor passing there
through, wherein the conductor connects a first component to the
power line;
and a first communication circuit for at least one of
sending and receiving message signals and having a
transmission wire for carrying the message signals, wherein the
transmission wire passes through the first electrical choke and is
electrically attached to the conductor at a point between the first
electrical choke and the first component.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Appeal Brief and the Examiner's Answer. We disagree
with Appellants' conclusions, and agree with, and adopt as our own, the
Examiner's findings and conclusions of law set forth at pages 14--19 of the
Examiner's Answer. Specific arguments are highlighted and addressed
below for emphasis.
Obviousness of Claims 12-17, 19, 23-26, 28-30, 32, 33, and 35 over
Ambrosio, Eguchi, and Hori
Appellants first contend that Ambrosio "does not disclose any
electrical choke." Br. 5. However, Appellants are simply attacking
Ambrosia in isolation for lacking support for findings not relied upon by the
2
Appeal2014--009181
Application 13/524,610
Examiner, rather than addressing the Examiner's combination of Ambrosia,
Eguchi, and Hori. 3 N onobviousness cannot be established by attacking
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The rejection relies on Eguchi for its teaching of a first electrical
choke.
We are also not persuaded by Appellants' argument that Ambrosia
"does not even recognize ... attenuation of the message signals resulting
from a low impedance shunt path through a battery or other vehicle
component." Id. While we offer no opinion as to whether Appellants may
be correct, the argument fails from the outset because ... it is "not based on
limitations appearing in the claims." See In re Self, 671 F. 2d 1344, 1348
(CCPA 1982). Claim 12 is not limited to a recognition of attenuation of
messages signals of any kind. Rather, claim 12 merely recites "a
transmission wire for carrying the message signals." Br. A-1, Claims App.
Also not persuasive is Appellants' contention that "[t]he second
power line 27 [of Eguchi] does not pass through the battery choke 14." Br.
5---6. As with Ambrosia, Appellants are simply attacking Eguchi in isolation
for lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner's combination of Ambrosia, Eguchi, and Hori. In
re Merck, 800 F.2d at 1097. As explained by the Examiner, the rejection
relies on Hori for its teaching of a conductor and transmission wire both
passing through a first electrical choke. 4
3 See Final Act. 5-7.
4 See Final Act. 5-7.
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Appeal2014--009181
Application 13/524,610
While recognizing that the Examiner looks to Hori for teaching "a
communication system that has a first electrical choke (citing 'ferrite core'
23b in Figure 3) through which both a conductor of power line 10 and a
message transmission wire 11 pass," Appellants contend that "[ n Jot all
ferrite cores function as an electrical choke that blocks a signal travelling
in a conductor, some serve as the core of a transformer that inductively
couples message signals between two separate conductors." Br. 6-7.
However, again Appellants contentions are not commensurate in
scope with claim 12, which is not limited to an electrical choke that blocks a
signal traveling in a conductor, but merely recites an electrical choke
through which pass a conductor and a transmission wire. See Br. A-1,
Claims App. Furthermore, as the Examiner notes, claim 12 "does not
provide any additional limitations as to how the choke is configured to
function." Ans. 14. As we are instructed by our reviewing court,
"limitations are not to be read into the claims from the [S]pecification." In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989)).
Appellants also contend that "the separate transmission wire 11
carrying the message signals [in Hori] is not attached to the power line
conductor 10." Br. 9. Whether or not Appellants' contention is correct,
Appellants are again simply attacking a reference in isolation for lacking
support for findings not relied upon by the Examiner, rather than addressing
the Examiner's combination of Ambrosia, Eguchi, and Hori. In re Merck,
800 F .2d at 1097. The Examiner relies on Ambrosia for teaching a first
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Appeal2014--009181
Application 13/524,610
communication circuit having a transmission wire electrically coupled to the
conductor. 5
Also not persuasive is Appellants' argument with respect to dependent
claim 17, that "none of Ambrosio, Eguchi and Hori ... render obvious the
relative directions in which the conductor and the transmission wire pass
through a choke." Br. 11. Elements such as conductors and transmission
wires don't have a "direction". As the Examiner had previously explained,
"[p ]ower flows from the positive battery terminal through the conductor in a
first direction," while "[t]ransmission signals traveling from the transceiver
to the positive battery terminal would pass through the choke in a second
direction opposite the first direction." Final Act. 8-9.
In summary, we find the arguments presented on pages 5-12 of
Appellants' Appeal Brief to be conclusory and unsupported by objective
evidence (e.g., declaration by one skilled in the art). Argument of counsel
cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974). See also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (holding that arguments and conclusions unsupported by factual
evidence carry no evidentiary weight).
The Examiner initially determined, as set forth at page 3 of the Final
Action, that "the combination [of Ambrosia, Eguchi, and Hori] yields a
configuration having a single choke, where both the conductor and
transmission wire pass there through, and where the conductor and the
transmission wire are attached at a point after the choke and prior to the
5 See Final Act. 5-7.
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Application 13/524,610
battery," as recited by claim 12. The Examiner also augmented the final
rejection at pages 14--19 of the Answer with additional findings and
conclusions of law that Appellants do not dispute.
Accordingly, we sustain the Examiner's rejection of claims 12-17, 19,
23-26, 28-30, 32, 33, and 35 under 35 U.S.C. § 103(a) as unpatentable over
Ambrosio, Eguchi, and Hori.
Obviousness of Claims 18, 27, and 34 as unpatentable over Ambrosio,
Eguchi, Hori, and Yamashita
Other than observing that Yamashita "does not teach both a power
conductor and a communication transmission wire passing through the same
electrical choke," we understand Appellants' appeal of the rejection of
dependent claims 18, 27, and 34 to rest on the arguments presented supra
regarding the combination of Ambrosio, Eguchi, and Hori. Br. 13. We are
not persuaded that Appellants' arguments are demonstrative of error in the
Examiner's rejection of claim 12, as set forth supra. See Br.12-13. As
such, for the same reasons, we sustain the rejection of claims 18, 27, and 34
under 35 U.S.C. § 103(a) as unpatentable over Ambrosio, Eguchi, Hori, and
Yamashita.
DECISION
We AFFIRM the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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