Ex Parte Lim et al

Board of Patent Appeals and Interferences

Apr 5, 2012

10412198 (B.P.A.I. Apr. 5, 2012)

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.
10/412,198 04/11/2003 Hee Chuan Lim 2055
7590 04/05/2012
Walter J. Tencza Jr.
Suite 210
100 Menlo Park
Edison, NJ 08837
EXAMINER
CROSLAND, DONNIE L
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
04/05/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HEE CHUAN LIM, YEW FONG HOR,
JULIAN S. TAN, and EUGENIO SANTOS
____________

Appeal 2010-002081
Application 10/412,198
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-45. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We Affirm.

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INVENTION
Appellants’ invention relates to “providing warnings regarding
obstacles, such as low bridges, to vehicles, such as semi-truck trailers, cargo
containers, over size vehicles, and marine vehicles.” (Spec. 1).

ILLUSTRATIVE CLAIM
1. An apparatus comprising
a receiver unit comprised of a processor and an indicator;

wherein the receiver unit can receive a signal from a
transmitter;

wherein the signal includes information about an obstacle on a
transportation route;

wherein the information about the obstacle includes a location
of the obstacle;

and wherein the processor obtains from the signal the
information about the obstacle, and the processor causes the indicator
to provide an indication relating to the information about the obstacle,
including an indication relating to the location of the obstacle.

REJECTIONS
1. The Examiner rejected claims 1, 3, 4, 10-12, 18, 20, 21, 24, 25, 27,
28, 33-35, 37, 39, and 40 under 35 U.S.C. § 102(b) as being clearly
anticipated by Stover (U.S. Pat. No. 3,899,671).

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2. The Examiner rejected claims 2, 5-9, 17, 22, 23, 26, 29, 30-32, 36,
41, and 42 under35 U.S.C §103(a) as being unpatentable over the
combination of Stover and Johns (U.S. Pat. No. 4,621,252).

3. The Examiner rejected claims 13-16, 19, 38, and 43-45 under 35
U.S.C. 103(a) as being unpatentable over Stover.

Anticipation rejection over Stover
At the outset, we observe that Appellants only contest the anticipation
rejection of dependent claims 21 and 40:
With regards to the rejections under 35 U.S.C. 102, the
applicant argues that claims 21 and 40 are allowable as will be
explained. The applicant submits no argument with regards to
the other claims rejected under 35 U.S.C. 102.

(App. Br. 11, emphasis added).
Because Appellants do not provide any arguments traversing the
Examiner’s anticipation rejection of claims 1, 3, 4, 10-12, 18, 20, 24, 25, 27,
28, 33-35, 37, and 39 we consider these arguments waived. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to
contest a ground of rejection to the Board, section 1.192(c)(7) [(now section
41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of
that ground of rejection. . . . [T]he Board may treat any argument with
respect to that ground of rejection as waived.”). Therefore, we summarily
sustain the Examiner’s anticipation rejection of claims 1, 3, 4, 10-12, 18, 20,
24, 25, 27, 28, 33-35, 37, and 39 over Stover.
Regarding dependent claims 21 and 40, Appellants argue the
anticipation rejection of these claims as a single group. (App. Br. 11-12).
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We select claim 21 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We reproduce representative claim 21 below:

21. The apparatus of claim 20 wherein the
transmitter is permanently mounted at a location,
which is near each of the plurality of obstacles.

Appellants contend:
In at least one embodiment of the present invention, a
transmitter 5 is permanently mounted at a location, which is
near a plurality of obstacles, such as bridges 12 and 22. (Present
application, Fig. 2, pg. 11, last paragraph). Stover discloses that
its transmitters are located along a highway (col. 2, lns. 8-15)
but does not disclose that a transmitter should be located near a
plurality of obstacles.

(App. Br. 12).

The Examiner disagrees:

With respect to these claims [21, 40] Stover discloses
that the transmitter 10 gives information only at particular
locations and for the immediate vicinity of the location, col. 4,
lines 28-30. Such clearly reads on the claim limitations of the
transmitter mounted at a location near each of the plural
objects.
Stover also states that the transmitter station such as 48 in
figure 4 is fixed relative to the road (obstacle), see col. 6, lines
53-60. Also, claim 1 of Stover states a plurality of fixed
transmitters installed at different locations along a highway.
In each instance the term "fixed transmitters" installed
equates to the claimed "permanently mounted."

(Ans. 8).

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Issue: Did the Examiner err in finding that Stover discloses a
“transmitter [that] is permanently mounted at a location, which is near each
of the plurality of obstacles,” within the meaning of representative claim 21?
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
Here, we agree with the Examiner that the disputed limitation of a
“transmitter [that] is permanently mounted at a location, which is near each
of the plurality of obstacles” (emphasis added) broadly reads on at least
Stover’s description at column 4, lines 28-30 (“the transmitting unit 10 gives
information only at particular locations and for the immediate vicinity of the
location”), where Stover’s traffic lights and other highway indication signs
(col. 4, ll. 25-27) at particular road locations fall within the broad scope of
the claimed “obstacles” on a transportation route. (See claim 21 and the
similar language of claim 40).
Therefore, on this record, we sustain the Examiner’s anticipation
rejection of representative claim 21, and claim 40 which falls therewith. See
37 C.F.R. § 41.37(c)(1)(vii).

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Obviousness Rejection over Stover and Johns
Claims 2, 6, 9, 26, and 30
To the extent that Appellants advance separate substantive arguments
regarding the Examiner’s §103 rejection of claims 2, 6, 9, 26, and 30, we
address these arguments below:
Claims 2 and 26
Issue: Did the Examiner err in finding that the cited combination of
references would have taught or suggested that the “the obstacle is a bridge
overpass,” within the meaning of claims 2 and 26?
Based upon our review of the record, we agree with the Examiner that
an artisan would have recognized that the bridge height is taught or
suggested in view of the express “Low clearance” teaching in Table 6 of
Stover, as depicted in column 16. (Ans. 9). As also pointed out by the
Examiner (Id.), the secondary Johns reference teaches an apparatus, as
shown in Figure 1, for providing information about a specific obstacle such
as a bridge. (See also Johns, col. 3, ll. 12-15).
Claims 6, 9, and 30
Issue: Did the Examiner err in finding that the cited combination of
references would have taught or suggested that the “receiver unit includes a
memory in which is stored a maximum height of a vehicle in which the
receiver unit is located,” within the meaning of claims 6 and 9, and the
similar language of claim 30?
Based upon our review of the record, we agree with the Examiner’s
findings:
H[2] in [Johns] represents the maximum height of
the vehicle as [a]ffected by thumb wheel switches
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46 and 48 which is stored in a preset memory as
units and tenths, see figure 5. The latching of the
preset coding through counters 132 serves as a
memory for the vehicle height H[2], see col. 3,
lines 52-68 and col. 6, lines 1-36. The latching of
the counter serves as a memory. Also, col. 1, lines
37-45 provides for the store of decoding of
information.
(Ans. 9).
We observe that Johns teaches a bridge clearance height H1 that is
transmitted. (Col. 3, ll. 13-26). The vehicle brake may be automatically
actuated in the event that the bridge clearance height H1 is equal to or less
than the (stored) vehicle height H2. (Col. 4, ll. 51-54).
For these reasons, we do not find Appellants’ arguments persuasive of
Examiner error. Therefore, we sustain the Examiner’s § 103 rejection of
claims 2, 6, 9, 26, and 30 over the combination of Stover and Johns.

Obviousness Rejection over Stover and Johns
Claims 5, 7, 8, 17, 22, 23, 29, 31, 32, 36, 41, and 42

For these claims, Appellants merely recite the language of the claim,
and assert that the limitations are allowable over the combination of Stover
and Johns. (App. Br. 12-16).
However, we find Appellants have failed to traverse the specific
factual findings made by the Examiner. (See Ans. 6, et seq.). A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). We decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388,
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391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).
Moreover, Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). “Argument in the brief does not take
the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
claims 5, 7, 8, 17, 22, 23, 29, 31, 32, 36, 41, and 42. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); see also Hyatt,
551 F.3d at1314 (Arguments not made are considered waived).
For these reasons, we sustain the Examiner’s § 103 rejection of claims
5, 7, 8, 17, 22, 23, 29, 31, 32, 36, 41, and 42 over the combination of Stover
and Johns.

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Obviousness Rejection over Stover
Claims 13-16, 19, 38, and 43-45

Regarding claims 13-16, 19, 38, and 43, Appellants repeat the same
form of argument by merely reciting the language of the claim, and
subsequently asserting that the limitations are allowable over Stover. (App.
Br. 16-17).
Similar to our discussion above, we find Appellants have failed to
traverse the specific factual findings made by the Examiner. (See Ans. 7, et
seq.). A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). We find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
claims 13-16, 19, 38, and 43. See Lovin, 652 F.3d at 1357. See also Hyatt,
551 F.3d at1314 (Arguments not made are considered waived).
For these reasons, we sustain the Examiner’s § 103 rejection of claims
13-16, 19, 38, and 43 over the Stover.

Obviousness Rejection over Stover
Claims 44 and 45

Regarding independent clam 44, Appellants contend:
Stover discloses receiving information regarding a
highway from a transmitter and displaying that information.
(Stover, col. 2, Ins. 67 - col. 3, ln. 21) Stover does not disclose
saving the information received from first transmitter in a
memory and then receiving information from a second
transmitter and saving that also in the memory so that both the
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information from the first transmitter and the second transmitter
are simultaneously located in the memory. Johns et. al. only
specifies a single transmitter.

(App. Br. 18, emphasis added).

The Examiner disagrees:

Claim 44 is obvious over memory 21 of receiver 11
programmed to accept information from different highways, the
different highways reading on the first and second obstacles,
see col. 3, lines 38-57.
With respect to the limitation at the end of the trip,
information about the first obstacle and information about the
second obstacle are both simultaneously located in the memory,
such clearly reading on the memories associated with the WDs
identifying the plural obstacles such as traffic lanes or warning
signs, see col. 12, lines 49-68, col. 13, lines 1-21.
The information with respect to the obstacles is always
available to the driver (such would include the end of the trip),
col. 13, lines 33-57.

(Ans. 13).

We observe that the cited portion of column 3 of Stover
expressly teaches:
Since the vehicle will be traveling past many transmitters
similar to transmitter 10 located at different locations, the
memory 20 may be programmed so that it accepts information
from the various transmitting stations for different highway
numbers at different locations thus allowing the vehicle to
follow different highways as it moves along.

(Stover, col. 3, ll. 40-47, emphasis added).

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Moreover, we find the addition of a second transmitter where the
obstacle information from the first transmitter and the second transmitter are
stored simultaneously in the memory is nothing more than a predictable use
of prior art elements according to their established functions. As such, we
conclude that claiming a mere plurality of prior art elements is not a
patentable distinction over the prior art of record. “When a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex, Inc.,
550 US 398, 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
Given the evidence provided by the Examiner, as discussed above,
we do not find Appellants’ arguments persuasive. Therefore, we sustain the
obviousness rejection of independent claim 44 over Stover, and the rejection
of associated dependent claim 45 (not argued separately) which falls
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 102 rejection of claims 1, 3, 4, 10-12, 18,
20, 21, 24, 25, 27, 28, 33-35, 37, 39, and 40.
We affirm the Examiner’s § 103 rejections of claims 2, 5-9, 13-17, 19,
22, 23, 26, 29-32, 36, 38, and 41-45.

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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.
§ 41.50(f).
ORDER
AFFIRMED

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