Ex Parte Lim et alDownload PDFBoard of Patent Appeals and InterferencesApr 5, 201210412198 (B.P.A.I. Apr. 5, 2012) Copy Citation 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. Appeal 2010-002081 Application 10/412,198 2 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). Appeal 2010-002081 Application 10/412,198 3 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). Appeal 2010-002081 Application 10/412,198 4 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). Appeal 2010-002081 Application 10/412,198 5 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). Appeal 2010-002081 Application 10/412,198 6 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 Appeal 2010-002081 Application 10/412,198 7 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, Appeal 2010-002081 Application 10/412,198 8 391 (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. Appeal 2010-002081 Application 10/412,198 9 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 Appeal 2010-002081 Application 10/412,198 10 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). Appeal 2010-002081 Application 10/412,198 11 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. Appeal 2010-002081 Application 10/412,198 12 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 pgc Copy with citationCopy as parenthetical citation