Ex Parte Medwin et al

Patent Trial and Appeal Board

Dec 13, 2016

12423877 (P.T.A.B. Dec. 13, 2016)

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.
12/423,877 04/15/2009 Steve Medwin 780139.00203 9423
26710 7590 12/15/2016
QUARLES & BRADY LLP
Attn: IP Docket
411 E. WISCONSIN AVENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
EXAMINER
MITCHELL, JOEL F
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
12/15/2016 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 STEVE MED WIN and PAUL P. MCCABE
Appeal 2015-002817
Application 12/423,877
Technology Center 3600
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steve Medwin and Paul P. McCabe (Appellants)1 appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 23—25 and 32—
44.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, the real party in interest is The Raymond
Corporation. Br. 1.
2 Claims 1—22 and 26—31 are canceled. Id. at A-l (Claims App.).
Appeal 2015-002817
Application 12/423,877
SUMMARY OF INVENTION
Appellants’ disclosure “relates to industrial vehicles, such as lift
trucks; and more particularly to a system for sensing performance
characteristics of an industrial vehicle and using those characteristics to
manage the operation of the vehicle.” Spec. 12. Claim 23, reproduced
below from page A-l (Claims App.) of the Appeal Brief, is illustrative of the
claimed subject matter:
23. A method for controlling an industrial vehicle that is
powered by a battery that is recharged as necessary by
electricity from a utility company, wherein the utility company
charges a first rate for electricity delivered during a first period
of a day and charges a higher second rate for electricity
delivered during a second period of the day, said method
comprising:
operating the industrial vehicle in a limited manner to
carry loads during a restricted operation time period to prolong
battery life so that recharging is not required until the first time
period of the day; and
enabling unrestricted operation of the industrial vehicle
during an unrestricted operation time period.
REJECTIONS
Claims 42 and 44 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 23—25 and 32-44 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Frader-Thompson (US 8,255,090 B2, iss. Aug. 28,
2012) and Simmons (US 5,579,227, iss. Nov. 26, 1996).
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Application 12/423,877
ANALYSIS
Rejection Under 35 U.S.C. § 112
Claim 43 depends directly from claim 23 and further requires “storing
in a memory a definition of at least one of the restricted operation time
period and the unrestricted operation time period.” Br. A-3 (Claims App.).
Claim 44 depends directly from claim 43 and further requires that “operating
the industrial vehicle in a limited manner is in response to the definition
stored in the memory.” Id.
The Examiner finds that claim 44 is indefinite because claim 43
recites “at least one,” so the stored definition could pertain to the
unrestricted operation time period, and “it does not follow to operate the
vehicle in a limited manner in response to definitions of. . . the unrestricted
operation time period.” Final Act. 2. The Examiner makes similar findings
regarding claim 42. Id.
Appellants cite Specification paragraph 81 as explaining operation
based on a definition of a restricted operation time period, and argue that
“when a definition of the [unrestricted] period is stored, [a] skilled artisan
reasonably knows how to configure the vehicle controller to determine when
the current time is not within the [unrestricted] time period and then limit
vehicle operation.” Br. 5, 6. We are persuaded by Appellants’ arguments.
Section 112,12, requires the claims “to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). As correctly noted by Appellants, a skilled artisan,
being “a person of ordinary creativity, not an automaton” (KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007)), would be able to determine whether
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Application 12/423,877
the current time is within the defined time period and operate the industrial
vehicle accordingly. In the example noted by the Examiner with the
definition pertaining to the unrestricted time period, a skilled artisan would
enable unrestricted operation of the vehicle if the current time is within
defined time and would operate the vehicle in a limited manner if the current
time is not within the defined time—regardless of whether the current time
is within the recited “restricted operation time period” or another time period
as hypothesized by the Examiner (see Ans. 6), as any such time period
would inherently not be the unrestricted time period.
Accordingly, we do not sustain the Examiner’s rejection of claims 42
and 44 as being indefinite.
Rejection Under 35 U.S.C. § 103
The Examiner finds that Frader-Thompson discloses the invention
substantially as claimed in independent claim 23, including, inter alia, “a
method for controlling an industrial vehicle” including limiting operation of
“electronics” based on the rates charged by a utility company to prolong
battery life. Final Act. 3 (citing Frader-Thompson, 1:36—53, 23:49—61,
27:4—52, 28:43—50). However, the Examiner then finds that “Frader-
Thompson does not explicitly disclose operating industrial vehicles in a
limited manner to carry loads in order to prolong battery life of the
vehicles,” and finds that “Simmons discloses operating an industrial vehicle
in a limited manner to prolong battery life.” Id. at 4 (citing Simmons, 4:15—
50). The Examiner reasons that it would have been obvious to a skilled
artisan “to provide the method of Frader-Thompson with the industrial
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Application 12/423,877
means as taught by Simmons in order to conserve power and resources in a
commercial or industrial setting.” Id.
Appellants traverse arguing, inter alia, that Frader-Thompson makes
“no mention of conserving power or operating equipment in the building to
prolong battery life so that battery recharging is not required until a certain
time of the day.” Br. 6—7. We are persuaded by Appellants’ arguments.
As a threshold matter, we disagree with the Examiner’s assertion that
Appellants’ arguments are unpersuasive per se because they are directed at
individual ones of the applied references. See Ans. 7 (citing In re Keller,
642 F.2d 413 (CCPA 1981) and In re Merck & Co., 800 F.2d 1091 (Fed.
Cir. 1986)). Here, the Examiner made specific findings regarding the
disclosure of the two cited references. Final Act. 3^4. It is these findings
that Appellants persuasively argue are improper.
Regarding Frader-Thompson, the citations noted by the Examiner
discuss running a compressor at night to cool a thermal mass and using the
cooled mass to provide cooling during the day (see Frader-Thompson
23:49—61), and charging batteries at night and using the batteries to run
appliances during the day (see id. at 27:4—52). However, as noted by
Appellants, there is no discussion of limiting operation of any battery-
powered device.
The Examiner’s reliance on a brief discussion of monitoring mobile
devices in the Summary of the Invention section of Frader-Thompson (see
Ans. 8 (citing Frader-Thompson, 2:37-40)) is of no avail, as Frader-
Thompson makes clear that mobile devices, such as a TV, computer, or
video game console, are monitored regardless of where in the house they are
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Application 12/423,877
plugged into an outlet node. See, e.g., Frader-Thompson 20:8—32.
However, the Examiner does not set forth, nor does our review reveal, any
disclosure of monitoring or controlling devices operating under battery
power.
Accordingly, as the Examiner has failed to establish that the cited
references disclose all of the recited features of claim 23, we do not sustain
the Examiner’s rejection of independent claim 23 as being obvious over
Frader-Thompson and Simmons. Independent claim 36 contains similar
recitations as independent claim 23 (see Br. A-2 (Claims App.)), and the
Examiner makes similar findings and reasoning regarding claim 36 as with
claim 23 (Final Act. 3—4). We therefore do not sustain the rejection of claim
36 for the same reasons as set forth for claim 23. Because claims 24, 25,
32—35, and 37-44 depend from either claim 23 or claim 36, and the
Examiner’s application of Frader-Thompson and Simmons to those claims
does not remedy the foregoing errors for claims 23 and 36, we likewise do
not sustain the Examiner’s rejection of claims 24, 25, 32—35, and 37—44.
DECISION
The Examiner’s decision to reject claims 23—25 and 32 44 is
reversed.
REVERSED
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