Ex Parte Menendez

Board of Patent Appeals and Interferences

Aug 14, 2007

10040288 (B.P.A.I. Aug. 14, 2007)

The opinion in support of the decision being entered
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ROBERT J. MENENDEZ
___________

Appeal 2007-3382
Application 10/040,2881
Technology Center 2600
___________

Decided: August 14, 2007
___________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and
JOSEPH L. DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1-31.

We AFFIRM.

1 Application for patent filed October 25, 2001, entitled “System for
Monitoring a Service Vehicle.”
Appeal 2007-3382
Application 10/040,288

BACKGROUND
Appellant’s invention relates to a system for monitoring a service
vehicle. An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. A service vehicle for making service calls at a plurality
of locations, the service vehicle comprising:
a position determination device;
a subsystem indicator indicating a condition of a subsystem
of the service vehicle;
an associated mobile communication device; and
a hub in permanent communication with a central computer,
the hub communicating with the position determination device, the
subsystem indicator, and the mobile communication device.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Saunders US 5,918,172 Jun. 29, 1999
Flick (Flick ‘946) US 6,703,946 B2 Mar. 9, 2004
(CIP of application 09/859,727 filed May 17, 2001)

REJECTIONS
Claims 1-3, 5-7, 12, 16-18, 20-22, and 27 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Flick ‘946. Claims 4, 8-9, 13-15,
19, 23-24, and 28-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flick ‘946. Claims 10-11, 25-26, and 31 stand rejected
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Application 10/040,288

under 35 U.S.C. § 103(a) as being unpatentable over Flick ‘946 in view of
Saunders.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Jun. 3, 2005) for the reasoning
in support of the rejections, and to Appellant’s Brief (filed Feb. 25, 2005)
and Reply Brief (filed Aug. 3, 2005) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
At the outset, we note that Appellant’s Brief is non-compliant in its
content under 37 C.F.R. § 41.37(c)(1)(v) for the Summary of the Invention.
Rather than remand the application at this late stage, we will decide the
appeal on its merits.
ANTICIPATION
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
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Application 10/040,288

claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
1830 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349, 64
USPQ2d 1202, 1206 (Fed. Cir. 2002) (citations and internal quotation marks
omitted). "Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1951 (Fed. Cir. 1999) (citations and internal quotation marks
omitted).
Here, Appellant has not presented argument as to the deficiencies of
any of the prior art teachings in a comparison to the language of the
independent claims on appeal. Therefore, we find that the invention is
taught by the teachings of Flick ‘946. Appellant’s sole contention is that the
Flick ‘946 reference does not qualify as prior art under 35 U.S.C. § 102(e)
since the application was filed, as a CIP application, after the filing date of
the instant application (Br. 5-6 Reply Br. 2).
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Application 10/040,288

The Examiner maintains that Flick ‘946 teaches or fairly suggests the
invention recited in independent claims 1, 16, and 31 (Answer 3-7).
Appellant has not challenged the Examiner’s correlation of the disclosed
elements to the claimed elements. Moreover, the Examiner identifies that
the teachings of Flick ‘946 upon which the Examiner relied upon in the
statement of the rejection can additionally be found in the priority document
09/859,727 originally filed on May 17, 2001, (which is prior to Appellant’s
filing date) and which is now US Patent 6,512,465, which entitles those
same teachings in Flick ‘946 to the earlier priority date (Answer 8-9). We
agree with the Examiner that all the material relied upon in the anticipation
rejection has substantially corresponding subject matter disclosure in the
priority document. Therefore, we find that the Flick ‘964 reference, for the
relied upon subject matter, is entitled to at least the original filing date of
May 17, 2001. Since the date of May 17, 2001, is prior to Appellant’s filing
date, we find that Flick ‘964 qualifies as prior art under 35 U.S.C. § 102(e)
as applied by the Examiner.
We find the Examiner’s reliance upon Flick ‘465 to evidence the
entitlement of Flick ‘964 to the earlier filing date from the CIP filing for the
subject matter relied upon by the Examiner is proper. Additionally, the
Examiner would have been correct to rely upon the teachings of Flick ‘465
in a prior art rejection which clearly has a good date under 35 U.S.C.
§ 102(e) and the same requisite teachings as applied. Therefore, we will
sustain the rejection of independent claims 1 and 16 under 35 U.S.C. § 102
and their corresponding dependent claims.

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OBVIOUSNESS
Since Appellant has set forth no separate arguments for patentability
under 35 U.S.C. § 103(a) for independent claim 31 and dependent claims 4,
8-11, 13-15, 19, 23-26, and 28-30, we will sustain the rejection under
35 U.S.C. § 103(a).
CONCLUSION
To summarize, we have sustained the rejection of claims 1-3, 5-7, 12,
16-18, 20-22, and 27 under 35 U.S.C. § 102, and we have sustained the
rejection of claims 4, 8-11, 13-15, 19, 23-26, and 28-31 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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LARSON NEWMAN
ABEL POLANSKY & WHITE, LLP
5914 WEST COURTYARD DRIVE
SUITE 200
AUSTIN, TX 78730
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