Ex Parte Naimer et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201310958162 (P.T.A.B. Feb. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HUBERT NAIMER, PATRICK GERALD KROHN, PATRICK KEMP GLAZE, and JOHN RUSSELL JORGENSEN ____________ Appeal 2010-006958 Application 10/958,162 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, HUNG H. BUI, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 51-55 and 58-911. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 1-50, 56 and 57 have been cancelled and are not on appeal. Appeal 2010-006958 Application 10/958,162 2 STATEMENT OF THE CASE Appellants’ invention relates to instrument displays for moving vehicles, such as aircraft. (Spec. 4, ll. 15-18, 8, ll. 27-30, Abstract.) CLAIMED SUBJECT MATTER Claims 51, 60 and 69 are the independent claims on appeal. Claim 51 is representative of the subject matter on appeal, and recites: 51. A method for displaying images on a visual display in a moving vehicle, the method comprising the steps of: receiving a sensor data signal in a display generator from a sensor on the vehicle; generating an underlay image of terrain in a vicinity of the moving vehicle; generating a marker as part of the underlay image using the sensor data signal, the marker denoting a critical parameter related to a location in the underlay image relative to the vehicle, wherein a position in the underlay image for the marker is determined dynamically based at least on the sensor data signal; sending the underlay image including the marker therein to the visual display for display to an operator of the vehicle; generating an overlay image which contains indications of the altitude and speed of the vehicle; and sending the overlay image to the visual display for display to the operator of the vehicle. REJECTIONS Claims 51-53, 55, 58-64, and 68-85 stand rejected under 35 U.S.C. § 102(e) as being unpatentable over Hett (US 7,216,069; “Hett”). (Ans. 3- Appeal 2010-006958 Application 10/958,162 3 10.)2 Claims 54, 87, 89 and 91 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hett in view of Viebahn et al. (US 5,798,713; “Viebahn”). (Ans. 10-12.) Claims 65-67, 86, 88 and 90 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hett in view of Middleton et al. (US 5,047,942; “Middleton”). (Ans. 12-14.) ISSUES Appellants argue on pages 6 through 12 of the Appeal Brief that the Examiner’s rejection of independent claim 51 under 35 U.S.C. § 102(e) is in error because Appellants have submitted a declaration pursuant to 37 C.F.R. § 1.131 establishing that Appellants made the invention in the rejected claims in the United States prior to January 19, 2001 and their prior invention predates Hett.3 These arguments present the Board with the following issues: 1) Did Appellants establish that they conceived of the invention? 2) Did Appellants establish actual reduction to practice? Appellants argue on pages 12 through 13 of the Appeal Brief that the Examiner’s rejection of independent claim 51 under 35 U.S.C. § 102(e) is in error because Hett does not teach an “image of terrain in a vicinity of the moving vehicle,” as recited in claim 51. The Appellants’ arguments present the Board with the following issue: 2 Throughout this opinion we refer to the Examiner’s Answer mailed on Mar. 29, 2010. 3 Throughout this opinion were refer to Appellants’ Appeal Brief filed on Feb. 19, 2010. Appeal 2010-006958 Application 10/958,162 4 3) Did the Examiner err in finding that Hett teaches the disputed limitation, as recited in claim 51? Appellants argue on page 14 of the Appeal Brief that the Examiner’s rejection of independent claim 60 under 35 U.S.C. § 102(e) is in error because Hett does not teach “the underlay image is a perspective representation of land topography in a vicinity of the vehicle,” as recited in claim 60. These arguments present the Board with the following issue: 4) Did the Examiner err in finding that Hett teaches the disputed limitation, as recited in claim 60? Appellants argue on pages 15 and 16 of the Appeal Brief that the Examiner’s rejection of claim 87 under 35 U.S.C. § 103(a) is in error because neither Hett nor Viebahn teaches “the marker denotes a location in the terrain in the underlay image at which the vehicle is desired to have a predetermined operating characteristic,” as recited in claim 87. These arguments present the Board with the following issue: 5) Did the Examiner err in finding that the combination of Hett and Viebahn teaches the disputed element, as recited in claim 87? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. Only those arguments actually made by Appellants in the Appeal Brief have been considered. See 37 C.F.R. § 41.37(c)(1)(vii). . Appeal 2010-006958 Application 10/958,162 5 The rejection of claim 51 under 35 U.S.C. 102(e) 1) First Issue While Appellants’ Declaration states that “[w]e conceived the invention, claimed in the present application, in the United States before January 19, 2001[ ]” (Decl. § 5), Appellants have not provided sufficient factual basis or other evidence to demonstrate actual conception of the invention by Appellants prior to the effective date of Hett (January 19, 2001). 37 C.F.R. §1.131(b) requires that “[t]he showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application” (emphasis added). Original exhibits of drawings or records, or photocopies thereof, may accompany and may form part of the affidavit or declaration. However, the affidavit or declaration and exhibits must clearly explain which facts or data applicant is relying on to show completion of his or her invention prior to the particular date. Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice “amounts essentially to mere pleading, unsupported by proof or a showing of facts” and, thus, does not satisfy the requirements of 37 C.F.R. §1.131(b). In re Borkowski, 505 F.2d 713, 718 (CCPA 1974) (citation omitted). Appellants must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by Appellants. Id. at 718-19. See also In re Harry, 333 F.2d 920, 922 (CCPA 1964) (Affidavit “asserts that facts exist but does not tell Appeal 2010-006958 Application 10/958,162 6 what they are or when they occurred.”); and the Manual of Patent Examining Procedure (MPEP) § 715.07(I), (III). In both the Final Rejection (Final Rejection 4)4 and the Answer (Ans. 16-19), the Examiner explained that Appellants’ evidence has not shown that the Appellants conceived the claimed invention. For example, the Examiner found that some of the Exhibits that the Appellants rely on “do not directly state or positively impl[y]” that the Exhibits were created by Appellants. (Final Rejection 4.) Additionally, the Examiner specified that Appellants have not shown that “the work was done” by them, that they “created the system” presented in the PowerPoints, or that they “created the invention.” (Ans. 16-17.) The Examiner particularly found insufficient evidence with respect to Exhibits A through C and E. (Ans. 16-18.) Appellants have not adequately responded to the Examiner’s findings. For example, with respect to Exhibit A, the Examiner correctly noted that the Declaration did not explicitly state that any of the Appellants created the proposal (Ans. 18), and Exhibit A does not identify an author (Ans. 18). Additionally, as correctly observed by the Examiner, Appellants’ Declaration states that each of Exhibits B and E was “delivered to” UASC personnel in the United States before January 19, 2001. (Ans. 17-18 (citing Decl.§ 5, § 7) (emphasis omitted).) We agree with the Examiner that this evidence is not sufficient to show that the invention was conceived by Appellants (Ans. 16-19). Furthermore, the Examiner correctly mentioned that Appellants state that Exhibit C is a PowerPoint presentation that was “delivered to” UASC 4 Throughout this opinion we refer to the Examiner’s Final Rejection mailed on Sep. 21, 2009. Appeal 2010-006958 Application 10/958,162 7 personnel at a demonstration of prototype software. (Ans. 17 (citing Decl. §6).) Although Appellants state that co-inventor Patrick G. Krohn took notes at the demonstration, as set forth in Exhibit D, Appellants state that the notes list “aesthetic changes that co-inventor Hubert Naimer wanted made” to the prototype. (Decl. § 6.) However, nowhere in Exhibit D is there any reference that the prototype display system that was being demonstrated was created by any one of the Inventors, including co-inventor Hubert Naimer. As such, we agree with the Examiner that taking notes listing aesthetic changes to a prototype is not sufficient evidence to show conception of the claimed invention (Ans. 18-19). We also agree with the Examiner that the remaining Exhibits D and F and corresponding sections of the Declaration taken alone or together do not show that the alleged conception relates to all of the elements of the claimed invention (Ans. 17-20). Accordingly, we are not persuaded by Appellants’ arguments and agree with the Examiner that the character and weight of the evidence is not sufficient to show prior conception by the Appellants. 2) Second Issue The Examiner also correctly determined that Appellants have not provided sufficient evidence to show actual reduction to practice prior to the effective date of the reference, which is January 19, 2001 (Ans. 21). Because actual reduction to practice does not occur until the inventors have determined that an invention will work for its intended purpose,5 as determined by the Examiner, Exhibits A and B do not provide sufficient 5 See Estee Lauder Inc. v. L’Oreal S.A., 129 F.3d 588, 593 (Fed. Cir. 1997) (“[A] reduction to practice does not occur until the inventor has determined that the invention will work for its intended purpose.”); see also the Manual of Patent Examining Procedure (MPEP) § 715.07 (III). Appeal 2010-006958 Application 10/958,162 8 evidence to establish actual reduction to practice (Ans. 21). Appellants do not state that Exhibits A and B are submitted to establish actual reduction to practice, but instead Appellants state that Exhibits A and B are submitted as evidence of conception. (Decl. § 5.) Additionally, Appellants refer to Exhibit A as a “[p]roposal” and say that Exhibit B outlines the “proposed” system. (Decl. § 5.) Similarly, because Appellants did not establish that the Inventors had determined that a prototype demonstrated would work for its intended purpose, the Examiner also correctly determined that Exhibits C and D do not provide sufficient evidence to establish actual reduction to practice. (Ans. 21.) Furthermore, Exhibits C supports the contrary view that aspects of the claimed invention were not complete by stating, for example, in a section entitled “Risk Items & Mitigation” that the display device could remove the “SV image” in response to navigation and terrain database errors and by identifying as a remaining issue “[d]eveloping evaluation criteria for ADI/HSI symbols/colors/masking with background SV images.” (Decl. Exh. C, at B-32.) The notes taken during the demonstration, attached to the Declaration as Exhibit D, do not remedy these deficiencies. For example, although Appellants state that Exhibit D lists “aesthetic changes,” Appellants do not state, for example, that only aesthetic changes were being made to the prototype that was being demonstrated. (Decl. § 6.) Additionally, we agree with the Examiner that Exhibits E and F do not establish actual reduction to practice. (Ans. 20-21.) As was discussed supra with respect to Exhibits A through D, actual reduction to practice does not occur until inventors have determined that their invention will work for its intended purpose. Appellants state that Exhibit E summarizes features, but Appeal 2010-006958 Application 10/958,162 9 Appellants do not identify performance evaluation data provided by Exhibit E. (See e.g., App. Br. 10.) We agree with Appellants to the extent that Exhibit F discusses performance of sensor interfaces and generation of terrain images (App. Br. 11). However, we agree with the Examiner that Exhibit F does not provide sufficient evidence to show completion of all aspects of the claimed invention. (Ans. 20-21.) For example, we agree with the Examiner that Appellants have not established sufficient evidence of completion of the following claim elements: “generating a marker as part of the underlay image using the sensor data signal, the marker denoting a critical parameter related to a location in the underlay image relative to the vehicle” and “generating an overlay image which contains indications of the altitude and speed of the vehicle.”6 (Ans. 20-21.) Appellants’ Declaration does not provide additional evidence that addresses these deficiencies. Accordingly, we are not persuaded by Appellants’ arguments and agree with the Examiner that Appellants failed to establish actual reduction to practice prior to the effective date of the reference. Because Appellants submitted no further evidence, for the same reasons, Appellants also failed establish actual reduction to practice prior to 6 Independent claims 60 and 69 have similar limitations. For example, claim 60 recites, “wherein the underlay image . . . includes a marker that is a critical parameter related to a location in the underlay image relative to the vehicle” and “wherein a position of the marker in the underlay image dynamically changes based on data provided by the data source.” Similarly, claim 69 recites, “wherein the underlay image includes a dynamic marker generated by the display processing engine from sensor data received from the vehicle, the dynamic marker being a critical parameter related to a location in the underlay image relative to the vehicle.” Appeal 2010-006958 Application 10/958,162 10 the filing of this application.7 Therefore, even if, arguendo, Appellants had established that they conceived of the invention prior to the effective date of the reference, Appellants failed to establish due diligence from a time of conception to filing of the application. As explained by the Examiner, although redacting dates may in certain circumstances be sufficient for establishing conception or reduction to practice, actual dates must be provided to establish due diligence. (Final Rejection 4-5.) Additionally, because Appellants rely on much of the same evidence for reduction to practice as for conception, for the same reasons discussed supra with respect to conception, Appellants have not provided sufficient evidence regarding due diligence and reduction to practice to overcome the rejections based on Hett. Equally importantly, nowhere in there Appellants’ Declaration or any of the Exhibits A-F is there any reference to establishing due diligence from a time of conception to the filing of the application, i.e., constructive reduction to practice, as required by 37 C.F.R. §1.131(b). For the reasons set forth above, we agree with the Examiner that Appellants’ Declaration is insufficient to establish conception and actual reduction to practice with due diligence prior to the effective date of Hett. (Ans. 21.) 3) Third Issue Appellants contend that when the moving vehicle is an aircraft, the disputed term “specifies an image that depicts what the flight crew observes through the cockpit window (application page 13, line 25 et seq.) with geographical features, such as landmarks, mountains and rivers, and 7 This application is a continuation of application Serial No. 10/238,131, which was filed September 10, 2002. Appeal 2010-006958 Application 10/958,162 11 manmade objects, such as buildings.” (App. Br. 12.) However, the USPTO gives claims their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Thus, we agree that the Examiner correctly construed “image of terrain” to encompass “an image that has a terrain.” (Ans. 22.) Appellants argue that the Hett system does not present a terrain image because, for example, the “ground depiction is devoid of any contours, elevations, mountains, rivers, buildings, and other features in the vicinity of the aircraft.” (App. Br. 12.) Appellants further argue that Hett does not show the runway in a three dimensional perspective. (App. Br. 13.) Here, Appellants’ arguments are not commensurate with the scope of representative claim 51. We decline to read the argued limitations into the claim from the Specification. Appellants in the Reply Brief argue that “the cited patent teaches using the local terrain data and obstacle information solely to generate a navigation indicator on the composite display image.” (Reply Br. 2.)8 However, Appellants do not discuss excerpts of Hett referred to by the Examiner in which Hett discloses “texturing and perspective lines 106” and using shades of brown for the ground and shades of blue for the sky. (Ans. 22.) Accordingly, we are not persuaded by Appellants’ arguments and agree with the Examiner that Hett teaches an “image of terrain in a vicinity of the moving vehicle,” as recited in claim 51. As explained supra with respect to highlighted findings and arguments regarding issues 1 – 3 presented for claim 51, we are not 8 Throughout this opinion were refer to Appellants’ Reply Brief filed on Apr. 2, 2010. Appeal 2010-006958 Application 10/958,162 12 persuaded of error in the Examiner’s rejection of claim 51 under 35 U.S.C. § 102(e) and, therefore, sustain the rejection. The rejection of claims 52, 53, 55, 58, 59, 76-80 and 86-87 under 35 U.S.C. 102(e) With respect to the rejection of claims 52, 53, 55, 58, 59, 76-80 and 86-87, Appellants allow those claims to fall with claim 51 by relying on the same arguments presented for the patentability of claim 51. (App. Br. 13.) Accordingly, we sustain the Examiner’s rejection of claims 52, 53, 55, 58, 59, 76-80 and 86-87 under 35 U.S.C. § 102(e). The rejection of claim 60 under 35 U.S.C. 102(e) 4) Fourth Issue The Examiner correctly pointed to excerpts of Hett that disclose “the underlay image is a perspective representation of land topography in a vicinity of the vehicle,” as recited in claim 60. (Ans. 6-7, 23.) Appellants state that “Hett’s display area representing the ground does not vary depending upon changes in the actual land topography of the vicinity of the vehicle.” (App. Br. 14.) However, as correctly noted by Examiner, Hett does disclose topography of the land in the vicinity of the vehicle as “the images displayed by the display 100 thus conform to actual features on the ground as seen on approach from the aircraft’s cockpit.” (Ans. 23 (citing Hett Col. 7, l.64 – Col. 8, l. 4.)) Appellants again mention exemplary embodiments of terrain described in Appellants’ Specification, “when the aircraft flies from a flat geographical area to mountainous region, or over rivers and lakes, the depiction of the ground on the cockpit does not change accordingly.” (App. Br. 14.) However, like was discussed supra with respect to the term “terrain,” the USPTO gives claims their broadest Appeal 2010-006958 Application 10/958,162 13 reasonable interpretation. Here, Appellants’ arguments are not commensurate with the scope of claim 60. Accordingly, we sustain the Examiner’s rejection of claim 60 under 35 U.S.C. § 102(e). The rejection of claims 61-64, 68-75, 81-85, and 88-91 under 35 U.S.C. 102(e) With respect to the rejection of claims 61-64, 68, 81-85, and 88-89, Appellants allow those claims to fall with claim 60 by relying on the same arguments presented for the patentability of claim 60. (App. Br. 14.) Accordingly, we sustain the Examiner’s rejection of claims 61-64, 68, 81- 85, and 88-89 under 35 U.S.C. § 102(e). Regarding Appellants’ contentions with respect to claims 69-75 and 90-91 (App. Br. 14), Appellants do not provide additional arguments with sufficient specificity so claims 69-75 and 90-91 fall with claim 60. For the same reasons, we agree with the Examiner’s findings and stated conclusions and, therefore, we sustain the rejection. The rejection of claim 87 under 35 U.S.C. 103(a) 5) Fifth Issue The Examiner correctly pointed to excerpts of Hett and Viebahn that teach “the marker denotes a location in the terrain in the underlay image at which the vehicle is desired to have a predetermined operating characteristic,” as recited in claim 87. (Ans. 11-12, 25.) Appellants state that the color changes of Viebahn “merely indicate the current status of the aircraft and do not indicate what the aircraft speed should be.” (App. Br. 16.) However, as noted by the Examiner, the color changes indicate that the Appeal 2010-006958 Application 10/958,162 14 aircraft is going too slow or too fast. (Ans. 25.) Thus, Viebahn’s disclosure is adequate to teach the disputed limitation of the claim. Accordingly, we are not persuaded of error in the Examiner’s rejection of claim 87 under 35 U.S.C. § 103(a) and, therefore, we sustain that rejection. The rejection of claims 54, 65-67, 86, and 88-91 under 35 U.S.C. 103(a) Regarding Appellants’ contentions with respect to claims 54, 89, and 91 (App. Br. 15-16), Appellants do not provide additional arguments with sufficient specificity so claims 54, 89, and 91 fall with claim 87. For the same reasons, we agree with the Examiner’s findings and stated conclusions and, therefore, we sustain the rejection. Regarding Appellants’ contentions with respect to claims 65-67, 88 and 90 (App. Br. 16-17), Appellants do not provide additional arguments with sufficient specificity so claims 65-67, 88 and 90 fall with claim 60. For the same reasons, we agree with the Examiner’s findings and stated conclusions and, therefore, we sustain the rejection. Regarding Appellants’ contentions with respect to claim 86 (App. Br. 16-17), Appellants do not provide additional arguments with sufficient specificity so claim 86 falls with claim 51. For the same reasons, we agree with the Examiner’s findings and stated conclusions and, therefore, we sustain the rejection. Appeal 2010-006958 Application 10/958,162 15 CONCLUSION Based on the record before us, we conclude that the Examiner did not err in rejecting claims 51 and 60 as being unpatentable under 35 U.S.C. § 102(e). Additionally, we conclude that the Examiner did not err in rejecting claim 87 as being unpatentable under 35 U.S.C. § 103(a). Therefore, we sustain the rejection of claims 51 and 60 under 35 U.S.C. § 102(e) and the rejection of claim 87 under 35 U.S.C. § 103(a). We also sustain the rejections of claims 52-55, 58, 59, 61-86, and 88-91, falling therewith. DECISION We affirm the Examiner’s rejection of claims 51-55 and 58-91. 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. § 1.136(a)(1)(iv). AFFIRMED msc Copy with citationCopy as parenthetical citation