Ex Parte Pellman et al

Patent Trial and Appeal Board

Nov 20, 2013

11380337 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MARK PELLMAN, DAVE NEWMAN,
DAVE WAGNER, MARK WALKER, and HOWARD SLUSHER
____________

Appeal 2011-012962
Application 11/380,337
Technology Center 3700
____________

Before: JOHN C. KERINS, WILLIAM A. CAPP and NEIL T. POWELL,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the rejection of
claims 1-3, 6-9, 12-15, 17-20, and 23 as unpatentable under 35 U.S.C.
§ 103(a) over Ryan (US 2002/0016803, pub. Feb. 7, 2002) and Bullen (US
6,033,226, iss. Mar. 7, 2000) and the rejection of claims 5, 11 and 22 over
Ryan, Bullen and Nomura (US 5,950,045, iss. Sep. 7, 1999). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ invention relates to training systems. Spec. 1. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A system for training an operator to operate a folding
machine, comprising:
a storage device in which functions of the folding
machine and information regarding a folding machine are
stored;
a display on which the functions of the folding machine
and information regarding the folding machine are displayed;
and
an input device provided to allow the operator to select
one of the functions and information displayed on the display;
wherein the system is disconnected from the folding
machine during the training of the operator during which the
system does not control any functions of the folding machine
and operates only as a tutorial; and
the system is connected to the folding machine after the
training of the operator has been completed and controls the
functions of the folding machine using the displayed functions.

OPINION
Claims 1-3, 6-9, 12-15, 17-20, and 23
Appellants argue claims 1-3, 6-9, 12-15, 17-20, and 23 as a group.
App. Br. 11-16. We select claim 7 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Ryan discloses all of the elements of claim 7
except for the user interface being connected to the folding machine during
operation of the machine and then disconnected from the machine during
operator training. Ans. 5-6. The Examiner relies on Bullen as disclosing a
machine with a training system and user interface that can be disconnected
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from the machine during operator training and then connected to the
machine during normal operation of the machine. Ans. 6, citing Bullen, col.
3, l. 63 – col. 4, l. 2. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
modify Ryan’s invention by incorporating Bullen’s user interface that is not
connected to a machine during operator training. Ans. 6. According to the
Examiner, a person of ordinary skill in the art would do this to allow an
operator to develop their skills to effectively operate the machine while
avoiding costly mistakes. Id.
Appellants traverse the Examiner’s rejection by arguing that Bullen
fails to disclose selectively connecting and disconnecting a training system
from a machine tool. App. Br. 13, Reply Br. 4-5. Appellants contend that
Bullen’s training system is either always connected to the machine tool or
always disconnected from the machine tool. App. Br. 13.
The Examiner responds that claim 7 is broader than having two
selective modes of operation that include a training mode and an operating
mode. Ans. 12. The Examiner states that Bullen teaches a training system
with interface software that may or may not be interfaced with an actual
machine. App. Br. 12-13. The Examiner interprets Bullen’s disclosure
regarding the relationship between operator training and machine operation
as satisfying the claim limitation directed to the system being connected to
the machine “after” training of the operator. Ans. 13.
Bullen discloses that its training system “can also have, but does not
have to have, interface software 14 interfaced to an actual machine tool 11
of an outside situation or environment.” Bullen, col. 3, ll. 63-66. As we
interpret Bullen’s specification, Bullen’s training system remains a training
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system, whether or not it is interfaced with an actual machine tool. Bullen
elsewhere teaches that an operator has the opportunity to observe a
“simulation” of a task before “actually” carrying it out. Bullen, col. 5, l. 54-
55. In other words, someone of ordinary skill would understand that Bullen
retains its functionality as a “training system” even after the training system
has been interfaced with an actual machine tool.
On the other hand, Appellants’ argument that Bullen is always either
connected or disconnected from the machine tool is unaccompanied by any
reference to an express teaching in Bullen and is otherwise unsupported by
any evidence or technical reasoning.1 Under the circumstances, we find that
the Examiner’s factual finding that Bullen is connected to the machine after
operator training has been completed is supported by a preponderance of the
evidence.
Next, Appellants argue that a person of ordinary skill in the art would
have had no reason to combine Bullen and Ryan. App. Br. 15. Appellants
argue Ryan’s primary purpose is document production and that modifying
Ryan’s user interface with Bullen’s training capability would render Ryan
unsatisfactory for its intended purpose. App. Br. 16. This argument is not
persuasive as it is well settled that it is not necessary for the prior art to serve
the same purpose as that disclosed in Appellants’ Specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). “A reference
may be read for all that it teaches, including uses beyond its primary

1 Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed.
Cir. 2005) (unsubstantiated attorney argument is no substitute for competent
evidence).
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purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007).
We otherwise disagree with Appellants that merely augmenting
Ryan’s user interface with additional operator training capability that can be
used when the training system is disconnected from the operating machine
would render Ryan unsatisfactory for its intended purpose. As we
understand the Examiner’s proposed combination, Ryan’s user interface
would remain capable of directing machine operations when in an
operational mode instead of a training mode.
The Examiner explains that both Ryan and Bullen incorporate tutorial
materials for operator training into their respective user interfaces. Ans. 13-
14, see also Ryan, para [0111]; Bullen, col. 3, ll. 63-66. Bullen teaches the
advantages of providing high fidelity simulation training for machine tools,
but where the actual machine tooling is disconnected from the user interface
while the system is in a training mode. Nothing in the record indicates that
designing a user interface to selectively operate in either a training mode or
an actual machine mode for a document folding machine, instead of other
machine tools (Bullen), entails more than the exercise of mere routine skill.
Thus, we find that the Examiner’s reason to combine and obviousness
conclusion are supported by articulated reasoning with a rational
underpinning. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
We sustain the Examiner’s unpatentability rejection of claims 1-3,
6-9, 12-15, 17-20, and 23.
Claims 5, 11 and 22
Although claims 5, 11 and 22 were rejected under a separate ground
of rejection, Appellants elected to group all pending claims together and
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acknowledged that claims 5, 11 and 22 stand or fall with the respective
independent claims from which they depend. App. Br. 11.
Accordingly, for the same reasons articulated above with respect to
claims 1, 7 and 18, we sustain the rejection of claims 5, 11 and 22.

DECISION
The decision of the Examiner to reject claims 1-3, 5-9, 11-15, 17-20,
22 and 23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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