Ex Parte ROGERS et alDownload PDFPatent Trial and Appeal BoardMay 11, 201613039931 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/039,931 03/03/2011 20277 7590 05/13/2016 MCDERMOTT WILL & EMERY LLP The McDermott Building 500 North Capitol Street, N.W. WASHINGTON, DC 20001 FIRST NAMED INVENTOR Steven W. ROGERS 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 066396-0488 1870 EXAMINER EDWARDS, JERRAH ART UNIT PAPER NUMBER 3667 NOTIFICATION DATE DELIVERY MODE 05/13/2016 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): ipdocketmwe@mwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN W. ROGERS, GEORGE M. GILL, JEAN DE BELLEFEUILLE, MIKE KLING, and MICHAEL L. BAIRD Appeal 2014-003200 1,2 Application 13/039,931 Technology Center 3600 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 36, 37, 41, and 45--47. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants' Specification ("Spec.," filed Mar. 3, 2011), Appeal Brief ("Appeal Br.," filed Mar. 15, 2013), and Reply Brief ("Reply Br.," filed Nov. 12, 2013), as well as the Final Office Action ("Final Action," mailed Aug. 15, 2012) and the Examiner's Answer ("Answer," mailed Sept. 12, 2013). 2 The real party in interest is Snap-On Incorporated. Appeal Br. 1. Appeal2014-003200 Application 13/039,931 According to Appellants, the invention relates to "a method and system for accessing data or software for conducting vehicle services from a remote data processing system using a network connection." Spec. i-f 2. We reproduce, below, independent claim 36 as representative of the appealed claims. 3 6. A method for supplementing vehicle information stored in a host computer of a vehicle service system having a local database of vehicle information, the method comprising the steps of: identifying a vehicle to be measured by the vehicle service system; establishing a communications link between the host computer of the vehicle service system and at least one remote computer system; acquiring from the at least one remote computer system, via the communications link, at least one dynamically generated data packet containing vehicle service data associated with the identified vehicle; extracting the vehicle service data from the at least one data packet; and utilizing the extracted vehicle service data in a service measurement of the identified vehicle. Appeal Br., Claims App. REJECTION AND PRIOR ART The Examiner rejects claims 36, 37, 41, and 45--47 under 35 U.S.C. § 13 5 (b )( 1) as not being made prior to one year from the date on which Larson (US 6,556,904 Bl, iss. Apr. 29, 2003) was granted. See Answer 2-7. 2 Appeal2014-003200 Application 13/039,931 ANALYSIS As stated above, the Examiner rejects claims 36, 37, 41, and 45--47 under 35 U.S.C. § 135(b)(l) (pre-AIA) as not being made prior to one year from the date on which Larson was granted. See id. Section 135(b)(l) reads, in relevant part, [a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted. 35 U.S.C. § 135(b)(l). The Examiner does not determine that Larson's claims and Appellants' claims are the same. Nonetheless, the Examiner determines that the rejection is proper because "[t]he proper standard to determine whether Appellants['] claims are 'for the same or substantially the same subject matter' as the respective Larson claims under [Section] 135(b) is whether claims 36[,]37, 41[,] and 45[-]47 are anticipated by or obvious in view of the respective Larson claims and vice versa." Answer 7 (emphasis added); see also id. at 7-8 "([I]t was determined that then pending claims 36[-]47 were drawn to the same or substantially the same subject matter as at least the cited claims of [the] Larson patent under the two-way obviousness standard."). Assuming arguendo that the Examiner is correct that claim sets are "for the same or substantially the same subject matter" when each claim set anticipates or renders obvious the other claim set, we do not sustain the rejection because the Examiner fails to establish by a preponderance of the evidence that Appellants' claims anticipate or render obvious Larson's claims. See Reply Br. 2-14. 3 Appeal2014-003200 Application 13/039,931 Specifically, we determine that neither the Final Action nor the Examiner's Answer establishes that Larson's claims are anticipated or rendered obvious based on Appellants' claims. See Reply Br. 2--4. For example, pages 14--16 of the Examiner's Answer set forth the Examiner's analysis regarding the obviousness of Larson's claim 17. We note, however, that this analysis compares Appellants' "original claim 6, which corresponds to current claim 36," rather than claim 36 itself, to Larson's claim 17. Answer 14. Current claim 36 requires "acquiring" at least one dynamically generated data packet, while original claim 6 required and Larson's claim 1 7 requires "retrieving" such a packet. Nonetheless, the Examiner does not undertake any analysis to establish that current claim 36's "acquiring" a data packet anticipates or renders obvious Larson's claim 17's "retrieving" of a packet. Further, Larson's claim 17 requires "searching the local database for vehicle data associated with said identified vehicle; [and] responsive to said search of the local database" establishing a communications link between a vehicle alignment system and a remote computer system, neither of which is required by current claim 36. Answer 14. The Examiner's finding that it would have been an obvious modification to current claim 3 6 to search for vehicle data and establish a communication link responsive to that search lacks the required rational underpinning. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Specifically, although the Examiner determines that "the[ se] additional features would be obvious in view of the limitations of Appellants['] claim 36 because ... [the additional features] would be required in order to carry out the intended use described in the preamble of claim 36" (Answer 16), the Examiner fails to persuade us that establishing a 4 Appeal2014-003200 Application 13/039,931 communication link responsive to a search of a local database "would be required" to supplement information in the local database as stated in the preamble of claim 36 (see Reply Br. 7-10). We note, for example, that current claim 36 is not rejected under 35 U.S.C. § 112, first paragraph (pre- AIA), as omitting any required limitation. See In re Mayhew, 527 F.2d 1229, 1233 (CCPA 1976). The Examiner also relies on at least Larson's claims 1-3, 8, 9, 21, and 39 to reject Appellants' claims 37, 41, and 45--47. See Final Action 3-8; see also Answer 3-6. But, the Examiner does not attempt to establish that any of Larson's claims 1-3, 8, 9, 21, and 39 is obvious based on any of Appellants' claims. Thus, based on the foregoing, we do not sustain the rejection of any of the claims. DECISION We REVERSE the Examiner's rejection of claims 36, 37, 41, and 45- 47 under 35 U.S.C. § 135(b)(l). REVERSED 5 Copy with citationCopy as parenthetical citation