Ex Parte Tays et al

Patent Trial and Appeal Board

Jun 2, 2016

12454731 (P.T.A.B. Jun. 2, 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.
12/454,731 05/20/2009 Dwight Tays 210,369 7784
38137 7590 06/02/2016
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
HOPE, DARRIN
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
06/02/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DWIGHT TAYS, DAVID LILLEY, and BRIAN ABBOTT
____________

Appeal 2014-007622
Application 12/454,731
Technology Center 2100
____________

Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 30‒32, 35, and 36, which are all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Canadian National
Railway Company. App. Br. 2.
Appeal 2014-007662
Application 12/454,731

2

STATEMENT OF THE CASE
Introduction
Appellants’ present application relates to a graphical user interface for
managing inspections of railway tracks. Spec. 2:15‒3:6. Claim 30 is
illustrative of the subject matter on appeal and reads as follows:
30. A method for managing an inspection process of
contiguous track segments in a railway network, each track
segment having a beginning portion and an end portion, the
beginning portion being contiguous with the end portion of a
preceding track segment and the end portion being contiguous
with the beginning portion of a subsequent track segment, the
method including:
(a) storing in a database entries associated with respective
track segments of the railway network;
(b) associating an inspection due date with each entry, the
inspection due date being indicative of a date at which an
inspection of the track segment associated with the entry is due
to determine if the track segment is fit for continued service;
(c) determining an inspection status at a present date of a
track segment associated with a given entry at least in part on the
basis of the inspection due date associated with the given entry
and present date;
(d) driving an inspection status indicator in a graphical
user interface at least in part on a basis of the determining, the
inspection status indicator having at least a first state and a
second state, the first state indicating that the inspection of the
track segment is due when the present date is anterior the
inspection date, the second state indicating that the inspection of
the track segment is overdue when the present date is posterior
the inspection date; and
(e) providing the graphical user interface with a
geographical location indicator associated with the inspection
status indicator and describing a location of the beginning
Appeal 2014-007662
Application 12/454,731

3
portion of the track segment that is contiguous with the end
portion of the preceding track segment.

The Examiner’s Rejection
Claims 30‒32, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bryan (US 5,867,404; Feb. 2, 1999) and Kaartinen (US
2008/0021718 A1; Jan. 24, 2008). See Final Act. 3‒22.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Appellants argue the Examiner erred in finding the combination of
Bryan and Kaartinen teaches or suggests “providing the graphical user
interface with a geographical location indicator associated with the
inspection status indicator.” See App. Br. 15‒17, Reply Br. 2. In particular,
Appellants argue Bryan teaches a graphical user interface for defect
management software, not inspection management software as required by
the claims. App. Br. 15‒16. Appellants argue “[t]he concept of ‘inspection
status’ simply does not exist in Bryan.” App. Br. 16.
Appeal 2014-007662
Application 12/454,731

4
Appellants have not persuaded us the Examiner erred in finding the
combination of Bryan and Kaartinen teaches or suggests the “providing”
limitation (claim 30, element (e)). The Examiner explained that the
combination of Bryan and Kaartinen, not Bryan alone, discloses this
limitation. Final Act. 8‒11. Appellants’ argument focuses on the disclosure
of Bryan while ignoring the disclosure of Kaartinen, which relates to
inspection management software. One cannot show nonobviousness by
attacking references individually when the rejection is based on a
combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants also argue the Examiner erred in finding the combination
teaches or suggests “describing a location of the beginning portion of the
track segment that is contiguous with the end portion of the preceding track
segment.” See App. Br. 17‒18, Reply Br. 2‒3. In particular, Appellants
argue Bryan teaches defect management software for railroad tracks, but
Bryan’s graphical user interface includes dead end railway tracks and claim
30 “excludes blind (dead end) track segments branching out from a main
line, such as [Bryan Fig. 10’s] segment 100052.” App. Br. 17‒18.
We disagree with Appellants’ conclusion regarding the scope of claim
30 and are not persuaded by Appellants’ argument. Claim 30 recites “[a]
method for managing an inspection process of contiguous track segments in
a railway network . . . the method including.” Thus, claim 30 requires the
method to manage an inspection process of contiguous track segments, but
does not exclude managing the inspection process of contiguous track
segments and blind (or dead end) track segments, as well.
Appeal 2014-007662
Application 12/454,731

5
Appellants further argue an ordinarily skilled artisan would not have
been motivated to combine Bryan and Kaartinen because the references are
non-analogous and the Examiner uses impermissible hindsight reasoning to
combine the references. See App. Br. 19‒22, Reply Br. 3‒5. We disagree.
The Examiner finds, and we agree, that an ordinarily skilled artisan would
have been motivated:
to use the Kaartinen centralized database in Bryan’s railway
defects monitoring device to improve the device with reasonable
expectation that this would result in an railway defects
monitoring device that could allow a user to maintain and keep
up to date the inspection records of disparately located assets by
storing inspection data in a centralized data base.
Final Act. 10. Appellants’ argument that the references are non-analogous is
not persuasive because both references are in the same field of endeavor as
they relate to safety equipment, in particular railway tracks (e.g., Bryan
Abstract, Fig. 9) and safety harnesses (e.g., Kaartinen Abstract, Fig. 1). As
the Examiner found, it would have been obvious to apply Kaartinen’s
teachings to another type of safety equipment, such as Bryan’s railway
tracks. See Ans. 4. Further, both Kaartinen and Bryan relate to managing
inspections and repairs of their respective safety equipment. In Bryan, the
defect management software manages repairs of already-inspected
equipment (Bryan 1:66‒2:19), while Kaartinen manages the inspection
process that will eventually lead to repairs (Kaartinen ¶ 63).
Moreover, although the Supreme Court stated that “[a] factfinder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning” (KSR Int’l v.
Teleflex, Inc., 550 U.S. 398, 421), we are satisfied that the combination of
Bryan and Kaartinen is not based on hindsight bias. In fact, the proposed
Appeal 2014-007662
Application 12/454,731

6
combination involves nothing more than requiring the ordinarily skilled
artisan to use common sense in combining prior art elements that perform
their ordinary functions to predictably result in the claimed system. On this
record, we find the Examiner set forth sufficient “articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See also 35 U.S.C. § 132.

CONCLUSIONS
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 30 as
unpatentable over Bryan and Kaartinen. Therefore, we sustain the rejection
of claim 30. We also sustain the rejection of claims 31, 32, 35, and 36,
which Appellants have not argued separately. See App. Br. 18‒23.

DECISION
We affirm the decision of the Examiner to reject claims 30‒32, 35,
and 36.
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