14112599 (P.T.A.B. Dec. 20, 2016)

Ex Parte Vierling

Patent Trial and Appeal BoardDec 20, 2016

14112599 (P.T.A.B. Dec. 20, 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. 14/112,599 10/18/2013 Thomas Vierling 2011P08016 1062 27350 7590 12/22/2016 LERNER GREENBERG STEMER LLP Box SA P.O. BOX 2480 HOLLYWOOD, EL 33022-2480 EXAMINER MODO, RONALD T ART UNIT PAPER NUMBER 2181 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): boxsa@patentusa.com docket @ paten tusa. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS VIERLING Appeal 2015-008326 Application ld/112,5991 Technology Center 2100 Before THU A. DANG, STEPHEN C. SIU, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 3â€”5. Appellant has canceled claims 1 and 2. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Siemens Aktiengesellschaft. App. Br. 1. Appeal 2015-008326 Application 14/112,599 STATEMENT OF THE CASE2 The Invention Appellant's disclosed and claimed inventions relate to a "[mjethod for replacing a signal box, connected to an electronic signal box, having a relay interface input/output, with a further electronic signal box having at least one databus input/output, and electronic signal box." Spec. 1,11. 2â€”5. Exemplary Claim Claim 3, reproduced below, is representative of the subject matter on appeal (emphasis added): 3. A method for replacing a first signal box having relays and, connected to an electronic second signal box having a relay interface input/output and a databus input/output, with a further electronic third signal box having at least one databus input/output, which comprises the step of: setting up the electronic second signal box with generic functionality such that when a databus connection is established between the databus input/output of the further electronic third signal box and the databus input/output of the electronic second signal box, the databus input/output of the electronic second signal box being activated and the relay interface input/output being deactivated and when the databus connection is interrupted, the databus input/output of the electronic second signal bus being deactivated and the relay interface input/output being activated, thus only one of the databus input/output or the 2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Apr. 14, 2015); Examiner's Answer ("Ans.," mailed July 17, 2015); Final Office Action ("Final Act.," mailed Dec. 4, 2014); and the original Specification ("Spec.," filed Oct. 18, 2013). We note Appellant did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal 2015-008326 Application 14/112,599 relay interface input/output of the electronic second signal box being activated at any given time. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Dougherty et al. ("Dougherty") US 2006/0075124 A1 Apr. 6, 2006 Appellant's Admitted Prior Art, Spec. 1,11. 6â€”15 (hereinafter "AAPA"). Rejection on Appeal3 Claims 3 through 5 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of AAPA and Dougherty. Ans. 2; Final Act. 3. CLAIM GROUPING Based on Appellant's arguments (App. Br. 6â€”9), we decide the appeal of the obviousness rejection of claims 3â€”5 on the basis of representative claim 3. ISSUE Appellant argues (App. Br. 6â€”9) the Examiner's rejection of claim 3 under 35 U.S.C. Â§ 103(a) as being obvious over the combination of AAPA and Dougherty is in error. These contentions present us with the following issue: Did the Examiner err in rejecting claim 3 over the cited prior art combination because a "person of ordinary skill in the art would not have 3 The Examiner has withdrawn the 35 U.S.C. Â§ 112, first paragraph, written description rejection of claim 4. Ans. 2. 3 Appeal 2015-008326 Application 14/112,599 obtained a suggestion to have combined Dougherty et al. with AAPA" in the manner suggested by the Examiner? App. Br. 6. ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. We do not consider arguments that Appellant could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellant's arguments with respect to claims 3â€”5, and we incorporate herein and 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 and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 3 for emphasis as follows. Appellant contends: In AAPA, the established function of deactivating and activating the relay interface I/O and the databus I/O of the new electronic signal box for managing rail traffic is to perform the required complex testing to commission the new electronic signal box. The teaching in Dougherty et al. is not in any way concerned with commissioning a new electronic signal box, or performing any kind of testing on such an electronic signal box. Rather, the teaching in Dougherty et al. relates to portable computers. Specifically, it relates to preventing confusing and/or distracting error or warning messages from being displayed. App. Br. 8â€”9. Appellant further argues: 4 Appeal 2015-008326 Application 14/112,599 Preventing confusing and/or distracting error or warning messages from being displayed on a portable computer is simply not of any concern when testing a new electronic signal box for managing rail traffic in order to commission that signal box so that it can replace an older type signal box. Appellant believes that since the established functions of the pertinent teachings of AAPA and Dougherty et al. are unrelated, combining them would not have been predictable. App. Br. 9 (emphasis added). We first note the Examiner rejects the claims as obvious over the combined teachings of AAPA and Dougherty. The test for obviousness is not what the references show individually but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner reiterates the Dougherty reference is only used to teach or suggest "the function of activating one interface while deactivating the second interface in a system which has two interfaces that can accomplish the same function," Ans. 4. The Examiner further notes Appellant "admits that the Dougherty reference teaches activating and deactivating I/O interfaces (the wireless network adapter)." Id. (citing App. Br. 7). We find the Examiner identifies the relevant portions of each of the references relied on throughout the Examiner's Answer, along with motivation to combine the references in the manner suggested. See Ans. 2â€” 3; Final Act. 3â€”6. To the extent the Examiner relies on the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains: 5 Appeal 2015-008326 Application 14/112,599 Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) ("[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In this case, the Examiner's conclusions of obviousness are clearly articulated and are based on detailed factual findings that are supported by the references of record. See Ans. 2â€”3; Final Act. 3â€”6. Moreover, the predecessor to our reviewing court guides our decision by holding, "[ojbviousness is not to be determined on the basis of purpose alone." In re Graf, 343 F.2d 11 A, 111 (CCPA 1965). ft is sufficient that references suggest doing what an appellant did, although the Appellant's particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 111 F.2d 535, 539 (CCPA 1967)). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem, ft is not necessary that the prior art suggest the combination to 6 Appeal 2015-008326 Application 14/112,599 achieve the same advantage or result discovered by Appellant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013 (CCPA 1972); In re Dillon, 919 F.2d 688, (Fed. Cir. 1990), cert, denied, 500 U.S. 904 (1991). More recently, the Supreme Court held, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR, 550 U.S. at 419. For a prima facie case of obviousness to be established, the reference need not recognize the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."). Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the limitations of claim 3, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's 7 Appeal 2015-008326 Application 14/112,599 obviousness rejection of independent claim 3, and grouped claims 4 and 5 which fall therewith. See Claim Grouping, supra. CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 3â€”5 under 35 U.S.C. Â§ 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 3â€”5. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(f). AFFIRMED 8