Ex Parte Villey

Board of Patent Appeals and Interferences

Mar 23, 2010

10126975 - (D) (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Appeal 2009-010319
Application 10/126,975
Technology Center 2100
____________________

Ex parte PHILIPPE VILLEY
____________________

Decided: March 24, 2010
____________________

Before JAMES D. THOMAS, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellant appeals the Examiner’s non-final rejection of claims 3-7
under 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002). An Oral Hearing regarding this appeal was conducted on March 11,
2010.
We affirm-in-part.
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A. INVENTION
According to Appellant, the invention relates to a flight simulator
adapted for a family of aircraft (Spec. 1, ll. 1-2).

B. ILLUSTRATIVE CLAIM
Claim 6 is exemplary and is reproduced below:
6. A flight simulator for a family of aircraft, the flight
simulator comprising:

a module that has a plurality of independent non-volatile
memories, each storing a software program that is specific to a
different one of the family of aircraft; and

a computer, having a hardware unit common to the
family of aircraft, that performs a flight simulation function for
a specific one of the family of aircraft by selecting and
executing a stored software program corresponding to the
specific aircraft, wherein:

the hardware unit comprises a central processing unit, a
connector, and a housing that receives the module,

the module comprises a connector for removably
electrically and mechanically connecting the module to the
hardware unit, via the connector of the hardware unit,

the selected and executed software program is retrieved
from the independent memory in which it is stored in
accordance with a control signal emitted by the central
processing unit of said hardware unit,

the module comprises a selection section that selects the
independent memory storing the selected software program so
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that the selected software program is retrieved from the selected
independent memory in accordance with the control signal
emitted by the central processing unit,

the module connector comprises a first connection
section that cooperates with a first connection section of the
hardware unit's connector for removably, electrically and
mechanically connecting the module to the hardware unit so
that the selected software program stored by the module is
executed by the central processing unit,

the module connector comprises a second connection
section that cooperates with a second connection section of the
hardware unit's connector so that the control signal emitted by
the central processing unit is communicated to the module's
selection section,

the electrical power supply for the module is provided by
the hardware unit via the hardware unit's first connection
section and the module's first connection section, and

the family of aircraft is a set of aircraft of different types
that comprises equipment that is identical for all aircraft of the
family.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stone US 6,195,626 B1 Feb. 27, 2001

Microsoft Corporation, Microsoft Flight Simulator 2000: Pilot’s
Handbook (1999) (hereinafter “Microsoft”).

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Flight Simulator 98,
http://web.archive.org/web/l9990222060222/http://ourworld.compuse
rve.com/homepages/cranenburgh/fs98plan.htm.

Claims 3-7 stand rejected under 35 U.S.C. § 103(a) over the teachings
of Stone in view of Microsoft.

II. ISSUES
Has the Examiner erred in finding that the combination of Stone in
view of Microsoft teaches or would have suggested “a computer, having a
hardware unit common to the family of aircraft, that performs a flight
simulation function for a specific one of the family of aircraft” and “a
module that has a plurality of independent non-volatile memories, each
storing a software program that is specific to a different one of the family of
aircraft” (claim 6), as Appellant contends?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Stone
1. Stone discloses real-time simulation of aircrafts, wherein computer-
executive instructions such as program modules are executed by a
personal computer (PC), and wherein the program modules include
routines, programs, objects, components, data structures, etc. that
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perform particular tasks or implement particular abstract data types
(col. 5, ll. 6-14).
2. The system of Stone provides nonvolatile storage of computer-
readable instructions, data structures, program modules and other data
for personal computer 20 (col. 5, ll. 47-51; Fig. 1).
3. In the simulator, a model comprises values for a large number of
coefficient and parameters specifying the characteristics of the
player’s aircraft wherein the player is allowed to select different
models for the player’s unit (col. 7, ll. 6-10; Fig. 2).
Microsoft
4. Microsoft discloses providing a simulator software, Flight Simulator
2000, on a personal computer, such as a Pentium 166 machine (pp. 2
and 5).
5. The Flight Simulator fleet includes a variety of aircrafts to offer a
wide range of flight experiences for users of all levels (pp. vi and 163-
190).

IV. PRINCIPLES OF LAW
"[T]he PTO 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)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
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claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The Supreme Court reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id
at 416. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
The Court noted that “[c]ommon sense teaches . . . that familiar items
may have obvious uses beyond their primary purposes.” Id. at 420. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
In affirming a determination of obviousness, the Federal Circuit has
relied, in part, on an applicant’s failure to present evidence that the
modification was “uniquely challenging or difficult for one of ordinary skill
in the art” or “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007)(citing KSR, 550 U.S. at 418-19).

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V. ANALYSIS
Claims 3, 6, and 7
Appellant contends that “[t]he family of aircraft is a set of aircraft of
different types having equipment that is identical for all aircraft of the
family” (App. Br. 5). Though Appellant admits that, presumably,
“Microsoft’s disclosed aircraft manufactured by the same manufacturer
constitutes a family of aircraft” (id.); “aircraft manufactured by the same
manufacturer does not require or imply that the aircraft within such a family
is a set of aircraft of different types having equipment that is identical for all
aircraft of the family, as recited in claim 6” (id.). Furthermore, Appellant
argues that even if “a skilled artisan would have found it obvious to use
memories as storage devices for aircraft simulation programs” as the
Examiner finds (App. Br. 6), “the Office Action provides no reasoning as to
why a skilled artisan would have found it obvious to store a different aircraft
simulation program in each of a plurality of independent memories” (App.
Br. 7).
The Examiner finds that “Stone clearly teach family of aircrafts
(Cessna 182S and 182RG), where aircraft/planes in the at least have same
equipment (e.g. same wingspan wings on the planes)” (Ans. 10). The
Examiner also finds that “[t]here may be various reasons why all the ‘family
of aircraft’ may be stored on one or many such flash-memory cards” such as
“[s]torage capacity, user choice, modularity, and marketability would be
several of criteria” (Ans. 11).
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Thus, an issue we address on appeal is whether the Examiner erred in
concluding that the combination of Stone and Microsoft teaches and/or
would have suggested “a computer, having a hardware unit common to the
family of aircraft, that performs a flight simulation function for a specific
one of the family of aircraft” and “a module that has a plurality of
independent non-volatile memories, each storing a software program that is
specific to a different one of the family of aircraft” (claim 6).
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184.
Claim 6 simply does not place any limitation on what the term “family
of aircraft” is to be, to represent, or to mean, other than that the “family of
aircraft” has a “common” hardware unit. Thus, we broadly but reasonably
construe a “family of aircraft” as any group of aircrafts that comprises a
common hardware unit. Further, since Appellant’s Specification defines
“common” hardware unit as a unit that is “capable of carrying out at least
one particular function… by implementing a suitable software program”
(Spec. 1, ll. 16-23), we broadly interpret the “common” hardware unit as any
unit that is common to the family that is capable of carrying out a function
implementing a software program, consistent with Appellant’s definition in
the Specification.
Though Appellant adds in the Reply Brief that “Stone cannot disclose
the Appellant’s claimed subject matter of a computer that is common to a
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family of aircraft” (Reply Br. 2, emphasis added), such argument is not
commensurate in scope with the language of claim 6. That is, claim 6 does
not require that the “computer” is common to the family, but rather that “a
hardware unit” of the computer is common to the family.
Claim 6 also does not place any limitation on what the term
“memories” is to be, to represent, or to mean, other than that each of the
memories “storing a software program that is specific to a different one of
the family of aircraft.” Thus, we broadly but reasonably construe a memory
as any storage unit for storing a software program.
The Flight Simulator fleet of Microsoft includes a variety of aircrafts
(FF 5). As set forth in Microsoft, the Flight Simulator software is loaded
onto a personal computer, such as a Pentium 166 machine (FF 4). A skilled
artisan would have understood the personal computer that runs the Flight
Simulator software (for the Flight Simulator fleet) to be a “common”
hardware unit for the fleet of aircrafts in the Flight Simulator software. That
is, given our aforementioned claim construction, we find that the artisan
would have understood such fleet of aircrafts in Microsoft’s Flight Simulator
to comprise “a family of aircraft,” wherein the personal computer/hardware
unit that runs the Flight Simulator software is “common” to the family, as
required in claim 6.
Thus, even if claim 6 requires “a computer that is common to a family
of aircraft” as Appellant adds in the Reply Brief (Reply Br. 2), we find
Microsoft to disclose such teaching. Accordingly, we conclude that Stone in
view of Microsoft would have suggested “a computer, having a hardware
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unit common to the family of aircraft, that performs a flight simulation
function for a specific one of the family of aircraft,” as required by claim 6.
Further, Stone also discloses real-time simulation of aircrafts, wherein
program modules are executed by a personal computer (FF 1). In Stone, the
program modules provide non-volatile storage of software programs (FF 1-
2), wherein a player/user is allowed to select different models for different
aircrafts (FF 3). We find that the artisan would have found it obvious that
the modules of Stone provide non-volatile storage of software programs that
are specific to a different one of a plurality of aircrafts. Further, we find the
artisan would also have understood such software programs for the various
aircrafts to be separate and distinct from each other. Thus, since the
software programs are separate and distinct, the storage of each of the
software programs also is separate and distinct. That is, since the software
programs are not stored in place of one another, they are stored in separate
sections or storage units from one another.
Given our aforementioned claim construction, we find an artisan
would have understood such separate and distinct storage of Stone to
comprise “memories, each storing a software program that is specific to a
different” aircraft. That is, nothing in claim 6 precludes “memories” from
being separate and distinct storage sections as those suggested by Stone.
Thus, we conclude that Stone in view of Microsoft would have suggested “a
module that has a plurality of independent non-volatile memories, each
storing a software program that is specific to a different one of the family of
aircraft,” as required by claim 6.
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Although Appellant argues that “the Office Action provides no
reasoning as to why a skilled artisan would have found it obvious to store a
different aircraft simulation program in each of a plurality of independent
memories” (App. Br. 7), Appellant appears to be arguing that the memories
must comprise different removable devices such as flash memory cards.
Even if claim 6 requires that the memories be removable devices such as
flash memory cards, we agree with the Examiner’s finding that “[t]here may
be various reasons why all the ‘family of aircraft’ may be stored on one or
many such flash-memory cards” such as “[s]torage capacity, user choice,
modularity, and marketability would be several of criteria” (Ans. 11). That
is, we find that storing the various software programs in separate flash
memory cards is no more than a simple arrangement of old elements, i.e.,
flash memory cards, with each performing the same function it had been
known to perform, yielding no more than one would expect from such an
arrangement. See KSR, 550 U.S. at 417.
Appellant has presented no evidence that storing the various software
programs in separate flash memory cards was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S. at
418-19). Rather, such teaching is simply an arrangement of the well-known
teaching of a storing software programs, with the well-known teaching of
storage in separate flash memory cards. Thus, such teaching represents
merely a modification of familiar elements according to known methods and
does no more than yield predictable results. See KSR, 550 U.S. at 416.
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Accordingly, we find that the Examiner did not err in rejecting
independent claim 6 and claims 3 and 7 depending therefrom under 35
U.S.C. § 103(a).
Claims 4 and 5
Appellant contends that “write protecting a flash memory prevents
information from being written into the memory” but “has no effect on
reading from the memory and does not prevent a subsequent program
selection signal from overriding a previous selection signal” (App. Br. 8).
Although the Examiner finds that “such a locking would be obvious to one
skilled in the art of flash memory card as write protect” (Ans. 8), we agree
with Appellant. That is, we agree with Appellant that the sections of Stone
cited by the Examiner do not teach or even suggest the claimed “locking
section that, upon applying power to the module, locks a first-received
selection signal … before the hardware unit reads the selected software
program” as required in claim 4.
Accordingly, we find that the Examiner has erred in rejecting claim 4
and claim 5 depending therefrom under 35 U.S.C. § 103(a).

VI. CONCLUSIONS OF LAW
(1) The Examiner did not err in concluding that claims 3, 6, and 7 are
unpatentable under 35 U.S.C. § 103(a) over the teachings of Stone in view
of Microsoft.
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(2) The Examiner erred in concluding that claims 4 and 5 are
unpatentable under 35 U.S.C. § 103(a) over the teachings of Stone in view
of Microsoft.
(3) Claims 3, 6, and 7 are not patentable.

VII. DECISION
We affirm the Examiner’s rejection of claims 3, 6, and 7 but reverse
the Examiner’s rejection of claims 4 and 5 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

peb

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