Snap-on Incorporated

Patent Trials and Appeals Board

Mar 29, 2021

2020006429 (P.T.A.B. Mar. 29, 2021)

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.
14/874,287 10/02/2015 Patrick S. Merg 15-1674 2713
20306 7590 03/29/2021
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
03/29/2021 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 PATRICK S. MERG, JACOB G. FOREMAN, and
JOSHUA C. COVINGTON
____________

Appeal 2020-006429
Application 14/874,2871
Technology Center 3600

____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Snap-on
Incorporated. Appeal Br. 1.

Appeal 2020-006429
Application 14/874,287

2
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

Claim 13, reproduced below, is representative of the subject matter on
appeal.
13. A method comprising:
connecting a first computing device to a data link
connector in a vehicle, wherein the first computing device
includes one or more processors, a non-transitory computer-
readable medium, a display, and a first transceiver that is
connectable to the data link connector in the vehicle in order to
transmit a message to an electronic control unit (ECU) in the
vehicle and a second transceiver configured to communicate
with a second computing device;
storing, by the computer-readable medium, instructions
executable by the one or more processors to perform multiple
scan tool functions that include the first transceiver transmitting
a message to the ECU in the vehicle via the data link connector,
and a measurement instruction executable by the one or more
processors to perform a voltage, current, or resistance
measurement;
receiving, by the one or more processors, an identifier of
the vehicle and an identifier of a complaint pertaining to the
vehicle;
transmitting, to the second computing device, a
computer-readable request including the identifier of the
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vehicle and the identifier of the complaint pertaining to the
vehicle;
receiving, by the first computing device in response to
the request, a computer-readable real-fix tip file that includes:
(i) computer-readable data representing a first pointer, and (ii)
computer-readable data representing human-readable text
indicative of a complaint, cause and correction pertaining to a
different vehicle similar to the vehicle connected to the first
computing device, wherein the first pointer points to a first
automated function selector that is associated with the stored
measurement instruction executable by the one or more
processors to perform a voltage, current, or resistance
measurement;
displaying, on the display, the real-fix tip file, wherein
displaying the real-fix tip file includes displaying on the display
the first pointer and the human-readable text;
receiving, by the one or more processors, a selection of
the first pointer while the first pointer is displayed on the
display;
displaying, on the display m response to the selection of
the first pointer, the first automated function selector that is
associated with the measurement instruction executable by the
one or more processors to perform a voltage, current, or
resistance measurement;
receiving, by the one or more processors, a selection of
the displayed first automated function selector that is associated
with the measurement instruction executable by the one or more
processors to perform a voltage, current, or resistance
measurement; and
performing, by the one or more processors executing the
measurement instruction executable by the one or more
processors to perform a voltage, current or resistance
measurement in response to the selection of the displayed first
automated function selector, a voltage, current or resistance
measurement of a circuit to which test leads are connected to
the vehicle.
Appeal Br. 22–23 (Claims Appendix).
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THE REJECTION
Claims 13–36 are rejected under 35 U.S.C. § 103 as being
unpatentable over Merg (US 2014/0207515 A1; July 24, 2014) and Larry
Carley, “Decoding On-Board Diagnostics,” pp. 1–4 (2003),
http://web.archive.org/web/20030804195537/http://www.aa1car.com/library
/cm40122.htm (last viewed March 23, 2021) (hereinafter “Carley”).

FINDINGS OF FACT
1. The Specification describes “pointer” in Figure 26:
OUTPUTTING, BY THE AT LEAST ONE PROCESSOR TO
A DISPLAY CONNECTED TO THE AT LEAST ONE
PROCESSOR, FIRST TEXT AND SECOND TEXT OF THE
FIRST FILE, WHEREIN THE FIRST TEXT DESCRIBES AT
LEAST ONE OF A CAUSE OF THE COMPLAINT AND
HOW THE CAUSE OF THE COMPLAINT WAS
DISCOVERED, WHEREIN THE SECOND TEXT
DESCRIBES A SERVICE-OPERATION PERFORMED ON
THE VEHICLE TO RESOLVE THE COMPLAINT,
WHEREIN ONE OF THE FIRST TEXT AND THE SECOND
TEXT INCLUDES A FIRST POINTER POINTING TO FIRST
AC, WHEREIN IF THE FIRST TEXT INCLUDES THE FIRST
POINTER, THE FIRST AC INCLUDES CONTENT
RELEVANT TO THE COMPLAINT, THE VEHICLE, AND A
PORTION OF THE FIRST TEXT, AND WHEREIN IF THE
SECOND TEXT INCLUDES THE FIRST POINTER, THE
FIRST AC INCLUDES CONTENT RELEVANT TO THE
COMPLAINT, THE VEHICLE, THE CAUSE, AND A
PORTION OF THE SECOND TEXT.
Spec., Figure 26, step 263.
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2. The Specification further describes “pointer” in Figure 26:
“RECEIVING, BY THE AT LEAST ONE PROCESSOR, A SELECTION
OF THE FIRST POINTER WHILE DISPLAYED BY THE DISPLAY.”
Spec., Figure 26, step 264.
3. The Specification describes “pointer” in Figure 26:
“OUTPUTTING, BY THE AT LEAST ONE PROCESSOR TO THE
DISPLAY, THE FIRST AC POINTED TO BY THE FIRST POINTER.”
Spec. Figure 26, step 265.

ANALYSIS
35 U.S.C. § 103 REJECTION

Each of independent claims 13 and 18 requires, in one form or
another,
a computer-readable real-fix tip file that includes: (i) computer-
readable data representing a first pointer, . . . wherein the first
pointer points to a first automated function selector that is
associated with the stored measurement instruction executable
by the one or more processors to perform a voltage, current, or
resistance measurement, . . . receiving, by the one or more
processors, a selection of the first pointer while the first pointer
is displayed on the display; . . . [and] displaying, on the display
in response to the selection of the first pointer, the first automated
function selector that is associated with the measurement
instruction.
Appeal Br. 22–23, 25–26 (Claims Appendix).

Concerning these limitations, the Examiner makes these findings.
[T]he “pointer” is nothing more than computer code that links,
associates, and/or instructs a computer as to where to retrieve,
store, and/or transmit data. In this case, the “pointer” is simply
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nothing more than the code that is instructing the computer where
to retrieve diagnostic information. Additionally, as is further
discussed below, Merg discloses that the system and method
includes, at least, two different types of pointers, wherein the
first pointer is a hyperlink that points to where the system and
user can access specific information and using a computer mouse
to select the hyperlink that is being displayed on the screen,
wherein the selection is obviously being performed through a
mouse pointer that is being displayed and further controlled by
the computer mouse.

With that said, Fig. 5, 6, 7, 14, 15, 18 wherein, via a GUI,
the record that includes the real-fix tip and associated
information is provided and provides a description of the
situation/service and how it was resolved and that the real-fix tip
is displayed as a pointer (hyperlink) that can be selected using a
selector, e.g., through the use of a computer mouse (¶ 79); see
Fig. 14; ¶ 143, 158 wherein an attachment that is relevant to the
real-fix tip, i.e. complaint, vehicle, and text that is indicative of
the complaint, cause, and correction, is determined and
associated with the real-tip fix.
Final Act. 8–9 (emphasis omitted).
Appellant argues,
Merg does not teach or suggest a pointer in the claimed sense of
retrieving an automated function selector. Rather, Merg teaches
an element pointer, such as a mouse pointer displayed on a GUI,
to cause a hover view to be displayed on a display device. See,
Merg at ¶ 0144. Again, Merg does not teach pointing to the
claimed automated function selector associated with the stored
measurement instruction, executable by the “one or more
processors,” to perform the claimed measurement.

Merg also teaches that the “text entry area 610 can include
... an attachment selector 626 for selecting to enter an attachment
(e.g., a document saved in a portable document format (PDF))
for the real-fix-tip.” Merg at ¶ 120. But Merg does not teach or
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suggest that an attachment (e.g., a document) amounts to the
claimed automated function selector associated with the stored
measurement instruction executable by the "one or more
processors.”
Appeal Br. 14–15.
We agree with Appellant. Paragraph 79 of Merg constitutes a generic
disclosure of well-known interface devices, such as, selectors “keyboard, a
computer mouse, or a touch screen.” Merg ¶ 79. Any mention in Merg of
using a hyperlink occurs in paragraph 113 and is limited to data retrieval to
“cause processor 202 to retrieve and display the subject RO or the subject
RO line.” Merg ¶ 113. Nothing more is mentioned about using the selectors
as a pointer, let alone to “point[] to a first automated function selector that is
associated with the stored measurement instruction executable by the one or
more processors to perform a voltage, current, or resistance measurement.”
Although we recognize that in paragraph 143 of Merg, the fix
generator somehow selects an attachment to the real-fix tip, making the real–
fix tip in essence a pointer to the attachment, this still falls short of the
claimed pointer pointing to “a first automated function selector” whose
function under the claims is to “display[], on the display in response to the
selection of the first pointer, the first automated function selector that is
associated with the measurement instruction.” Instead, according to Merg,
the real-fix tip points to non–functional documentary data stored in a
database such as, “an image of a vehicle component, a schematic diagram of
electrical circuitry, or some other attachment.” Merg ¶ 143.
Accordingly, we will not sustain the rejection of claims 13 and 18.
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Because claims 14–17 and 19–36 depend from one of claims 13 and
18, and because we cannot sustain the rejection of claims 13 and 18, the
rejection of claims 14–17 and 19–36 likewise cannot be sustained.

CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 13–36 under 35
U.S.C. § 103.

Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
13–36 103 Merg, Carley 13–36

DECISION
The decision of the Examiner to reject claims is reversed.

REVERSED