Snap-on IncorporatedDownload PDFPatent Trials and Appeals BoardMar 29, 20212020006429 (P.T.A.B. Mar. 29, 2021) Copy Citation 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 Appeal 2020-006429 Application 14/874,287 3 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). Appeal 2020-006429 Application 14/874,287 4 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. Appeal 2020-006429 Application 14/874,287 5 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 Appeal 2020-006429 Application 14/874,287 6 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 Appeal 2020-006429 Application 14/874,287 7 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. Appeal 2020-006429 Application 14/874,287 8 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 Copy with citationCopy as parenthetical citation