Snap-on Incorporated

Patent Trials and Appeals Board

Mar 17, 2022

2021001689 (P.T.A.B. Mar. 17, 2022)

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. 16/164,080 10/18/2018 Timothy Ruther 16-121-US-DIV 1514 20306 7590 03/17/2022 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER GADOMSKI, STEFAN J ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): docketing@mbhb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY RUTHER, GARY STEFANIK, JOSHUA COVINGTON, STEVEN MISKOVIC, and OSWALDO NERI Appeal 2021-001689 Application 16/164,080 Technology Center 2400 Before JOSEPH L. DIXON, JOHN A. JEFFERY, and CATHERINE SHIANG, Administrative Patent Judges. DIXON, Administrative Patent Judge. JEFFERY, Admininstrative Patent Judge, CONCURRING. Appeal 2021-001689 Application 16/164,080 2 DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 5-11, and 13-19. Claims 4, 12, and 20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED SUBJECT MATTER The claims are directed to methods and systems for displaying a thermal image and information related to servicing a vehicle. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method performed by a thermal imaging device, the method comprising: capturing a thermal image; displaying the captured thermal image within a first region of a display of the thermal imaging device, wherein the displayed thermal image conforms to a first color palette that maps temperatures to one or more of (i) a color or (ii) a brightness level; displaying one or more color palette icons within a second region of the display that is distinct from the first region, wherein the one or more color palette icons respectively represent additional color palettes that map temperatures to one or more of (i) a color or (ii) a brightness level; 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant identifies the real party in interest as Snap-on Incorporated. Appeal Br. 4. Appeal 2021-001689 Application 16/164,080 3 receiving input representing a selection of a color palette icon of the one or more color palette icons; and responsive to receiving the input, displaying, within the first region, the captured thermal image conforming to a second color palette that corresponds to the selected color palette icon. Appeal Br. 14 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Erlandsson et al. US 2013/0307992 A1 Nov. 21, 2013 Yi et al. US 2014/0071323 A1 Mar. 13, 2014 Halverson et al. US 2016/0033336 A1 Feb. 4, 2016 Gu et al. US 2016/0231833 A1 Aug. 11, 2016 REJECTIONS Claims 1, 7, 8, 9, 15, 16, and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Halverson in view of Gu. Claims 2, 3, 5, 10, 11, 13, 18, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Halverson and Gu, further in view of Erlandsson. Claims 6 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Halverson, Gu, Erlandsson, further in view of Yi. OPINION 35 U.S.C. § 103 Claims 1, 7, 8, 9, 15, 16, and 17 We are bound by the controlling guidance of our reviewing court: “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Appeal 2021-001689 Application 16/164,080 4 Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T]he name of the game is the claim.”) (emphasis added). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). [A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s Appeal 2021-001689 Application 16/164,080 5 invention to a person having ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). “[R]ejections 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing Kahn, 441 F.3d at 988). The Examiner’s burden of proving non- patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections.”). “A rejection based on section 103 clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Claims 1, 9, and 17 With respect to independent claims 1, 9, and 17, Appellant does not set forth separate arguments for patentability for claims 9 and 17. Appeal Br. 8. As a result, we exercise our authority under 37 C.F.R. § Appeal 2021-001689 Application 16/164,080 6 41.37(c)(1)(iv) and group independent claims and select independent claim 1 as the representative claim for the group and will address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made but did not make in the Briefs are deemed to be waived/forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence does not support Appellant’s position in the record. Accordingly, we sustain each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by the Examiner, and add the following for emphasis only. With regard to independent claim 1, we agree with the Examiner and find Appellant’s arguments do not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. Appellant generally argues that the Halverson and Gu references fail to teach or suggest “displaying one or more color palette icons within a second region of the display that is distinct from the first region, wherein the one or more color palette icons respectively represent additional color palettes that map temperatures to one or more of (i) a color or (ii) a brightness level.” Appeal Br. 8. Appellant specifically argues that the Halverson reference in paragraph 42 regarding “selecting temperature ranges for display” and/or “selecting color palettes” fail to amount to a color palette that maps temperatures to one or more of (i) a color or (ii) a brightness level. Appeal Br. 9. Appellant also argues that the Halverson reference is silent with regard to “any single button representing a particular color palette,” and speculates that the buttons could be used to enter a combination of numbers Appeal 2021-001689 Application 16/164,080 7 that correspond to a particular color palette without any single button corresponding to the particular color palette. Appeal Br. 9. We note that Appellants’ argument is not commensurate in scope with the language of representative independent claim 1. Appellant further contends that paragraphs 43 of the Halverson reference is silent with regard to details of how the “touch-screen display” can allegedly be used to select color palettes. Appeal Br. 10. Appellant also argues the Gu reference fails to disclose a color palette icon as defined by claim 1, and that the Gu reference instead discloses selectable colors to change the illuminated color of a stylus and have nothing to do with mapping temperature to color or brightness. Appeal Br. 10. We disagree with Appellant and find that the Examiner relied upon the Halverson reference for disclosing the “one or more color palette icons,” and relied upon the Gu reference for the distinct first and second regions of the display. Therefore, Appellant is arguing the references individually and not as the Examiner has applied the prior art teachings. As a result, Appellant’s arguments are unpersuasive of error in the Examiner’s factual findings or conclusion of obviousness. Appellant also argues that the combination of Halverson and Gu both fail to teach or suggest the claimed “displaying one or more color palette icons within a second region of the display that is distinct from the first region.” Appeal Br. 10. We disagree with Appellant and find that the Gu reference teaches a first region and a second region that is distinct from the first region. Moreover, Appellant’s has not identified how the distinct regions are either clearly defined or separate that is different than is taught or Appeal 2021-001689 Application 16/164,080 8 suggested by the Gu reference at the edge of the user interface 102, 134 in Figure 1. Appellant also argues that the Halverson and Gu references both fail to teach or suggest “displaying one or more color palette icons within a second region of the display that is distinct from the first region,” as recited by claim 1. Appeal Br. 10-11. Appellant further argues the Gu reference teaches displaying an alleged color palette icon 134 that fills only a portion of a display the color palette icon 134 of Gu having nothing to do with color palettes as defined by claim 1. Appeal Br. 10-11. Appellant argues that the Halverson’s silent with regard to whether a thermal image is displayed within all or just a portion of a display area, and is silent regarding a distinct second region within the display that could display the icon 134 of Gu. Appeal Br. 10-11. We disagree with Appellant because the Examiner further clarifies the rejection and the individual teachings relied upon and how the combination teaches or suggests the invention as recited in representative independent claim 1 and responds to Appellant’s arguments. Ans. 3-5; Ans. 10-16. The Examiner finds that Appellant attempts to read claim limitations from the Specification into the claims and that Appellant is arguing the references individually and arguing limitations not relied upon in either the Gu or Halverson references. Ans. 11-12. We agree with the Examiner. The Examiner further provides a clear claim interpretation and finds that Appellant is providing “piecemeal analysis of the rejection and the combination of references.” Ans. 13. At the outset, we note that the “name of the game is the claim” (Hiniker Co., 150 F.3d at 1369)and under the broadest reasonable Appeal 2021-001689 Application 16/164,080 9 interpretation, the language of independent claim 1 recites two regions where the first region displays a thermal image that conforms to a first color palette and a second region “displaying one or more color palette icons” that “represent additional color palettes that map temperatures to one or more of (i) a color or (ii) a brightness level.” Under the Examiner’s broadest reasonable interpretation, only “one” additional color palette icon is required to be displayed, and the Halverson reference clearly states color palettes are available. We agree with the Examiner that the Gu reference teaches and fairly suggests two distinct areas with a first region having an image and the second region having a color palette (although it is for the current displayed image). Final Act. 6. We further agree with the Examiner that the Halverson reference discloses plural colors and plural color palettes in paragraph 42. Final Act. 5 We also agree with the Examiner that the Halverson reference discloses both hardware buttons and soft buttons on the display in paragraph 43. Final Act. 5. Because the Halverson reference discloses plural “color palettes,” then some mechanism to switch between the color palettes would be necessary. With the further teaching and suggestion in the Halverson reference of the on-screen display in place of hard buttons, a soft button on the screen in any form would correspond to the second color palette icon, even if only to toggle between the two color palettes as with the hardware buttons. Furthermore, with the teaching or suggestion of the Gu reference regarding two regions on the display, we agree with the Examiner that a display region for the thermal image and a display region for the color palette icon would have been obvious to one of ordinary skill in the art at the Appeal 2021-001689 Application 16/164,080 10 time of the invention. Similarly, with the software button embodiment of the Halverson reference there would similarly be a display region and a software button region. We agree with the Examiner that the Halverson reference further teaches receiving signals from plural switches to switch between color palettes with some input from a user of the device which would require “receiving input representing a selection of a color palette icon of the one or more color palette icons; and responsive to receiving the input, displaying, within the first region, the captured thermal image conforming to a second color palette that corresponds to the selected color palette icon.” Halverson ¶ 42; Final Act. 5. We find Appellant’s arguments in the appeal brief to not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. In the Reply Brief, Appellant presents similar arguments advanced in the appeal brief, but we find Appellants’ arguments imply that there are more than a single additional color palette in the “respectively represent additional color palettes that map temperatures to one or more of (i) a color or (ii) a brightness level.” Reply Br. 4-7. We find Appellant’s argument to be unpersuasive because with a single additional color palette the corresponding soft button would represent that single additional color palette. Alternatively, to the extent Appellantcontends that the content of the icon is a reduced scale representation of the color palette in the display of the thermal image, such detail is not found in the language of representative independent claim 1 and Appeal 2021-001689 Application 16/164,080 11 is not persuasive of error in the Examiner’s factual findings or conclusion of obviousness of independent claim 1. Claims 2, 3, 5, 10, 11, 13, 18, and 19 Appellant does not set forth separate arguments for patentability of a majority of these dependent claims and only sets forth separate arguments for patentability of dependent claim 5 and 13. As a result, claims 2, 3, 10, 11, 18, and 19 will fall with representative independent claim 1. With respect to dependent claims 5 and 13, Appellant separately argues that the Examiner erred in relying upon the Erlandsson reference. Appeal Br. 11. Appellant argues that Claim 5 recites “replacing, within the display, the selected color palette icon with a color palette icon that corresponds to the first color palette,” and paragraph 66 of the Erlandsson reference does not teach “replacing, within the display, the selected color palette icon with a color palette icon that corresponds to the first color palette.” Appeal Br. 11-12. The Examiner finds that “the list of animation examples provided by Erlandsson is non-exhaustive and does not explicitly exclude animation such as the replacement animation required by the claim language.” Ans. 14. The Examiner further finds that the purpose of the Erlandsson reference is to “reduced effort for switching between selected data items through improved intuitive knowledge as to where in a new interface view where a first and second item are located when switching back and forth.” Ans. 14-15. The Examiner repeatedly addresses the combination of the prior art references for the purpose of animation, but the Examiner does not specifically address Appeal 2021-001689 Application 16/164,080 12 the lack of a specific teaching or suggestion of “replacing” the color palette icon (in the second region of the display). We agree with Appellant because paragraph 66 of the Erlandsson reference merely discloses enlarging an image from a list of thumbnails and decreasing the size of an image into the list of thumbnails, but the image in the thumbnails (icons) remains constant without a replacement of a thumbnail. To be clear, our analysis is not related to any “list” requirement, as claim 5 does not require any list. As a result, the Examiner’s reliance upon paragraph 66 of the Erlandsson reference does not teach or suggest “replacing” one thumbnail for another thumbnail, and we cannot sustain the Examiner’s obviousness rejection of dependent claims 5 and 13. Claims 6 and 14 Because dependent claims 6 and 14 dependent from claims 5 and 13 respectively, and the Examiner has not shown how the additional reliance upon the Yi reference remedies the noted deficiency, we cannot sustain the Examiner’s obviousness rejection of claims 6 and 14 for the reasons discussed above with respect to dependent claim 5. CONCLUSION We sustain the Examiner’s obviousness rejections of claims 1-3, 7- 11, and 15-19, but we reverse the obviousness rejection of claims 5, 6, 13, and 14. Appeal 2021-001689 Application 16/164,080 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 8, 9, 15, 16, 17 103 Halverson, Gu 1, 7, 8, 9, 15, 16, 17 2, 3, 5, 10, 11, 13, 18, 19 103 Halverson, Gu, Erlandsson 2, 3, 10, 11, 18, 19 5, 13 6, 14 103 Halverson, Gu, Erlandsson, Yi 6, 14 Overall Outcome 1-3, 7-11, 15-19 5, 6, 13, 14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY RUTHER, GARY STEFANIK, JOSHUA COVINGTON, STEVEN MISCOVIC, and OSWALDO NERI ____________ Appeal 2021-001689 Application 16/164,080 Technology Center 2400 ____________ JEFFERY, Administrative Patent Judge, CONCURRING. I join the majority in its decision, but write separately to articulate my view as to why the Examiner’s rejection of claim 5 is erroneous-a view different from that articulated by the majority. Claim 5 recites replacing, within the display, the selected color palette icon with a color palette icon that corresponds to the first color palette. My emphasis underscores that the claim requires replacing icons, specifically color palette icons. An “icon” is defined in the art quite broadly. For example, an “icon” is defined, quite broadly, as “[a] small image displayed on the screen to represent an object that can be manipulated by a user.” MICROSOFT COMPUTER DICTIONARY 263 (5th ed. 2002). Another technical dictionary defines the term “icon” even more broadly as “[o]n a computer screen, a small displayed image which serves to represent something else, such as a file, program, disk drive, function, and so on.” Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 357 (2004). Appeal 2021-001689 Application 16/164,080 2 Turning to claim 5, the claim does not recite replacing icons in a list, but rather encompasses, quite broadly, (1) displaying one palette icon in a region (which could be anywhere on the display), and (2) replacing that icon with another one in the display. Therefore, to the extent the majority interprets claim 5 to require replacing icons in a list on page 12 of the decision, I disagree, for the claim recites no such list, much less a list from which icons are replaced. In rejecting claim 5, the Examiner relies on the animation functionality described in Erlandsson’s paragraph 66 for teaching the recited icon replacement. See Final Act. 8. This functionality, shown in Erlandsson’s Figures 4a and 4b, effectively replaces the display of IR image 2 that is shown to the right of vertical list 9 in Figure 4a with an enlarged digital visual image 3 in Figure 4b. In other words, the IR image 2 that is visible in Figure 4a is no longer visible in Figure 4b because its display was replaced by that of digital visual image 3 in that figure. These respective elements, including the replacement of IR image 2’s display, are shown in Figures 4a and 4b annotated below. Appeal 2021-001689 Application 16/164,080 3 As shown above, image 2 shown to the right of vertical list 9 in Erlandsson’s Figure 4a is effectively replaced with image 3 in Figure 4b. Given this replacement, I find unpersuasive Appellant’s argument on page 12 of the Appeal Brief that “Figs. 4a and 4b of Erlandsson clearly show that the vertical list 9 has the same appearance before, during, and after the described selection act . . . [and] no selected color palette icon has been replaced with another color palette icon within the vertical list 9” (emphasis added). As noted above, it is not the vertical list 9 (or the elements in that list) that is replaced: rather it’s the IR image 2 to the right of the vertical list 9 in Figure 4a that is replaced with the digital visual image 3 in Figure 4b. Appeal 2021-001689 Application 16/164,080 4 Nor am I persuaded by Appellant’s argument on page 9 of the Reply Brief that “[t]he selected color palette icon can be replaced as recited in claim 5 without using an animation,” for the claim does not preclude an animation-based replacement, such as that shown in Erlandsson’s Figures 4a and 4b. Notably, the claim does not say how the icon is replaced-it just says “replacing.” In any event, the Examiner apparently acknowledges that Erlandsson’s IR image 2 and digital visual image 3 shown to the right of the vertical list 9 in Figures 4a and 4b are not icons, but rather “data items.” See Ans. 15. Nevertheless, the Examiner finds that these “data items,” such as the images 2 and 3 shown to the right of vertical list 9 in Erlandsson’s Figures 4a and 4b, can include icons-including the color palette icon in the Halverson/Gu combination. See id. The Examiner makes a valid point here: an icon certainly can be a displayable “data item,” particularly given the broad definitions of the term “icon” noted above. But I have difficulty with the Examiner’s rejection given the Examiner’s articulated findings under the proposed combination. Although an “icon” is broadly defined, the Examiner does not say that there are multiple palette icons in the Halverson/Gu combination, but rather there’s apparently only one such icon, namely numeral 134 in Gu’s Figure 1. See Ans. 15 (referring to “the thermal image color palette icon disclosed by the combination of Halverson and Gu”); see also id. (“The combination of Halverson and Gu disclose a thermal image color palette selection ‘icon’ as part of a touch screen graphical user interface.”) (emphases added) Appeal 2021-001689 Application 16/164,080 5 My emphasis on the Examiner’s usage of singular terms in connection with the color palette icon in the Halverson/Gu combination underscores that the Examiner apparently finds that there is only one color palette icon under that combination, namely numeral 134 in Gu’s Figure 1 shown below in isolation for clarity. Although the claim does not preclude one color palette icon given claim 1’s “one or more color palette icons” language, I cannot say, without more from the Examiner, whether there are multiple palette icons in the Halverson/Gu combination, so that one palette icon replaces another in the manner shown for the data items (which can be icons under the Examiner’s mapping) in Erlandsson’s Figures 4a and 4b. Although the individual blue, green, and red buttons 136, 138, and 140 in Gu’s Figure 1 are themselves “icons” under the definitions above, Appeal 2021-001689 Application 16/164,080 6 they are not palette icons. So, there is apparently only one palette icon to select under the Examiner’s combination, namely numeral 134 in Gu’s Figure 1. Therefore, to say that it would have been obvious to replace one palette icon with another as the Examiner proposes-when there is only one palette icon under the proposed combination-strains reasonable limits on this record. I, therefore, join the majority in reversing the Examiner’s rejection of claim 5.