Ex Parte Hill et al

Patent Trial and Appeal Board

Mar 3, 2016

11843263 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111843,263 08/22/2007
57137 7590 03/07/2016
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
FIRST NAMED INVENTOR
Donald J. Hill
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ll032.10042US02 4770
EXAMINER
KONG, SZE-HON
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
03/07/2016 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):
docket@mabr.com
bisraelsen@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD J. HILL, ALEKSANDER V ALDIS VELDE,
and STUART GRAY
Appeal2013-003782
Application 11/843,263 1
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1---6, 8, and 10-22. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "[t]he real party in interest comprises LEICA
GEOSYSTEMS AG." Appeal Br. 4.
Appeal2013-003782
Application 11/843,263
Claimed Subject Matter
Claims 1, 3, 12, 14, and 20 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A control unit comprising:
means for entertaining;
means for communicating;
means for navigating;
means for controlling steering of an off-road vehicle via a
steering mechanism of the off-road vehicle; and
a housing that houses the means for entertaining, means
for communicating, means for navigating, and means for
controlling steering of the off-road vehicle, the housing sized to
be fittingly received in a pre-existing cavity of a dashboard in the
off-road vehicle, the housing having a width of 182 mm and a
height of 53 mm.
Rejections2
I. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larschan (US 2007/0050108 Al, pub. Mar. 1, 2007),
Birnie (US 2009/0118904 Al, pub. May 7, 2009), and Lange
(US 7,200,490 B2, iss. Apr. 3, 2007).
II. Claims 3-5, 8, and 10-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Larschan, Birnie, Allen (US 7,853,404 B2, iss.
Dec. 14, 2010) and Aral (US 7 ,065,440 B2, iss. June 20, 2006).
III. Claims 6, 14--16, and 18-20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Larschan, Birnie, Allen, Aral, Bringuel
(US 2006/0200313 Al, pub. Sept. 7, 2006), and Rossow (US 7,548,804 B2,
iss. June 16, 2009).
2 The Examiner has withdrawn the rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, as indefinite. Ans. 12.
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Appeal2013-003782
Application 11/843,263
IV. Claim 17 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larschan, Birnie, Allen, Aral, Bringuel, Rossow, and Lu
(US 2003/0130775 Al, pub. July 10, 2003).
V. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larschan, Birnie, Allen, Aral, Bringuel, Rossow, and
Marrah (US 6,526,268B1, iss. Feb. 25, 2003).
V. Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larschan, Birnie, Allen, Aral, Bringuel, Rossow, Marrah,
and Shirley (US 4,642,770, iss. Feb. 10, 1987).
ANALYSIS
Rejection I
The Examiner rejects claim 1 based on the combined teachings of
Larschan, Birnie, and Lange. Non-Final Act. 9-10. The Examiner finds,
among other things, that Larschan does not disclose means for controlling
steering of an off-road vehicle via a steering mechanism of the off-road
vehicle," as recited in claim 1. See Non-Final Act. 9-10. The Examiner
relies on Birnie's disclosure to remedy this deficiency of Larschan's
disclosure. More specifically, the Examiner finds that "Birnie discloses the
means for controlling steering of the off-road vehicle via a steering
mechanism of [an] off-road vehicle." Id. at 10 (citing Birnie, paras. 21, 24,
25, 40, 49-51). The Examiner concludes:
It would have been obvious for one of ordinary skill in the art ...
to combine the invention of Larschan and Birnie to include
means for controlling steering of the vehicle in the housing to
protect the control unit and conveniently assist the operator of
the vehicle to steer the vehicle.
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Appeal2013-003782
Application 11/843,263
Id. Accordingly, the Examiner's reason for combining the teachings of
Larschan and Birnie is to "conveniently assist the operator of the vehicle to
steer the vehicle." Id.
The Appellants contend that the Examiner's rejection of claim 1,
particularly the Examiner's reason for combining the teachings of Larschan
and Birnie, is impermissibly conclusory. Appeal Br. 20-22. The
Appellants' contention is persuasive for the following reasons.
At the outset, we find that the Examiner's reasoning is based on
applying Birnie's teaching of a pre-planned automatic steering control,
which is used in a static environment, to Larschan's commercial motor
vehicle. The Examiner's reasoning does not involve this prior art
commercial motor vehicle being used in an environment other than that
disclosed by Larschan. See infra.
The Appellants point out that Larschan's and Birnie's vehicles, and
their associated uses, are different. Appeal Br. 21-22. The Appellants point
out that Larschan's vehicle "is only concerned with on-road commercial
motor vehicles with a human driver subject to federal hour-of-service
logging requirements and fuel log requirements," whereas Birnie's vehicle,
"is concerned with pre-planned paths that a vehicle will follow to perform
highly repetitive operations, for example, to 'follow a set path pattern over
an area, for example when planting a field, conducting a search, or to
reproduce a previously created path pattern at a later date."' See id. Based
on the foregoing, the Appellants contend that the Examiner's reasoning is
inadequately supported because it "fails to offer any evidence of when
automatic control of the steering would be necessary in Larschan, e.g., when
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Appeal2013-003782
Application 11/843,263
a commercial truck including a commercial truck driver would need to
employ automatic steering." Id. at 22. We agree.
Stated differently, the use ofBirnie's teaching of pre-planned
automatic steering control, e.g., planting a field, is beneficial when the
environment around the vehicle is static. The Examiner's reasoning,
however, is not based on a use of Birnie's teaching in a static environment.
The Examiner's reasoning, i.e., to "conveniently assist the operator of the
vehicle to steer the vehicle," is applied to a commercial motor vehicle, as
taught by Larschan, which is used in a dynamic environment, e.g., driving
on a highway. And, the application of Birnie's pre-planned automatic
steering control, which may be convenient in a static environment, to
Larschan's commercial motor vehicle used in a dynamic environment
introduces dangers in the dynamic environment. For example, it would
seem plain to a person of ordinary skill in the art that applying pre-planned
automatic steering control to a commercial motor vehicle on a highway
would increase the risk of colliding with moving objects and other vehicles
that share the highway. In sum, the Examiner fails to provide an explanation
concerning why or how the inclusion of pre-planned automatic steering
control as taught by Birnie, which is used for pre-planned paths, e.g.,
planting a field, would be safe, much less convenient, to a driver of
Larschan' s commercial motor vehicle.
In response, the Examiner finds that "Larschan and Birnie ... are very
related arts" and "[i]t is well known in the art to provide automatic
driving/steering control of [a] vehicle." Ans. 18. The Examiner's response
also provides a definition for the term "tractor" and cites to paragraph 3 of
the Appellants' Specification discussing types of "off-road vehicles." See
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Appeal2013-003782
Application 11/843,263
id. at 18-19. The Examiner's response appears to suggest that Larschan's
vehicle is a tractor so the vehicles of Larschan and Birnie are of the same
type. However, the Examiner's suggestion that the vehicles of Larschan and
Birnie may be of the same type does not persuasively explain why or how
the inclusion of automatic steering control as taught by Birnie, which is used
for pre-planned paths, e.g., planting a field, would be found convenient to a
driver of Larschan's commercial motor vehicle, e.g., driving on a highway.
Thus, the Examiner's rejection of independent claim 1 and dependent
claim 2, which depends from claim 1, is not sustained.
Rejections 11-V
The rejections of independent claims 3, 12, 14, and 20 suffer from the
same and/or similar deficiency in reasoning as discussed above. See Non-
Final Act. 12, 15-16. Additionally, the remainder of the Examiner's
rejections fail to cure the deficiency of the rejection of claims 3, 12, 14,
and 20. Accordingly, the Examiner's rejections of independent claims 3, 12,
14, and 20, and claims that depend therefrom, are not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1---6, 8, and
10-22.
REVERSED
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