Ex Parte Jones et al

Patent Trial and Appeal Board

Nov 29, 2016

13468859 (P.T.A.B. Nov. 29, 2016)

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.
80251.000027 1832
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
13/468,859 05/10/2012 Gavin Jones
21967 7590 11/29/2016
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
11/29/2016 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 GAVIN JONES, BALU SUBRAMANYA, and
MIKE NICKOLAUS
Appeal 2014-008262
Application 13/468,8591
Technology Center 3600
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gavin Jones et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1—16 and 18—23.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Duncan
Solutions, Inc. Appeal Br. 1 (filed Jan. 13, 2014).
2 Claim 17 is cancelled. Id. at 31.
Appeal 2014-008262
Application 13/468,859
SUMMARY OF DECISION
We AFFIRM-IN-PART, and denominate our affirmance as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
INVENTION
Appellants’ invention relates “to a parking meter system equipped for
wireless communication between the various components of the parking
system.” Spec. 12.
Claims 1, 12, and 18 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A parking system comprising:
a computerized parking management system;
a first single-space parking meter including a first solar
panel, a first battery and first wireless communications
hardware configured to communicate parking data and data
related to the operation of the first solar panel between the first
single-space parking meter and the parking management system
via a wireless network;
a second single-space parking meter including a second
solar panel, a second battery and second wireless
communications hardware configured to communicate parking
data and data related to the operation of the second solar panel
between the second single-space parking meter and the parking
management system via the wireless network; and
a mobile citation unit including third wireless
communications hardware configured to communicate parking
enforcement data between the mobile citation unit and the
parking management system via the wireless network;
wherein the parking management system processes and
stores the parking data and the data related to the operation of
the first and second solar panels received from the first and
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second single-space parking meters and processes and stores
enforcement data from the mobile citation unit.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—5 and 8—10 under 35 U.S.C.
§ 103(a) as being unpatentable over Manion (US 6,037,880, iss.
Mar. 14, 2000) and Hunter (US 2009/0026842 Al, pub. Jan. 29,
2009).
II. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a)
as being unpatentable over Manion, Hunter, and Moody (US
2,995,230, iss. Aug. 8, 1961).
III. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
being unpatentable over Manion, Hunter, and Marchasin (US
2006/0255119 Al, pub. Nov. 16, 2006).
IV. The Examiner rejected claims 12—20 under 35 U.S.C. § 103(a)
as being unpatentable over Manion and Marchasin.
V. The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
being unpatentable over Manion, Hunter, and Long (US
2002/0074344 Al, pub. June 20, 2002).
VI. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Manion, Hunter, and Davis (US
2009/0099761 Al, pub. Apr. 16, 2009).
VII. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Manion, Marchasin, and Fancher (US
2006/0173733 Al, pub. Aug. 3, 2006).
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ANALYSIS
Rejection I
Claim 1
In independent claim 1, first and second wireless communications
hardware are configured to communicate data related to the operation of first
and second solar panels, respectively, between first and second single-space
parking meters and a parking management system. Appeal Br. 28 (Claims
App.).
The Examiner finds that although Manion fails to disclose a solar
panel to power its battery 1103, nonetheless, Hunter discloses “providing a
solar panel (18) as a means to power a parking meter battery (10) as
illustrated at figures 1-4 and mentioned at abstract and paragraphs 24-31.”
Final Act. 3 (transmitted Aug. 14, 2013). The Examiner further finds that
Hunter “discloses communicating data related to the operation of the first
solar panel via a wireless network (24, 26), as mentioned at paragraph 32.”
Id. The Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to provide Hunter’s solar panel to recharge Manion’s
battery “as solar panels are a well-known means of recharging batteries and
would enable elimination of the replacement of said battery every six
months, thus enabling reduction of maintenance by service personnel].” Id.
Appellants argue that Hunter fails to disclose communicating data to
the parking management system related to the operation of the first and
second solar panels, as called for by claim 1, but rather discloses
communicating data related to battery operation. Appeal Br. 9. Thus,
Appellants are arguing that “claim 1 is patentable because the type of data
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communicated in the system of claim 1 is patentably different than the type
of data communicated by the system of Hunter.” Id. at 12.
Even accepting Appellants’ position that Hunter’s data related to
battery operation is of a different type from the claimed data related to solar
panel operation, nonetheless, we note that the informational content of data
is not functionally or structurally related to the claimed first and second
wireless communications hardware and to the claimed parking management
system. We, thus, find unpersuasive Appellants’ contention regarding
independent claim 1 because it is premised on the informational content of
the recitations “data related to the operation of the first solar panel” and
“data related to the operation of the second solar panel,” and hence covers
non-functional descriptive material.
The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Fowry does not claim merely the information
content of a memory. . . . Nor does he seek to patent the content of
information resident in a database”). See also Ex parte Nehls, 88 USPQ2d
1883, 1887—90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative); Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative). Our reviewing court has held that non­
functional descriptive material cannot lend patentability to an invention that
would have otherwise been anticipated by the prior art. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (noting that when descriptive material is not functionally related
to the substrate, the descriptive material will not distinguish the invention
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from the prior art in terms of patentability). King Pharm., Inc. v. Eon Labs,
Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is
whether ‘there exists any new and unobvious functional relationship
between the printed matter and the substrate.’”) (internal citations omitted).
Here, the informational content of the claimed data related to first and
second solar panel operation represents non-functional descriptive material
that is entitled to no weight in the patentability analysis. In particular, the
claimed data related to first and second solar panel operation imparts no
functionality to the claimed first and second wireless communications
hardware and to the parking management system. In Appellants’
Specification, “communication subsystem 52” corresponds to the claimed
first and second wireless communications hardware, and is described as
“standard mobile telephone communication systems” or “a wireless
communication antenna.” See Spec. ]Hf 59, 60; see also Appeal Br. 2—3.
The Specification further describes the claimed “parking management
system” as a “computerized, server system.” See Spec. 141; see also
Appeal Br. 2. Hence, because a wireless communication antenna can
transmit data irrespective of the informational content of the data and a
server can likewise process and store such data, the claimed data related to
first and second solar panel operation does not affect the manner in which
the first and second wireless communications hardware and the parking
management system function.
Manion’s meter 20, powered by battery 1103, transmits and receives
data over network 35 to/from host computer 23. See Manion, col. 8,11. 49—
51. Similarly, Hunter’s parking meter, powered by solar panel 18 and
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batteries 12, 14, includes communication device 24 for transmitting data
over a wireless network to a control system. See Hunter, || 2, 14, 24, 26,
32. Hence, the combined teachings of Manion and Hunter disclose a single­
space parking meter including a solar panel, a battery, and a communications
hardware configured to communicate data to a parking management system
that processes and stores the data. In other words, the parking system of
Manion, as modified by Hunter, transmits, processes and stores data
irrespective of the data’s informational content, including data related to the
operation of the first and second solar panels.
Appellants further argue that the Examiner has failed to articulate an
adequate reasoning with rational underpinnings why it would have been
obvious for a person of ordinary skill in the art “to have uploaded data
related to said solar panel/battery system for any of the solar powered
parking meters in Manion’s parking meter system.” Appeal Br. 11.
According to Appellants, the Examiner’s statement that it would have been
obvious for a person of ordinary skill in the art “to have uploaded data
related to said solar panel/battery system for any of the solar powered
parking meters in Manion’s parking meter system” is conclusory. Id.', see
also Final Act. 3.
We are not persuaded by Appellants’ argument because no such
modification of the system of Manion and Hunter is required to satisfy the
language of claim 1, as Appellants contend. The parking system of Manion,
as modified by Hunter, transmits, processes and stores data, and, thus, can
also transmit, process and store data related to the operation of the first and
second solar panels. In other words, as we have stated above, the system of
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Manion, as modified by Hunter, constitutes a single-space parking meter
including a solar panel, a battery, a communication hardware, and a parking
management system (server) that transmits, processes, and stores data
irrespective of the data’s informational content, including data related to the
operation of the first and second solar panels.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Manion and
Hunter. However, we denominate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis relies
upon facts and reasoning that the Examiner did not use.
Claim 2
Claim 2 depends from claim 1 and adds the limitations of first and
second vehicle sensors configured to detect the presence of a vehicle,
wherein data generated by the first and second vehicle sensors is
communicated to the parking management system via first and second
wireless communications hardware. Appeal Br. 28—29 (Claims App.).
The Examiner finds that “Manion discloses . . . 1 st and 2nd parking
meters (20) includ[ing] a vehicle sensor in the form of a sonar range finder
(1108), as mentioned at abstract, col. 1, lines 50-56, col. 2, lines 19-44, col.
3, lines 14-22 and col. 8, lines 49-67 and illustrated at fig. 11.” Final Act. 4.
According to the Examiner, Manion’s sonar range finder 1108 “checks to
see if a vehicle is present, and communicates said information to the host
computer ... for the purpose of notifying a parking attendant of the location
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of a violating vehicle.” Final Act. 7—8 (citing Manion, Abstract, col. 1,11.
50-60, col. 2,11. 19-44, col. 3,11. 14—22, col. 8,11. 49-67, Fig. 11).
Appellants argue that the data transmitted to Manion’s host computer
23 is not data generated by sonar range finder 1108, but rather is a
“notification of an illegally parked car.” Appeal Br. 14. According to
Appellants, data from Manion’s sonar range finder 1108 is “locally
processed at each single space meter to determine whether a parking
violation has occurred and only the locally processed determination ... is
transmitted to the host computer.” Id. at 13. Thus, Appellants contend that
“the plain meaning of the term ‘data generated’ by a vehicle sensor is
different from a determination based upon processing of the vehicle sensor
data, as taught by Manion.” Id. at 14 (citing Spec. 7:10-15, 8:23—29, 26:8—
14).
We do not agree with Appellants’ position because although the
claims are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In this
case, the limitations “data generated by the first vehicle sensor” and “data
generated by the second vehicle sensor” are not limited to raw data, as
Appellants contend, and thus, do not preclude local processing of the data
and transmitting processed data to the parking management system.
Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Such an
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interpretation is consistent with Appellants’ Specification, which describes
“data generated by the vehicle sensor” as “data related to the presence of a
vehicle.” Spec. 144 (emphasis added). Manion’s transmission of processed
data regarding an illegally parked vehicle constitutes data related3 to the
presence of the vehicle in the parking space. See Manion, col. 3,11. 14—21.
We also do not agree with Appellants’ contention that claim 4 does
not further limit claim 2 if we interpret the limitations “data generated by the
first vehicle sensor” and “data generated by the second vehicle sensor” as
including processed data. Appeal Br. 15. Claim 4, which depends from
claim 2, limits the processed data of claim 2 to data “processed to determine
whether a vehicle is currently parked in the parking spaces associated with
the first and second single-space meters, respectively” and “parking data . . .
[to] data related to the parking violation occurrence.” Id. at 29 (Claims
App.).
We thus sustain the rejection of claim 2 over the combined teachings
of Manion and Hunter. However, we denominate our affirmance as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our
analysis relies upon facts and reasoning that the Examiner did not use.
3 An ordinary and customary meaning of the term “related” is
“connected by reason of an established or discoverable relation.” Merriam
Webster’s Collegiate Dictionary (10th ed. 1997).
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Claim 4
Appellants argue that the combined teachings of Marion and Hunter
fail to disclose communication of both data generated by vehicle sensors and
data related to parking violation occurrence. Appeal Br. 15—16.
In addition to the discussion supra in the arguments against the
rejection of claim 2, we further note that claim 4 does not require that both
raw data generated by the first and second vehicle sensors and processed
data related to a parking violation occurrence are transmitted to the claimed
parking management system. Rather, claim 4 limits the processed data of
claim 2 to data “processed to determine whether a vehicle is currently
parked in the parking spaces associated with the first and second single­
space meters, respectively” and “parking data . . . [to] data related to the
parking violation occurrence.” Id. at 29 (Claims App.).
The Examiner is correct that Manion’s system determines whether a
vehicle is present in a parking space using sonar ranger finders 1108, checks
the time and/or the amount of money on the parking meter, and transmits
data related to a parking violation occurrence to computer 23. See Final Act.
4, Ans. 5; see also Manion, col. 3,11. 14—21, col. 9,11. 1—6, and Fig. 12.
We, thus, sustain the rejection of claim 4 over the combined teachings
of Manion and Hunter. As claim 4 depends from independent claim 1, we
denominate our affirmance as a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b), because our analysis relies upon facts and reasoning
that the Examiner did not use.
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Claims 3, 5 and 8—10
Appellants do not make any other substantive arguments regarding the
rejection of claims 3, 5, and 8—10. See Appeal Br. 8—16.
Therefore, for the reasons expressed supra, we likewise sustain the
rejection under 35 U.S.C. § 103(a) of claims 3, 5, and 8—10 as unpatentable
over Manion and Hunter. As claims 3,5, and 8—10 depend from
independent claim 1, we denominate our affirmance as a NEW GROUND
OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis
relies upon facts and reasoning that the Examiner did not use.
Rejections II and III
Claims 6, 7, and 11
Appellants rely on the arguments presented supra against the rejection
of claim 1. Appeal Br. 16—19.
Therefore, for the same reasons discussed above, we also sustain the
rejections under 35 U.S.C. § 103(a) of claim 6 and 7 as unpatentable over
Manion, Hunter, and Moody and of claim 11 as unpatentable over Manion,
Hunter, and Marchasin. As claims 6, 7, and 11 depend directly or indirectly
from independent claim 1, we denominate our affirmance as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our
analysis relies upon facts and reasoning that the Examiner did not use.
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Rejection IV
Claims 12 and 18
Appellants rely on the arguments discussed supra in the rejection of
claims 1 and 2. Appeal Br. 19-22.
Therefore, for the same reasons discussed above, we sustain the
rejection under 35 U.S.C. § 103(a) of claims 12 and 18 as unpatentable over
Manion and Marchasin. However, we denominate our affirmance as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our
analysis relies upon facts and reasoning that the Examiner did not use.
Claim 13
Claim 12 recites the limitation of a server configured to receive
wireless communication of parking data . . . wherein the [] parking data
includes vehicle sensor data generated by the vehicle sensors.” Appeal Br.
30-31 (Claims App.). Claim 13 depends from claim 12 and adds the
limitation of “the server processes the parking data to determine whether a
parking violation has occurred.” Id. at 31 (Claims App.). Hence, in
contrast to independent claim 12, claim 13 requires that the server have a
specific configuration, i.e., hardware/software, needed “to determine
whether a parking violation has occurred.”
As the Examiner correctly finds, “Manion discloses . . . 1 st and 2nd
parking meters (20) includ[ing] a vehicle sensor in the form of a sonar range
finder (1108), as mentioned at abstract, col. 1, lines 50-56, col. 2, lines
19-44, col. 3, lines 14-22 and col. 8, lines 49-67 and illustrated at fig. 11.”
Final Act. 4. Furthermore, in Manion, parking meters 20 determine whether
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a parking violation has occurred and transmit the violation status to host
computer 23, which then transmits the information to personal
communicator 22 of a parking attendant. See Manion, col. 7,11. 33—42, col.
9,11. 3—5. However, although we appreciate that Manion’s host computer 23
does not determine whether a parking violation has occurred, we agree with
the Examiner that “Appellant does not provide criticality as to processing of
the data either locally at the meter or remotely at the central processing
computer.” Ans. 5—6. Therefore, it would have been obvious to a person of
ordinary skill in the art to further modify the parking meter system of
Manion, as modified by Marchasin,4 and have the server of Marchasin
process the data generated by Manion’s vehicle sensors to determine
whether a parking violation has occurred in order to reduce the complexity
of the parking meter and, thus, provide for simpler maintenance. Such a
modification in the location of software/hardware at either the parking meter
site or the server site is an obvious matter of design choice. See, e.g., In re
Kuhle, 526 F.2d 553, 555 (CCPA 1975). Simply selecting one of a plurality
of a finite number of identified predictable solutions might not be the
product of innovation but something that occurs in the ordinary course of
using a known device. See, e.g., In re Kubin, 561 F.3d 1351, 1358—61 (Fed.
Cir. 2009). The Examiner is correct that “the outcome is the same” as “the
[parking] violation is transmitted to the personal communicator of the
4 The Examiner concluded that it would have been obvious for a person
of ordinary skill in the art to substitute Marchasin’s server 42 for Manion’s
host computer 23 because “a server is part of a well known method of
communication using web based communication.” Final Act. 8 (citing
Marchasin || 50, 59, 112—14).
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parking attendant for issuance of the ticket to the violator,” regardless of
whether the data is processed at the parking meter site or at the server site.
Ans. 5—6.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claims 13 as unpatentable over Manion and
Marchasin. However, we denominate our affirmance as a NEW GROUND
OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis
relies upon facts and reasoning that the Examiner did not use.
Claims 14^17, 19, and 20
Appellants do not make any other substantive arguments regarding the
rejection of claims 14—17, 19, and 20. See Appeal Br. 19-22.
Therefore, for the reasons expressed supra, we likewise sustain the
rejection under 35 U.S.C. § 103(a) of claims 14—17, 19, and 20 as
unpatentable over Manion and Marchasin. As claims 14—17, 19, and 20
depend from independent claims 12 and 18, respectively, we denominate our
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b), because our analysis relies upon facts and reasoning that the
Examiner did not use.
Rejection V
The Examiner finds that Manion discloses most of the limitations of
claim 21, but fails to disclose a parking meter “configured to initiate the
display of instructions.” Final Act. 8—9. Nonetheless, the Examiner finds
that Long discloses a fuel dispenser 10 “configured to initiate the display of
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instructions.” Id. at 9 (citing Long || 24, 26, 37). The Examiner concludes
that it would have been obvious for a person of ordinary skill in the art to
have provided Long’s display to the parking system of Manion, as modified
by Hunter, “for the purpose of. . . displaying instructions on how a customer
may use and operate Manion’s parking meters.” Id.
Appellants argue that “Manion teaches away from a modification,
such as that with Long . . . proposed by the Examiner, to include a display
of instructions at the single space meter of Manion.” Appeal Br. 23.
Teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 E.3d 1195,
1201 (Led. Cir. 2004). In this case, Appellants are correct that “Manion
expressly teaches that use of a display at the single space meters is
undesirable.” Appeal Br. 23. More specifically, Manion states that “[tjhere
will not be a display or any visible means for customer interface with this
unit except for the N-PCS communications port. This limits current
consumption thus increasing battery life to a minimum of 6 months.”
Manion, col. 8,11. 44-48. We, thus, agree with Appellants that “[gjiven this
strong teaching of the disadvantage of a single space parking meter having
‘any visible means for customer interface,’ Manion teaches away from a
modification including a complicated visual display interface such as taught
by Long.” Appeal. Br. 23 (underlining omitted).
Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claim 21 as unpatentable over Manion, Hunter,
and Long.
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Rejection VI
The Examiner finds that Manion discloses most of the limitations of
claim 22, but fails to disclose that the “data related to the operation of the
first and second solar panels is data related to the current supplied by the
first and second solar panels.” See Final Act. 9-10; see also Appeal Br. 33
(Claims App.). Nonetheless, the Examiner finds that Davis discloses
monitoring solar panel 105 for output voltage and/or current by controller
150 and wirelessly transmitting/communicating a fault signal to a remote
base station 160 for alerting the need for maintenance of the solar panel
and/or battery. Final Act. 9 (citing Davis 149). The Examiner concludes
that it would have been obvious for a person of ordinary skill in the art to
provide a “solar panel and battery system with monitoring capability to
monitor the voltage and/or current supplied from the solar panel,” as taught
by Davis, to the parking meters of Manion “for the purpose of enabling an
alert of the need for maintenance of said first or second or plural parking
meters.” Id. at 10.
Appellants first argue that Davis “does not remedy the deficiencies of
Manion and Hunter.” Appeal Br. 24 (underlining omitted). We are not
persuaded by Appellants’ argument because, for the reasons set forth in the
rejection of independent claim 1, from which claim 22 depends, we did not
find any deficiencies with the rejection based on the combined teachings of
Manion and Hunter.5
5 However, we note that Davis discloses transmission of data related to
the operation of a solar panel, i.e., output voltage and/or current. Davis 149.
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Appellants further argue that none of Manion, Hunter, or Davis
provide a “teaching regarding why solar panel monitoring would be
advantageous or feasible in the parking meter context.” Id. at 25.
According to Appellants, Davis “provides an optional teaching regarding
solar panel monitoring in the air transportation field,” Hunter discloses
transmitting only battery status notification, and Manion discloses that
limiting power usage is advantageous. Id (citing Davis |49; Manion, col. 8,
11. 39-48; Hunter 114). Thus, Appellants conclude that the Examiner’s
determination of obviousness is based on impermissible hindsight. Id.
Appellants’ argument appears to be holding the Examiner to a
teaching, suggestion, or motivation (“TSM”) standard according to which
there must be some suggestion or motivation, either in the references
themselves or in the knowledge generally available to one of ordinary skill
in the art, to modify the reference or to combine reference teachings. KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting
the rigid [application and requirement of a TSM to combine known elements
in order to show obviousness]”). The proper inquiry is whether the
Examiner has articulated adequate reasoning based on a rational
underpinning explaining why a person of ordinary skill in the art would
combine the teachings of Manion, Hunter, and Davis. See KSR, 550 U.S. at
418 (stating that “rejections 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” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). In
this case, given that Manion specifically discloses that parking meter 20
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transmits self-diagnosis data to host computer 23 (see Manion, col. 9,11. 7—
9), the Examiner’s reasoning, to “alert of the need for maintenance of said
first or second or plural parking meters” in the parking system of Manion, as
modified by Hunter and Davis, has rational underpinnings. Therefore, the
Examiner’s determination of obviousness is not based on impermissible
hindsight.
We thus, sustain the rejection under 35 U.S.C. § 103(a) of claim 22 as
unpatentable over Manion, Hunter, and Davis. As claim 22 depends from
independent claim 1, we denominate our affirmance as a NEW GROUND
OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because our analysis
relies upon facts and reasoning that the Examiner did not use.
Rejection VII
Appellants rely on the arguments discussed supra in the rejection of
claim 12, which we have found unpersuasive. Appeal Br. 25—26.
With respect to Appellants’ arguments regarding the level of ordinary
skill in the art (see Appeal Br. 26), we consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need for
testimony is not shown’”).
In conclusion, we likewise sustain the rejection under 35 U.S.C.
§ 103(a) of claim 23 as unpatentable over Manion, Marchasin, and Fancher.
As claim 23 depends from independent claim 12, we denominate our
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Appeal 2014-008262
Application 13/468,859
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b), because our analysis relies upon facts and reasoning that the
Examiner did not use.
SUMMARY
The Examiner’s decision to reject claims 1—16 and 18—23 is affirmed
as to claims 1—16, 18—20, 22, and 23 and reversed as to claim 21.
For the reasons discussed above, we denominate our affirmance of the
rejections of claims 1—16, 18—20, 22, and 23 as new grounds of rejection
pursuant to 37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
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Appeal 2014-008262
Application 13/468,859
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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