11339801 (B.P.A.I. Jun. 27, 2012)

Ex Parte Kane et al

Board of Patent Appeals and InterferencesJun 27, 2012

11339801 (B.P.A.I. Jun. 27, 2012)

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. 11/339,801 01/26/2006 Mark Edward Kane 3805-036 US 5624 24510 7590 06/27/2012 DLA PIPER LLP (US) ATTN: PATENT GROUP P.O. Box 2758 Reston, VA 20195 EXAMINER KONG, SZE-HON ART UNIT PAPER NUMBER 3661 MAIL DATE DELIVERY MODE 06/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MARK EDWARD KANE and JOHN D. MIX ____________________ Appeal 2010-003785 Application 11/339,801 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, EDWARD A. BROWN, and WILLIAM V. SAINDON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-003785 Application 11/339,801 2 STATEMENT OF THE CASE Mark Edward Kane and John D. Mix (Appellants) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated June 11, 2012, of our decision mailed April 12, 2012 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s decision rejecting claims 1-9 and 13- 19. Appellants request rehearing of only that portion of our Decision sustaining the rejection of claims 3, 4, and 14 under 35 U.S.C. § 103(a) as unpatentable over Curtis (US 6,081,769, iss. Jun. 27, 2000), Mays (US 6,668,216 B2, iss. Dec. 23, 2003), Bezos (US 5,267,473, iss. Dec. 7, 1993), and Appellants’ Admitted Prior Art (AAPA). OPINION Appellants assert that the Board’s reliance on a test mode of Bezos is improper because (1) the test mode switch is not controlled by the processor but, rather, is a manually controlled switch requiring human intervention to provide power to the EOT unit (Request 2, 3) and (2) depressing the test switch of Bezos powers up the EOT unit only for a predetermined short period of time and, thus, the EOT unit will report its position, if at all, only for at most that period of time, rather than “during the condition” as recited in claims 3 and 4, or “during periods in which the condition is detected,” as recited in claim 14 (Request 3-4). Appellants’ first argument is not convincing, because claims 3, 4, and 14 do not exclude human intervention to close a switch to power the EOT components to permit the processor to perform the obtaining and sending steps during the condition. Appellants’ second argument also is not convincing, because claims 3, 4, and 14 do not require that the processor be configured to perform the Appeal 2010-003785 Application 11/339,801 3 obtaining and sending steps over the entirety of the duration in which the “condition” is detected or for any minimum duration of time. Appellants’ assertion that the processor might not obtain and send the EOT location information during the test mode period is logically unsound for at least two reasons. First, the EOT position obtaining and sending functions are operations of the EOT components and, thus, logically would be among the operations an operator would check during the test mode period. See Bezos, col. 4, ll. 8-13 (teaching providing a test mode for powering the EOT components and thus allowing an operator to check their operation). It follows that the test mode period would be sufficiently long for an operator to observe the performance of these operations. Second, a test mode interval “on the order of one minute” (Bezos, col. 4, l.14) in fact is quite long as compared with sampling/transmission intervals of the type described by Mays for real-time communications. See Decision 5; Mays, col. 3, ll. 40-48 (describing employing “real-time communications between the train 14 and the outside world,” such as an AMTECH AVI interface, a 2-way radio interface, a GPS system, and/or a cellular telephone interface); see also Bezos, col. 3, ll. 38-39 (alluding to a predetermined interval of 120 seconds detecting an upright position as a typical value for triggering/turning switch 50 to its “on” state). As such, Appellants’ suggestion that the steps of obtaining and sending EOT location information might not coincide with a test mode interval, and thus might not be performed during a test mode interval, is not reflective of the state of the art at the time of Appellants’ invention. Appeal 2010-003785 Application 11/339,801 4 For the above reasons, the arguments in Appellants’ Request do not convince us that we erred in affirming the Examiner’s rejection of claims 3, 4, and 14. DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellants’ Request, but is denied with respect to our making any modification to the Decision. 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. § 1.136(a)(1)(iv). DENIED mls