Ex Parte Pillar

Patent Trial and Appeal Board

Nov 27, 2012

10419649 (P.T.A.B. Nov. 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.
10/419,649 04/21/2003 Duane R. Pillar 061300-0414 4159
26371 7590 11/28/2012
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
11/28/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DUANE R. PILLAR
____________________

Appeal 2010-010660
Application 10/419,649
Technology Center 3600
____________________

Before: STEVEN D.A. McCARTHY, JOHN W. MORRISON, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Duane R. Pillar (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b).

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The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An equipment service vehicle comprising:
(A) a network communication link;
(B) a plurality of vehicle subsystems;
(C) a sensor, the sensor being configured to
obtain health and operation information for a
vehicle device;
(D) an on-board diagnostic system including
a test control module and an operator interface, the
test control module and the operator interface being
mounted on-board the vehicle, the on-board
operator interface displaying a plurality of test
options to an operator and receiving a selection of a
test from the operator, the test control module being
connected to at least some of the plurality of vehicle
subsystems by way of the network communication
link, the on-board test control module transmitting a
request for information pertaining to the health and
operation of the vehicle device on the network
communication link; and
(E) a test interface module, the test interface
module being connected to the sensor, the test
interface module being connected to the on-board
test control module by way of the network
communication link, the test interface module
receiving the request for information pertaining to
the health and operation of the vehicle device, the
test interface module acquiring the requested
information from the sensor and transmitting the
requested information to the test control module;
and
wherein the test control module receives
health and operation information from one of the
respective vehicle subsystems or the test interface
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module or both and wherein the operator interface
displays results of the test to the operator;
wherein the selection is a first selection and
the test is a first test, wherein the operator interface
receives a plurality of additional selections of a
plurality of additional tests, and wherein the
operator interface displays results of the plurality of
additional tests to the operator.

The Rejections
Claims 1-5, 7-9, 12-26, and 29-42 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Kempen (US 6,421,593 B1, issued Jul.
16, 2002) and Sonehara (US 5,555,171, issued Sep. 10, 1996). Claim 6, 10,
11, 27, and 28 stand rejected under § 103(a) as being unpatentable over
Kempen, Sonehara, and Ng (US 5,445,347, issued Aug. 29, 1995).

ANALYSIS
Appellant argues claims 1-5, 7-9, 12-26, and 29-42 as a group.1 App.
Br. 13-14. We select claim 1 as representative, and we treat claims 2-5, 7-9,
12-26, and 29-42 as standing or falling with representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii). Although claims 6, 10, 11, 27, and 28 are
not subject to the same ground of rejection, Appellant concedes that the
latter claims may be “grouped” with claim 1. App. Br. 14.
The Examiner finds that Kempen discloses a vehicle with all of the
hardware recited in claim 1, and that Kempen’s hardware meets all of the
limitations of claim 1 except that Kempen does not explicitly disclose the
claim features “about displaying the test options and allowing the operator to

1 Although Appellant’s claim-grouping statements on pages 13 and 14 of the
Appeal Brief do not explicitly mention claims 13, 14, 30, and 31, Appellant
does not argue claims 13, 14, 30, and 31 separate from the other claims.
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select a test and additional tests.” Ans. 4. The Examiner further finds that
Kempen generally discloses displaying data on an operator interface, and
that Sonehara discloses configuring a system to perform those test
procedures that the claim recites but Kempen does not explicitly disclose,
including “displaying a plurality of test options to an operator and receiving
a selection of a test from an operator.” Id. The Examiner determines that a
person of ordinary skill in the art would have had reason to configure
Kempen’s onboard system with software configured to execute the test
procedures disclosed by Sonehara in order to facilitate diagnosing system
problems on the vehicle, particularly “for an advantage of immediately
recognizing . . . a vehicle problem.” Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to combine the disclosures of the references, thereby
arriving at Appellant’s claimed invention. Id.
Appellant disputes the Examiner’s rationale for combining the
references, without disputing the Examiner’s findings that the references
collectively disclose all of the claimed limitations. App. Br. 11-13; Reply
Br. 2-4. Appellant argues that the Examiner’s rationale to combine lacks
supporting evidence in the cited references, lacks rational underpinning, and
stems from improper hindsight based on Appellant’s disclosure. Id.
The evidence cited by the Examiner includes column 10, lines 41-44
and 61-65 of Kempen, which discloses that its onboard displays can
advantageously provide information for troubleshooting problems of the
vehicle. Ans. 4. In combination with this, the Examiner cites Sonehara as
demonstrating that it was known in the art to perform troubleshooting or
diagnostics by the claimed approach that includes displaying a plurality of
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test options to an operator and receiving a selection of a test from an
operator. See Id. Consistent with the Examiner’s finding, these disclosures
would have given a person of ordinary skill in the art reason to incorporate
Sonehara’s diagnostic provisions into Kempen’s onboard system to further
Kempen’s disclosed advantageous use of its onboard displays for
troubleshooting. Thus, contrary to Appellant’s argument, the Examiner
articulates a logical reason stemming from the disclosures of the cited
references themselves that a person of ordinary skill in the art would have
had for combining their teachings.
Appellant further disputes the Examiner’s rationale for combining the
references by arguing that the Examiner has not shown that a person of
ordinary skill in the art would have had reason to mount Sonehara’s
hardware onboard Kempen’s vehicle. App. Br. 12; Reply Br. 4. This
argument is moot because of the Examiner’s finding that Kempen discloses
the onboard hardware recited in the claim. Ans 3-4.
Appellant also takes issue with the Examiner’s finding that the known
purposes of onboard displays like Kempen’s include “trying to distribute as
much related information as possible to users.” Reply Br. 3; see also Ans. 7.
Appellant disputes the accuracy of this finding and argues that such a
purpose would not lead a person of ordinary skill in the art to Appellant’s
claimed invention because “[i]n claim 1, . . . results of the selected tests are
displayed to the operator.” Reply Br. 3. Aside from seemingly
misinterpreting the Examiner’s finding, this argument fails to establish error
because it does not refute 1) the Examiner’s finding that Sonehara discloses
the claim limitations in question, or 2) the above-discussed valid reasons
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articulated by the Examiner that a person of ordinary skill in the art would
have had for combining the references.
For the foregoing reasons, Appellant has not established error in the
rejections of claims 1-42.

DECISION
We affirm the Examiner’s decision regarding claims 1-42.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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