Wayne Fueling Systems LLCDownload PDFPatent Trials and Appeals BoardMar 25, 20222021001348 (P.T.A.B. Mar. 25, 2022) Copy Citation 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. 15/801,947 11/02/2017 Anders Bergqvist 47376-242F01US (201710) 3213 123896 7590 03/25/2022 Mintz Levin/Wayne Fueling Systems LLC One Financial Center Boston, MA 02111 EXAMINER TABOR, AMARE F ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): ipdocketingbos@mintz.com ipfileroombos@mintz.com mintzdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDERS BERGQVIST Appeal 2021-001348 Application 15/801,947 Technology Center 2400 Before JASON V. MORGAN, MICHAEL J. STRAUSS, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Wayne Fueling Systems, LLC. Appeal Br. 1. Appeal 2021-001348 Application 15/801,947 2 STATEMENT OF THE CASE Introduction The Application is directed to “controlling access to the maintenance mode” of a fuel dispenser. Spec. ¶ 23. Claims 1-21 are pending; claims 1, 9, and 17 are independent. Appeal Brief, Appendix A. Claim 1 is reproduced below for reference (emphases and formatting added): 1. A system for controlling maintenance of a fuel dispenser, comprising: a fuel dispenser comprising a housing having fuel dispensing components disposed therein and an electronics module disposed at least partially therein, the electronics module including a data processor configured to generate an authorization password based on fuel dispenser data characterizing the fuel dispenser, to receive a remote password, to determine that the remote password matches the authorization password, and to cause the fuel dispenser to enter a maintenance mode; a remote enterprise server in communication with the electronics module, the remote enterprise server being configured to prompt the electronics module for the fuel dispenser data and to receive the fuel dispenser data from the fuel dispenser, and to provide the remote password to the electronics module of the fuel dispenser; and a remote code processor in communication with the remote enterprise server, the remote code processor being configured to receive the fuel dispenser data from the remote enterprise server, to generate the remote password based on the received fuel dispenser data, and to provide the remote password to the remote enterprise server. Appeal Br., Appendix A (Claims App.). Appeal 2021-001348 Application 15/801,947 3 References and Rejections Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Bergqvist (US 9,133,012 B2, issued Sept. 15, 2015) (“Bergqvist ’012”) in view of Palmer (US 8,225,102 B1, July 17, 2012) and Bilinski (US 8,667,296 B1, issued Mar. 4, 2014). Final Act. 3. Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Bergqvist (US 9,139,414 B2, issued Sept. 22, 2015) (“Bergqvist ’414”) in view of Palmer and Bilinski. Final Act. 3. Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of Bergqvist (US 9,580,295 B2, issued Feb. 28, 2017) (“Bergqvist ’295”) in view of Palmer and Bilinski. Final Act. 3. ANALYSIS Appellant argues the Examiner’s double patenting rejection in view of Bergqvist ’414 is in error, because “if Palmer and Bilinski were combined with the claims of [Bergqvist ’414] in the manner suggested in the Office Action, the claimed invention would not result.” Appeal Br. 10. Moreover, Appellant argues the Examiner “fails to provide any rationale as to why a person of ordinary skill in the art would conclude that any of claims 1-21 of the instant application would have been an obvious variation of any of claims 1-19 of [Bergqvist ’414], with or without the alleged teachings of Palmer and Bilinski.” Reply Br. 3. We are persuaded the Examiner errs. The Examiner rejects the claims under the doctrine of obviousness-type non-statutory double patenting, Appeal 2021-001348 Application 15/801,947 4 which requires explaining the differences between the conflicting claims as well as providing reasons to show the differences were merely obvious. Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the inventions defined by the conflicting claims - a claim in the patent compared to a claim in the application; and (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. MPEP § 804. Determining obviousness requires “determin[ing] whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue,” and “[t]o facilitate review, this analysis should be made explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also MPEP § 804 (“A nonstatutory double patenting rejection . . . is analogous to a failure to meet the nonobviousness requirement of 35 U.S.C. 103 except that the patent disclosure principally underlying the double patenting rejection is not considered prior art.”) (internal quotations and brackets omitted). Here, the Examiner finds “the instant application and [Bergqvist ’414] recite similar limitations of authorizing a fuel dispenser with a process of password verification; i.e., allowing a certain function to be performed when a received/verification password match stored/local password.” Ans. 5. The Examiner further finds “[t]he claims of the instant application are obvious over the generating password(s) from data characterization, and either generating or receiving password(s) remotely is not only a design choice, but Appeal 2021-001348 Application 15/801,947 5 also is an obvious and well-known for one having ordinary skill in the art,” in light of Palmer’s teaching of “local[] (CACHE) and remote password (OTP SERVER) generation (FIGS.1-3)” and Bilinski’s teaching of “a remote password generator 120 (FIG. 1) that generate[s] password from media item (Abstract, and 508-510: FIG.5-7).” Ans. 8. We agree with Appellant that the Examiner’s analysis is, at best, “a conclusory assertion.” Reply Br. 5. The Examiner states the claims of the instant application are similar to the claims of Bergqvist ’414, without actually comparing a claim in the patent to a claim in the application.2 See, e.g., Final Act. 3. That is, it is not clear-from the record before us-how the Examiner maps the specific claim limitations to the claims of the cited patent3, and it is not clear how the differences from this mapping would have been obvious in view of the teachings of Palmer and Bilinski. See Reply Br. 4. The Examiner, therefore, does not sufficiently answer the factual inquiries required for determining non-statutory double patenting. See MPEP § 804; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning 2 We note that, although the Examiner provides a comparison table for independent claim 1 of Bergqvist ’414 with respect to Appellant’s claim 1, the table consists of two rows, of which the first row is a header row. See Ans. 6-7. The Examiner presents similar tables with respect to Bergqvist ’012 and Bergqvist ’295. See id. at 5-8. These tables-by grouping all limitations into a single row-do not serve to provide a reasonable means of comparing the claims (other than, perhaps, comparing claim lengths). 3 For example, the Examiner has not identified the limitation of Bergqvist ’414 that relates to the presently claimed “remote enterprise server,” or otherwise explained that the feature is missing from Bergqvist ’414. See Appeal Br. 7. Appeal 2021-001348 Application 15/801,947 6 with some rational underpinning to support the legal conclusion of obviousness.”). Rather than speculate as to the missing elements of the rejection, we decline to sustain the Examiner’s nonstatutory type double patenting rejection based on Bergqvist ’414. CONCLUSION We find the nonstatutory double patenting rejection, in view of Bergqvist ’414, to be in error. We find the similar rejections, in view of Bergqvist ’012 and Bergqvist ’295, to be in error for the same reasons discussed above. See Ans. 4-8; Appeal Br. 5. We, therefore, reverse the Examiner’s rejections of the claims. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-21 Nonstatutory Double Patenting Bergqvist ’012, Palmer, Bilinski 1-21 1-21 Nonstatutory Double Patenting Bergqvist ’414, Palmer, Bilinski 1-21 1-21 Nonstatutory Double Patenting Bergqvist ’295, Palmer, Bilinski 1-21 Overall Outcome 1-21 Appeal 2021-001348 Application 15/801,947 7 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. § 1.136(a)(1)(iv). REVERSED Copy with citationCopy as parenthetical citation