Ex Parte Bergstein et al

Patent Trial and Appeal Board

Aug 31, 2016

12753534 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121753,534 04/02/2010 Harvey Bergstein
52835 7590 09/02/2016
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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.
20057.0195USU1 4819
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARVEY BERGSTEIN, THOMAS R. METZGER,
MICHAEL R. PAWLAK, and WARREN H. KLINCK, JR.
Appeal2014-007500
Application 12/753,534
Technology Center 3600
Before JAMES A. WORTH, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-8 and 19-21 3 under 35 U.S.C. § 103(a) as unpatentable over
Takahashi4 and Kemwein. 5 We have jurisdiction under 35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("Br.," filed Oct. 15,
2013), and Specification ("Spec.," filed Apr. 2, 2010), the Examiner's
Answer ("Ans.," mailed Apr. 24, 2014), and the Final Office Action ("Final
Act.," mailed May 15, 2013).
2 Appellants identify "Lockheed Martin Corporation" as the real party in
interest (Br. 4).
3 Claims 9-15, 17, and 18 are withdrawn (Br. 15-17, Claims Appendix).
4 Takahashi et al., US 8,272,482 B2, issued Sept. 25, 2012.
5 Kemwein et al., US 8,000,873 B2, issued Aug. 16, 2011.
Appeal2014-007500
Application 12/753,534
STATEMENT OF THE DECISION
We AFFIRM.
INVENTION
The claimed invention is directed to a system for vital brake interface
with real-time integrity monitoring (Spec. 1, Title). Claim 1, the sole
independent claim on appeal, is representative of the subject matter on
appeal (Br. 14, Claims Appendix).
1. A train control system comprising:
a brake interface unit that is in electrical communication
with a train control processor and a braking system, wherein the
brake interface unit comprises circuitry that:
(a) is operable to detect failure in the train control
processor;
(b) is self-diagnostic, including being operable to detect
failure in the brake interface unit;
( c) causes the braking system to engage when failure is
detected in the train control processor and not detected in the
brake interface unit, and
( d) causes the braking system to engage \vhen failure is
detected in the brake interface unit and not detected in the train
control processor.
ANALYSIS
Independent claim 1 is directed to a train control system including a
brake interface unit, a train control processor, and a braking system, wherein
the brake interface unit comprises circuitry (see supra). The "circuitry" of
claim 1 is defined in terms of function, namely, (a) operable to detect failure
in the train control processor and (b) in the brake interface unit (self-
diagnostic ), ( c) causing the braking system to engage when failure is
detected in the train control processor and not detected in the brake interface
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Application 12/753,534
unit, and (d) causing the braking system to engage when failure is detected
in the brake interface unit and not detected in the train control processor (id).
Claim construction is an issue of law that we review de nova. Cordis
Corp. v. Boston Scientific Corp., 561F.3d1319, 1331 (Fed. Cir. 2009).
During prosecution [the US PTO] applies to the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the specification. In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The broadest reasonable
interpretation of claim 1 when viewed as a whole operates to detect failure in
the train control processor and brake interface unit, and causes the braking
system to engage when failure is detected only in the train control processor
(and not in the brake interface unit), and vice-versa. In other words, the
claimed invention does not require the performance of both functions as
recited in limitations ( c) and ( d), because brake engagement can occur only
when failure is detected in one, while not detected in the other. This
interpretation is not inconsistent with the written description contained in
Appellants' Specification (see, e.g., Spec. i-fi-135, 107).
Accordingly, the broadest reasonable interpretation of claim 1
includes causing the braking system to engage when failure is only either
detected in the train control processor or the brake interface unit. Appellants
allege that the rejection ignores the language: "and not detected in the brake
interface unit" as recited in limitation ( c ), "and not detected in the train
control processor" as recited in limitation ( d) of claim 1 (Br. 11 ). In
response to Appellants' allegation, the Examiner explains why the
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Appeal2014-007500
Application 12/753,534
references teach these claim limitations (see Ans. 2). As such, we disagree
with Appellants that the Examiner simply ignores these limitations.
Moreover, although it is permissible, as Appellants do in claim 1, to
recite features of an apparatus using functional language, but such language
may not be relied on for patentability if the prior art discloses or suggests
structure capable of performing the recited function. See In re Schreiber,
128 F.3d 1473, 1478-1479 (Fed. Cir. 1997) (citing In re Swinehart, 439
F.2d 210, 212-213 (CCPA 1971)). We note that the broadest reasonable
interpretation of the system (i.e., machine) of claim 1 requires circuitry with
the capability to perform the recited (a}-(d) functions. When the prior art
structure possesses all the claimed characteristics including the capability of
performing the claimed functions, the burden shifts to the Appellants to
show that, in fact, the claimed function structurally distinguishes the claimed
apparatus from the prior art apparatus. In re Ludtke, 441 F .2d 660, 664
(CCPA 1971).
Here, Appellants contend that "Takahashi does not describe, teach or
suggest a train control system, as recited in claim 1" because "Takahashi
describes an elevator apparatus for braking control of an elevator car" (Br.
11 ). Appellants acknowledge that Takahashi discloses a braking force
control processing means, control processor, and failure detection circuitry,
but argue that Takahashi does not describe, teach or suggest the functional
limitations recited in claim 1 (Br. 11-12). Thus, Appellants have not offered
persuasive evidence or technical reasoning that Takahashi or Kemwein are
not capable of performing the claimed functions, and have not shown that
the claimed circuitry structurally distinguishes from the prior art, such that
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Appeal2014-007500
Application 12/753,534
the claimed function structurally distinguishes the claimed system from the
cited prior art systems.
We are also not persuaded by Appellants' argument that "Takahashi
does not describe, teach or suggest circuitry that causes the braking system
to engage when failure is detected in the 'brake interface unit' 53 and not
detected in the 'train control processor' 60, as recited in claim 1" (Br. 12).
Appellants' argument is unpersuasive because Appellants are attacking
Takahashi individually; the rejection is based on the combined teachings of
Takahashi and Kemwein, not on any one of them alone. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Nonobviousness cannot be
established by attacking the references individually when the rejection is
based on the teachings of a combination of references).
For the foregoing reasons, we sustain the rejection of independent
claim 1. With respect to dependent claims 2-8 and 19-21, Appellants rely
on arguments presented for independent claim 1 (see Br. 13). As such, we
sustain the rejection of claims 2-8 and 19-21 for the same reasons.
DECISION
The Examiner's rejection is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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