Ex Parte Gilman et al

Patent Trial and Appeal Board

Jul 18, 2016

12985425 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/985,425 01/06/2011
28395 7590 07/20/2016
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Dale Gilman
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.
83165361 4323
EXAMINER
KESSIE, DANIEL
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE GILMAN, PAUL ALDIGHIERI, CRAIG SANDVIG,
LESLIE BODNAR, DAVID L. WATSON,
JEFFREY ALLEN GREENBERG, and ANGELA L. WATSON
Appeal2015-000011
Application 12/985,425
Technology Center 2800
Before ST. JOHN COURTENAY III, KAMRAN JIV ANI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. App. Br. 1.
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Application 12/985,425
THE INVENTION
The claimed invention is directed to data relating to an electric vehicle
that is displayed on an information display system. Abstract, Spec.i-f 4.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An information display system comprising:
an information display including an efficiency gauge
having an efficiency indicator and a safe operating region; and
a controller in communication with the information
display and configured to:
calculate a current efficiency value,
calculate a budget threshold based upon a current
battery state and a target distance, and
transmit signals causing the information display to
adjust the efficiency indicator based upon the current
efficiency value and adjust the safe operating region based
upon the budget threshold.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Barske us 4,590,568 May 20, 1986
Todoriki US 2003/0006914 Al Jan.9,2003
Lawyer US 2010/0057281 Al Mar. 4, 2010
Skaff US 2010/0265050 Al Oct. 21, 2010
REJECTIONS
Claims 1, 2, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lawyer in view of Barske. Final Act. 5---6.
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Claims 3, 4, 7-9, 12-14, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lawyer in view of Barske and Todoriki.
Final Act. 3-5 and 6-8.
Claims 5, 6, 15, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lawyer in view of Barske, Todoriki,
and Skaff. Final Act. 5, 8-9.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellants. We are not
persuaded by Appellants' arguments regarding claims 1-20.
Claims 1 and 22
Appellants argue the prior art does not teach or suggest a gauge
displaying a "safe operating region," as recited in claim 1. App. Br. 3-7;
Reply Br. 1-2. Appellants argue Barske discloses calculating a target
distance and the quantity of fuel remaining and using that information to
actively control the speed of the car. App. Br. 3--4. According to
Appellants, "[a ]ny comparison between the permissible fuel consumption
rate and the actual fuel consumption rate occurs in the background by the
fuel consumption control 20 on behalf of a user." App. Br. 4 (emphasis
omitted).
2 We note that Appellants' grouping of the claims, which combines separate
grounds of rejection, fails to comply with the requirements of 37 C.F.R.
§ 41.37(c)(iv).
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The Examiner finds Lawyer Cil64) teaches an information display that,
inter alia, calculates a current (fuel) efficiency value and transmits the
information to the display. Final Act. 2. The Examiner further finds Barske
teaches calculating a budget threshold. Final Act. 3. Such a threshold, when
displayed, would "create the recited 'safe operating region' (on one side of
the threshold marker), and the safe operating region would be adjusted based
on the budget threshold (for instance, as the amount of remaining fuel or
distance to be traveled changes)." Id. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to use the Lawyer
information display to display the budget efficiency information taught by
Barske in order "to allow the user to easily compare the current efficiency
with the necessary efficiency to reach the target." Id.; see also Ans. 3.
We are not persuaded by Appellants' arguments that the Examiner
erred. Barske teaches that "[t]he remaining distance Sn the permissible rate
of 40 consumption qs, and the permissible speed Vs at any given moment
may be indicated in the indicator 30." Barske 3:40-42. Although Barske
does not teach including this information as part of an efficiency gauge, we
agree with the Examiner that it would have been obvious to a person of
ordinary skill in the art to combine the safe operating region taught by
Barske with the Lawyer display.
The Supreme Court held in KSR International Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007), "if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." 550 U.S. at 417; see
also id. at 416 ("The combination of familiar elements according to known
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methods is likely to be obvious when it does no more than yield predictable
results."); id. at 417 ("If a person of ordinary skill in the art can implement a
predictable variation, § 103 likely bars its patentability. ").
This reasoning is applicable here. We find the Examiner's proffered
combination of familiar elements, as cited and described in Barske and
Lawyer (Final Act. 2-3), would have yielded predictable results. Moreover,
we are not persuaded the evidence shows that display of the safe operating
region information calculated in Barske (col. 3, 11. 24--51) in an efficiency
display gauge, as taught by Lawyer (i-f64), would have been "uniquely
challenging or difficult for one of ordinary skill in the art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Accordingly, we do not consider Appellants'
arguments sufficient to demonstrate the Examiner erred.
Appellants also argue the Examiner erred in using impermissible
hindsight. App. Br. 4--5; Reply Br. 1-2. According to Appellants, "[t]he
Examiner's reasoning is absent from the cited art and is only present in
Appellants' specification." App. Br. 5.
Appellants rely on an incorrect statement of law. The Supreme Court
rejected the teaching, suggestion, or motivation (TSM) test as "a rigid rule
limiting the obviousness inquiry" in favor of a more expansive and flexible
approach to the determination of obviousness. KSR, 550 U.S. at 402, 415. 3
In KSR, the Court guides: "the analysis need not seek out precise teachings
3 The Supreme Court describes the TSM test employed by the Federal
Circuit as a "test, under which a patent claim is only proved obvious if the
prior art, the problem's nature, or the knowledge of a person having ordinary
skill in the art reveals some motivation or suggestion to combine the prior art
teachings." KSR, 550 U.S at 399. (Emphasis added).
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directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. Thus, to the extent
Appellants' argument is premised on "a rigid rule limiting the obviousness
inquiry" to the TSM test, it is not persuasive of Examiner error. KSR, 550
U.S. at 402.
The Examiner denies using hindsight. Ans. 3. Instead, the Examiner
finds "the use of gauges and thresholds has long been well-known in the art,
and combining both the current efficiency and the efficiency threshold on a
single display would have been natural and obvious to one of ordinary skill
in the art based on the teachings of the prior art." Id.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418. Although Appellants contend
that the Examiner has engaged in hindsight reconstruction, Appellants do not
persuasively address the reasoning provided by the Examiner (Final Act. 2-
3; Ans. 3).
Appellants have not asserted that the proposed modification would
have been beyond the capabilities of a person of ordinary skill in the art.
Absent such an assertion, we "take account of the inferences and creative
steps that a person of ordinary skill in the art would employ," and find a
person of ordinary skill in the art would overcome any difficulties within
their level of skill. KSR., 550 U.S. at 418; see also id. at 421 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
Nor have Appellants provided any objective evidence of secondary
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considerations, which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Accordingly, we are
not persuaded the Examiner's reasoning setting forth a prima facie case of
obviousness of claim 1 was based on impermissible hindsight.
Finally, Appellants argue Barske teaches away from the claimed
invention. App. Br. 6-7. According to Appellants:
Providing a control device for automatically operating a vehicle
to cover a predetermined distance with an available supply of
fuel, as disclosed in Barske (e.g., col. 1, lines 42-68), does not
teach a "desire to be able to allow the user to easily compare the
current efficiency with the necessary efficiency to reach the
target," as the Examiner claims. Rather than displaying a relation
between actual fuel consumption, qi, and permissible fuel
consumption, qs, graphically or otherwise, the two values are
compared in the background by consumption control 20 and a
vehicle control parameter, such as vehicle speed, is automatically
adjusted so that drivers do not have to take corrective action on
their O\Vn. (Barske: col. 1, lines 42-59; col. 3, lines 24-39.)
App. Br. 6.
We find Appellants have not established that the prior art teaches
away from the claimed invention because Appellants have not demonstrated
that "a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). "'A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant."' Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332
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(Fed. Cir. 2008) (quoting Optivus Tech., Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 989 (Fed. Cir. 2006)).
The passage cited by Appellants (App. Br. 6), which discusses a
preferred embodiment, "does not teach away ... [as] it merely expresses a
general preference for an alternative invention but does not 'criticize,
discredit, or otherwise discourage' investigation into the invention claimed."
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009). Appellants do not identify any passage in Barske that
explicitly discredits or discourages displaying a safe operating region. The
stated preference for using the safe operating region to automatically control
the speed (Barske 1 :25--40) or displaying other information (Barske 3 :40-
42) is insufficient to teach away from the claimed invention. See id.; In re
Fulton, 391 F.3dl 195, 1201 (Fed. Cir. 2004).
Accordingly, we sustain the Examiner's rejection of claim 1, along
with the rejections of claim 2, which is not argued separately.
Claims 19 and 20
Appellants argue the Examiner erred in rejecting claim 19 for the
same reasons discussed above for claim 1. App. Br. 3-7. As discussed
above, we are not persuaded by Appellants' arguments that the Examiner
erred. Any other arguments Appellants could have raised have been waived.
37 C.F.R. § 41.37(c)(iv).
Accordingly, we sustain the Examiner's rejection of claim 19, along
with the rejection of dependent claim 20, which is not separately argued.
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Claim 10 and 11
In addition to the arguments discussed above for claim 1, Appellants
also argue that the prior art does not teach or suggest "an energy budget
element having an energy budget threshold defining a safe operating
region." App. Br. 7. Specifically, Appellants argue that because the prior
art references do not teach or suggest "a display gauge having either an
energy budget threshold or a safe operating region, as set forth above [when
discussing claim 1 ], it follows that neither Lawyer nor Barske teach or
suggest 'an energy budget element,' as recited in claim 10." Br. 7.
As discussed above for claim 1, we are not persuaded that the
Examiner erred in finding the prior art reaches displaying a safe operating
region. Because we find the prior art teaches displaying a safe operating
region, we agree with the Examiner's finding (Final Act. 5-6; Ans. 4) that
the prior art teaches "an energy budget element having an energy budget
threshold defining a safe operating region," as recited in claim 10.
Accordingly, we sustain the Examiner's rejection of claim 10, along
with the rejection of dependent claim 11, which is not separately argued.
Claims 3 and 14
Appellants argue the Examiner erred in finding T odoriki teaches a
budget threshold "calculated by dividing the current amount of energy
remaining in the main battery by the target distance," as recited in claim 3.
App. Br. 8. According to Appellants:
T odoriki is silent as to calculating an energy budget or a "budget
threshold," or any value for that matter, by dividing the current
amount of energy remaining in the main battery (i.e., charge
quantity) by the target distance (i.e., route distance). Rather,
Todoriki merely states that a travelable distance (i.e., vehicle
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range) can be estimated from the residual quantity of energy in
the vehicle. (Todoriki: i-fi-1 [0005], [0017].) The travelable
distance (or vehicle range) is not akin to a target distance. This
is an important distinction for purposes of calculating an energy
budget threshold.
App. Br. 8 (emphasis omitted). Without discussing the references,
Appellants state Barske and Lawyer do not cure the alleged deficiencies of
Todoriki.
The Examiner finds "Todoriki teaches the current battery state
corresponds to a current amount of energy remaining in a main battery."
Final Act. 3 (citing Todoriki i-fi-15, 86). Accordingly, "Todoriki is merely
relied upon to establish that it was known in the art to detect the current
amount of energy remaining in the main battery of an electric vehicle as the
current battery state, which can be used in calculating the budget (efficiency)
threshold." Ans. 4--5. In addition, the Examiner finds Barske teaches "[t]he
division of current amount of energy by target distance." Ans. 5.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Although the Examiner relies on Barske to support the determination
that claim 3 is obvious, Appellants merely state Barske does not cure the
deficiencies of Todoriki. That is insufficient to raise an argument that that
Examiner erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
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(Rule 41.37 requires "more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."); see also 37 C.F.R.
§ 41.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.").
We are not persuaded the Examiner erred based on Appellants' argument
because it addresses the references separately and does not address the
reasoning relied on by the Examiner (Ans. 4--5) and, thus, does not
adequately address the rejection on appeal.
Accordingly, we sustain the Examiner's rejection of claim 3, along
with the rejection of claim 14, which is argued on the same grounds.
Claims 8 and 18
Claim 8 recites that "the safe operating region is associated with a
cup-shaped budget element having a base proximate the lower limit and a lip
corresponding to the budget threshold." App. Br., Claims App'x 2.
Appellants argue Lawyer does not teach the shape recited in claim 8;
instead, Lawyer "merely discloses a typical bar graph 560 to show current
fuel economy graphically using visual indicator 562 to represent current fuel
economy." App. Br. 9.
The Examiner finds Lawyer "teaches the information display system
of claim 7, wherein the safe operating region is associated with a cup-shaped
budget element having a base proximate the lower limit and a lip
corresponding to the budget threshold." Final Act. 4 (citing Lawyer Fig. 5A,
item 560).
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Our reviewing court guides that the patentability of an apparatus claim
"depends on the claimed structure, not on the use or purpose of that
structure." Catalina Marketing Int 'l., Inc. v. Coo/savings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002 ). "It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
Because Appellants have not contested any of the specific structural
differences between the information display of claim 8, and claim 1 from
which it depends, and the corresponding information display found in the
cited references, the only purported differences between claim 8 and the
corresponding structure found in the prior art turns on the shape of the
budget element, which is merely information presented on the display
intended for human perception. 4 Our reviewing court has held that
nonfunctional 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); 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
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
4 The Manual of Patent Examining Procedure (MPEP) guides that
"[ e ]vidence against a functional relationship" may exist, for example,
"where the claim as a whole is directed towards conveying a message or
meaning to a human reader independent of the supporting product." MPEP
§ 2111.05 (I.)(B.) (9th Revision 07.2015, revised Nov. 2015).
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whether 'there exists any new and unobvious functional relationship
between the printed matter and the substrate."') (citations omitted); see also
Ex parte Nehls, 88 USPQ2d 1883, 1889 (BP AI 2008) (precedential) ("[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.").
Although we will not disregard any claim limitations and will assess the
claimed invention as a whole, we will follow the Federal Circuit's guidance
from the Gulack decision and will "not give patentable weight to printed
matter absent a new and unobvious functional relationship between the
printed matter and the substrate." In re Lowry, 32 F.3d 1579, 1582 (Fed.
Cir. 1994) (discussing Gulack).
"The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter." In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is "claimed for what it communicates." Id., at 850. Because the cup-
shaped budget element of claim 8 is being claimed for what it communicates
about the safe operating region, we find the shape to be printed material.
If a claim in a patent application claims printed material, "one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is 'no' is the printed
matter owed no patentable weight." Distefano, 808 F.3d at 851. In this
case, claim 8 requires a portion of the information display to have a
particular shape. Regardless of the shape, however, the function of the
information display is not changed.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
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new. See, e.g., Ngai, 367 F.3d 1336. Thus, adding instructions to a kit that
describe a method of using it does not make the kit patentable over the same
kit with a different set of instructions. Id. Choosing the shape of the
information shown on the display is no different; the operation of the display
will function the same whatever the shape of a particular item.
Concluding otherwise could result not only in Appellants' identified
shape distinguishing over the prior art, but equally could distinguish every
other unique shape of a portion of an information display. To give effect to
Appellants' argument, we would need to ignore our review court's concerns
with repeated patenting. See King Pharm. Inc. v. Eon Labs., Inc., 616 F3d
1267, 1279 (Fed. Cir. 2010) ("The rationale behind this line of cases is
preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations."); cf Ngai, 367
F.3d at 1339 ("If we were to adopt Ngai's position, anyone could continue
patenting a product indefinitely provided that they add a new instruction
sheet to the product."). We decline to do so.
Even if were to give patentable weight to the shape of the display, we
are still not persuaded by Appellants' argument that the Examiner erred. "If
a person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability." KSR, 550 U.S. at 417. Appellants have not shown
that choosing a specific shape of the item "result[ s] in a difference in
function or give[s] unexpected results." In re Rice, 341 F.2d 309, 314
(CCPA 1965). Accordingly, claim 8 does no more than claim an obvious,
routine design choice.
Accordingly, we sustain the Examiner's rejection of claim 8, along
with the rejection of claim 18, which is argued on the same grounds.
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Claim 13
Claim 13 recites the additional feature "wherein the average energy
consumption rate is based on the current charge cycle." App. Br., Claims
App 'x 3. Appellants argue the additional limitation of claim 13 is not taught
by Lawyer and there is no support for the Examiner's finding that Lawyer
teaches that the average consumption rate is calculated every 15 minutes and
the average energy consumption gauge reset after every charge. App. Br. 9-
10. Appellants further argue that the choice of resetting the average energy
consumption after every energy charge is not inherent as it could be based
on a lifetime, key cycle, current trip, or multiple charge cycles. App. Br. 10.
We are not persuaded by Appellants' argument that the Examiner
erred in concluding that claim 13 would have been obvious to a person
having ordinary skill in the art. "If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability." KSR, 550 U.S. at
417. Appellants have not shown that choosing time period for determining
the average energy consumption "result[ s] in a difference in function or
give[s] unexpected results." Rice, 341 F.2d at 314. Accordingly, claim 13
does not more than claim an obvious, routine design choice.
Additionally, even if it claim 13 was not a routine design choice, we
would not give the limitation patentable weight. As discussed in detail with
regard to claim 8, printed matter is not given patentable weight "absent a
new and unobvious functional relationship between the printed matter and
the substrate." In re Lowry, 32 F.3d at 1582.
Claim 13 is directed to the calculation of data that is displayed on a
gauge. It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
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new. See, e.g., Ngai, 367 F.3d 1336. Thus, "the nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process." Nehls, 88 USPQ2d at 1889.
Because Appellants' arguments focus on the information that is displayed-
such as how the information is manipulated-as opposed to the function of
the gauge, the arguments do not persuade us that the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claim 13.
Claim 5, 6 15, and 17
Appellants argue the cited prior art does not teach or suggest "wherein
the efficiency gauge further comprises an accessory region corresponding to
a component of energy consumption attributed to accessory usage," as
recited in claim 5. App. Br. 10-11. Specifically, Appellants argue Todoriki
"merely teaches that the vehicle's travelable distance may be calculated by
multiplying the energy ratio and the residual battery energy." App. Br. 11.
However, Todoriki does not teach "displaying an efficiency gauge with an
accessory region corresponding to the component of energy consumption
(conveyed by the efficiency gauge) attributed to the accessory usage." Id.
Appellants also state Skaff "merely discloses an independent
accessory load gauge 84 for conveying the accessory load relatively" and "a
separate overall efficiency gauge 76." App. Br. 11. However, Appellants
argue Skaff does not teach the claimed efficiency gauge and not does
suggest "displaying an efficiency gauge including 'an accessory region
corresponding to a component of energy consumption attributed to energy
usage."' Id. Instead, Appellants argue Skaff teaches away from the claimed
invention. Id.
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The Examiner finds Lawyer teaches an information display with an
efficiency gauge, Todoriki teaches calculating the energy consumption
attributed to accessories, and Skaff teaches having an accessory region of a
display. Final Act. 5; see also Ans. 5. The Examiner further finds that "it
would have been obvious to one of the ordinary skill in the art at the time of
the invention have the gauge depict how much energy is being consumed in
order for the user to minimize the use of accessories to effectively maximize
their travel distance." Final Act. 5. More specifically, the Examiner finds
"that Skaff teaches an accessory region in an analogous dashboard display,
and that it would have been obvious to have the efficiency gauge comprise
such an accessory region corresponding to a component of energy
consumption attributed to accessory usage." Ans. 5.
Appellants argue the references separately and do not address "what
the combined teachings of the references would have suggested to those of
ordinary skill in the art." Keller, 642 F.2d at 425. Therefore, we are not
persuaded by Appellants' argument that the Examiner erred.
Additionally, Skaff teaches both an accessory energy usage gauge and
a separate efficiency gauge. Skaff Fig. 2. Because the combination of the
two gauges into a single gauge is a mere obvious variation consistent with
the principles known in the art that would work as expected and there is no
evidence that the combination would provide unexpected results, that
combination would have been obvious to a person of ordinary skill in the art.
See Rice, 341 F.2d at 314 (Absent "factual evidence of any critical
relationship in position or size, or of any difference in effect or
result ... [ s ]uch [routine] changes in design of the various features are no
more than obvious variations consistent with the principles known in that
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art."); In re Larson, 340 F.2d 965, 968 (CCPA 1965) ("[T]he use of a one
piece construction instead of the structure ... would be merely a matter of
obvious engineering choice.").
Accordingly, we sustain the Examiner's rejection of claim 5, along
with the rejections of claim 15, which is argued on the same grounds, and
claims 6 and 1 7, which are not separately argued.
Claims 4, 7, 9, 12, and 16
Appellants do not separately argue claims 4, 7, 9, 12, and 16. Instead,
Appellants argue the claims are dependent claims and are "allowable for the
same reasons as their respective base claims and further due to the additional
features that they recite." App. Br. 8. As discussed above, we are not
persuaded by Appellants' arguments that the Examiner erred in rejecting
claim 2 (the base claim of claims 4, 7, and 9), claim 11 (the base claim of
claim 12), and claim 15 (the base claim of claim 16).
Moreover, "[a] statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim."
37 C.F.R. § 41.37(c)(l)(vii). Appellants' statement that the additional
features of the claims are grounds for allowance is insufficient to raise an
argument that that Examiner erred. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (Rule 41.3 7 requires "more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
"If an appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection-the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection." Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
18
Appeal 2015-000011
Application 12/985,425
Accordingly, we sustain the Examiner's rejection of claims 4, 7, 9, 12,
and 16.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-20. 5
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
5 In the event of further prosecution, including any review for allowance, we
invite the Examiner's attention to the question of whether the claims are
patent-eligible under 35 U.S.C. § 101. Regarding at least claim 1 (an
information display system) and claim 10 (an energy consumption gauge), a
question arises as to whether the claims are directed to printed matter per se,
and falls outside the scope of 35 U.S.C. § 101. See AstraZeneca LP v.
Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) ("This court has
generally found printed matter to fall outside the scope of § 101. "); In re
Chaifield, 545 F.2d 152, 157 (CCPA 1976) ("Some inventions ... do not
constitute patentable subject matter, e.g., printed matter."). We have
decided the issues before us. We leave further consideration of this § 101
issue to the Examiner.
Although the Board is authorized to enter a new ground of rejection to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See MPEP § 1213.02.
19