Ex Parte Graeve et al

Patent Trial and Appeal Board

Nov 10, 2014

12044207 (P.T.A.B. Nov. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSHUA DEAN GRAEVE,
BRENT ALLEN SMITH, and DARREL JEFFREY ROWAN
____________________

Appeal 2012-006733
Application 12/044,2071
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Deere & Company.
App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants' invention relates to a vehicle having a relocatable monitor,
and methods of installing the monitor. Abstract.
Exemplary Claims
Claims 1 and 6, reproduced below, are representative of the subject
matter on appeal (formatting added):
1. A vehicle including:
a chassis;
a ground engaging mechanism configured to support and
propel the chassis;
an operator station supported by the chassis;
at least one monitor; and
a plurality of installation locations within the operator
station, each installation location including at least one of a
mount and an electrical connector, the mount being configured
to support the at least one monitor and the electrical connector
being configured to provide at least one of power and data to
the at least one monitor, and wherein at least one of the
plurality of installation locations lacks a monitor during original
manufacture of the vehicle.

2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 19, 2011); Reply Brief ("Reply Br.," filed Mar. 19, 2012); Examiner's
Answer ("Ans.," mailed Jan. 17, 2012); Final Office Action ("Final Act.,"
mailed Mar. 25, 2011); and the original Specification ("Spec.," filed
Mar. 7, 2008).
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6. A vehicle including:
a chassis;
a ground engaging mechanism configured to support and
propel the chassis;
an operator station supported by the chassis;
an OEM monitor;
a first installation location within the operator station, the
first installation location including at least one of a mount
configured to support the OEM monitor and an electrical
connector configured to provide at least one of power and data
to the OEM monitor; and
a second installation location within the operator station
including at least one of a mount configured to support the
OEM monitor and an electrical connector configured to provide
at least one of power and data to the OEM monitor, wherein the
second installation location lacks a monitor during original
manufacture of the vehicle.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
DeLine et al.
("DeLine")
US 6,420,975 B1 July 16, 2002
Tsukada et al.
("Tsukada")
US 2005/0151845 A1 July 14, 2005
Andreasen et al.
("Andreasen")
US 2006/0017552 A1 Jan. 26, 2006
Lynch US 2006/0071764 A1 Apr. 6, 2006
Yamada et al.
("Yamada")
US 2007/0164873 A1 July 19, 2007
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Rejections on Appeal
R1. Claims 1, 3, and 5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Tsukada, Andreasen, and
DeLine. Ans. 4–8.
R2. Claims 2, 6–10, 12–17, and 19–23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Tsukada,
Andreasen, DeLine, and Lynch. Ans. 8–17.
R3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tsukada, Andreasen, DeLine, and
Yamada. Ans. 17–18.
R4. Claims 11, 18, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Tsukada, Andreasen, DeLine,
Lynch, and Yamada. Ans. 18–19.
ISSUES
1. Appellants argue (App. Br. 11–15; Reply Br. 2–3) the
Examiner's Rejection R1 of claims 1, 3, and 5 under 35 U.S.C. § 103(a) as
being obvious over the combination of Tsukada, Andreasen, and DeLine
is in error. These contentions present us with the following issues:
Issue 1(a): Did the Examiner err in combining the prior art in the
manner suggested to render claims 1, 3, and 5 obvious
"because the Examiner has provided contradictory
reasons for modifying Tsukada with Andreasen and for
modifying Tsukada and Andreasen with DeLine"?
Issue 1(b): Did the Examiner err in combining Tsukada and
Andreasen because the mount of Andreasen is moveable
and therefore teaches away from providing multiple
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mounts, and therefore multiple monitors, in the operating
cab of Tsukada?
2. Appellants argue (App. Br. 15–22; Reply Br. 3–5) the
Examiner's Rejection R2 of claims 2, 6–10, 12–17, and 19–23 under 35
U.S.C. § 103(a) as being obvious over the combination of Tsukada,
Andreasen, DeLine, and Lynch is in error. These contentions present us
with the following issue:
Issue 2(a): Did the Examiner make the same errors in combining the
prior art of Tsukada, Andreasen, and DeLine for
Rejection R2 of claims 2, 6–10, 12–17, and 19–23 as for
Rejection R1 of claim 1?
Issue 2(b): Did the Examiner err in finding it would have been
"obvious in view of the disclosed warning system of
Lynch that the monitor of Tsukada is an OEM monitor,"
as recited in claim 6?
Issue 2(c): Did the Examiner err by failing "to identify a reference
that discloses installing a second monitor after providing
the vehicle that has a first monitor," as recited by claim
19?
Issue 2(d): Did the Examiner err in rejecting claim 21 because
"[n]one of the cited references disclose[s] the step of
installing a second monitor after the sale and delivery of
the vehicle that has a first monitor?"
3. Appellants argue (App. Br. 15) the Examiner's Rejection R3 of
claim 4 under 35 U.S.C. § 103(a) as being obvious over the combination of
Tsukada, Andreasen, DeLine, and Yamada is in error. These contentions
present us with the following issue:
Issue 3: Did the Examiner err in relying upon Tsukada because
this reference allegedly teaches away from adding a
second monitor to the vehicle as recited in claim 4?
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4. Appellants argue (App. Br. 17) the Examiner's Rejection R4 of
claims 11, 18, and 24 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tsukada, Andreasen, DeLine, Lynch, and Yamada is in
error. These contentions present us with the following issue:
Issue 4: Did the Examiner err in relying upon Tsukada in the
reference combination because Tsukada allegedly teaches
away from both a second monitor and from displaying
maneuvers of a blade on the second monitor, as recited in
dependent claim 11?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments. We have considered all of
Appellants’ arguments and any evidence presented, and we disagree with
Appellants’ arguments. We only consider those arguments actually made by
Appellants in reaching this decision, and we do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that any such arguments are deemed to be waived. 37 C.F.R.
§ 41.37(c)(1)(vii).
We incorporate herein and adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the legal
conclusions of obviousness reached by the Examiner, and offer specific
comments below in support of the Examiner's factual findings and legal
conclusions.
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Issue 1(a)
We adopt the Examiner's findings (Ans. 22–24), particularly the
finding "Tsukada discloses a plurality of potential installation locations,
Andreasen discloses it is known for mounts to be placed at a plurality of
installation locations, and DeLine discloses it is known for a plurality of
installation locations to have mounts." Ans. 24. We also agree with the
Examiner's stated basis for combining Tsukada with Andreasen (Ans. 6), as
well as the stated reasons for combining and modifying Tsukada and
Andreasen with DeLine. Ans. 6–8.
We further note, the presence or absence of a reason "to combine
references in an obviousness determination is a pure question of fact." In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Further, the reason or
motivation to modify the reference may often suggest what the inventor has
done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by Appellants. See, e.g., In re Kahn, 441
F.3d 977, 987 (Fed. Cir. 2006) (motivation question arises in the context of
the general problem confronting the inventor rather than the specific
problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of
ordinary skill in the art need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings."); In re Lintner,
458 F.2d 1013 (CCPA 1972); In re Dillon, 919 F.2d 688, (Fed. Cir. 1990),
cert. denied, 500 U.S. 904 (1991).
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Finally, Appellants have provided no evidence that combining such
teachings was "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), nor have Appellants presented evidence that this
incorporation yielded more than expected results.3
Rather, we find that Appellants' invention is simply a combination of
known teachings that would realize a predictable result. The Supreme Court
has determined that the conclusion of obviousness can be based on the
interrelated teachings of multiple patents, the effects of demands known to
the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would
"be able to fit the teachings of multiple patents together like pieces of a
puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." Id. at 420-21.
Thus, we do not find Appellants' arguments to be persuasive with
respect to Issue 1(a).
Issue 1(b)
We adopt the Examiner's findings (Ans. 25), particularly the finding
Tsukada does not teach away from installing additional monitors in the

3 Appellants have not provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Systems, 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 29, "X.
Evidence Appendix . . . None.").
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vehicle cab because user preference can be determinative whether single or
multiple monitors are used. Id.
Our reviewing court has held:
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. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v.
Adams, 383 U.S. 39, 52 (1966)). However, a reference that "teaches away"
does not per se preclude a prima facie case of obviousness, but rather the
"teaching away" of the reference is a factor to be considered in determining
unobviousness. Id. The Examiner has considered Tsukada's teaching that a
single monitor may provide advantages in terms of less obstruction and
distraction, but sufficiently addressed Appellants' argument at least on
page 25 of the Answer. Accordingly, Appellants have not persuaded us that
the Examiner erred in relying upon the teachings and suggestions of Tsukada
in rejecting claim 1. Thus, we do not find Appellants' arguments to be
persuasive with respect to Issue 1(b).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
limitations of claims 1, 3, and 5, nor do we find error in the Examiner's
resulting legal conclusion of obviousness.
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Issue 2(a)
Based on Appellants' arguments cited above and our findings in
connection with Rejection R1 addressed in Issues 1(a) and 1(b), supra, we
find the Examiner did not commit reversible error in combining the prior art
of Tsukada, Andreasen, and DeLine for Rejection R2 of claims 2, 6–10, 12–
17, and 19–23.
Issue 2(b)
As a matter of claim construction, the Examiner need not give
patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d
1579, 1583–84 (Fed. Cir. 1994); See also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) ("[N]onfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art."), aff'd, 191 Fed. Appx. 959 (Fed. Cir.
2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) ("Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious."), aff'd,
No. 06-1003 (Fed. Cir. 2006) (Rule 36). Thus, non-functional descriptive
material does not confer patentability to inventions that are otherwise either
anticipated or obvious over the prior art.
This reasoning is applicable to the contested functional limitation of
the acronym "OEM" (original equipment manufacturer), which we find does
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not further limit the structure of the claimed vehicle.4 Therefore, a question
arises as to how much patentable weight, if any, we should give to the
contested functional limitation.
Even assuming, arguendo, an OEM monitor as recited in claim 6
distinguishes technically over an "after-market" monitor (or any other non-
functionally described monitor), we conclude it would have been obvious to
a person of ordinary skill in the art to implement either an OEM monitor or
other type of monitor. See Ans. 13; see also Leapfrog Enters., 485 F.3d at
1162 (such a choice is not "uniquely challenging or difficult for one of
ordinary skill in the art.").
Accordingly, we are not persuaded the Examiner erred in concluding
it would have been obvious in view of the suggested combination of
Tsukada, Andreasen, DeLine, and Lynch that the monitor of Tsukada could
be an OEM monitor, as recited in claim 6.

4 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.
Coolsavings.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). See also Superior
Industries, Inc. v. Masaba, Inc., 553 Fed. Appx 986, 991 (Fed. Cir. 2014)
(Rader, J., concurring) (stating: "[A] system claim generally covers what the
system is, not what the system does." Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) ('The inventor of a machine is entitled to the
benefit of all the uses to which it can be put, no matter whether he had
conceived the idea of the use or not.'). Thus, it is usually improper to
construe non-functional claim terms in system claims in a way that makes
infringement or validity turn on their function. Paragon Solutions, LLC v.
Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)").
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Issue 2(c)
We adopt the Examiner's findings (Ans. 26 and 30), particularly the
finding that user preference may be relied upon as to whether single or
multiple monitors are installed, and that Tsukada does not teach away from
the installation of additional monitors. Ans. 26. We are of the view that
claiming a mere plurality of prior art elements is not an unobvious
distinction over the prior art of record, because using plural elements would
have produced a predictable result under §103. See KSR, 550 U.S. at 417.
We further note, the temporal limitation of "installing a second
monitor after providing the vehicle that has a first monitor" as recited by
claim 19 is not "uniquely challenging or difficult for one of ordinary skill in
the art." See Leapfrog Enters., 485 F.3d at 1162. In addition, "[a] prima
facie case of obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art." In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976))(emphasis
added). The Supreme Court instructs that:
[T]he [obviousness] analysis need not seek out precise
teachings 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.
KSR, 550 US at 418 (citation omitted).
In this appeal, we find the Examiner has properly accounted for the
inferences and creative steps that a skilled artisan would employ in
concluding that it would have been obvious to install multiple monitors in
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the vehicle cab, depending on user preference or situational need. Ans. 26
and 30.
Issue 2(d)
We adopt the Examiner's findings in connection with the rejection of
claim 21. Ans. 16, 26, 27, and 30. We further note, as a matter of claim
construction, the temporal limitation of "wherein the step of installing the
second monitor occurs after sale and delivery of the vehicle," as recited by
claim 21, is not "uniquely challenging or difficult for one of ordinary skill in
the art" (See Leapfrog Enters., 485 F.3d at 1162), particularly in light of the
teachings of Andreasen, as cited by the Examiner. Ans. 16 (citing
Andreasen ¶ 16).
Issue 3
We adopt the Examiner's findings with respect to Rejection R3 of
claim 4 (Ans. 18, 27, and 28), particularly the finding Yamada discloses
cameras used to monitor boom position and transmit the images to a cab
display. Ans. 18 (citing Yamada ¶¶ 57 and 60; and Fig. 3 (elements 20, 27,
and C1–C3)). We reiterate we are not persuaded Tsukada teaches away
from adding a second monitor to the vehicle in the combination suggested
by the Examiner, as discussed above with respect to Issue 1(b).
Issue 4
We adopt the Examiner's findings (Ans. 19–21) in connection with
Rejection R4 of claims 11, 18, and 24, particularly the finding:
[I]t would have been obvious to one of ordinary skill in the art
at the time the claimed invention was made to implement in
Tsukada, Andreasen, De[L]ine, and Lynch the capability of
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displaying maneuvers of the blade as taught by Yamada on the
second optional monitor for the predictable result of adding an
additional feature to the device which would provide the
operator of the vehicle with a better perspective of the shovel
location in respect the work area surrounding the shovel.
Ans. 20. We further reiterate we are not persuaded Tsukada teaches away
from using a second monitor, as discussed, supra, with respect to Issue 1(b).
Accordingly, for the reasons discussed above, Appellants have not
provided sufficient evidence or argument to persuade us of any reversible
error in the Examiner's reading of the contested limitations on the cited prior
art, or in the resulting legal conclusion of obviousness. Therefore, we
sustain the Examiner's obviousness Rejections R1–R4 of the claims on
appeal.
Further, while Appellant appear to have raised separate arguments for
patentability of claims 8, 14, 17, 18, and 24 (App. Br. 16–20), to the extent
the arguments raised are truly separate and substantive, we find that the
Examiner has rebutted each of those arguments in the Answer by a
preponderance of the evidence. Ans. 28–31. Therefore, we adopt the
Examiner's findings and underlying reasoning, which we incorporate herein
by reference.
REPLY BRIEF
To the extent Appellants advance new arguments in the Reply Brief
(Reply Br. 2–5) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
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Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
CONCLUSION
The Examiner did not err with respect to the obviousness rejections of
claims 1–24 under 35 U.S.C. § 103(a) over the cited prior art combinations
of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–24.
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) (2011).
AFFIRMED

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