Ex Parte Harrell

Patent Trial and Appeal Board

Jun 1, 2018

14553336 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/553,336 11/25/2014
123896 7590 06/05/2018
Mintz Levin/Wayne Fueling Systems LLC
One Financial Center
Boston, MA 02111
FIRST NAMED INVENTOR
Daniel C. Harrell
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.
47376-042C01 US(255903) 3423
EXAMINER
MAI, THIENT
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL C. HARRELL
Appeal2017-007940
Application 14/553,336
Technology Center 2800
Before ROMULO H. DELMENDO, MARK NAGUMO, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 21-24, and26-30. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Opinion, the Final Action dated May 20, 2015 ("Final Act."); the
Appeal Brief filed November 25, 2016 ("App. Br."); the Examiner's Answer
dated March 14, 2017 ("Ans."); and the Reply Brief filed May 3, 2017
("Reply Br.").
2 Appellant is Wayne Fueling Systems LLC, the applicant and real party in
interest. App. Br. 1.
3 Claims 41--48 are allowed. Final Act. 5.
Appeal2017-007940
Application 14/553,336
The claims are directed to methods for providing fuel dispenser
diagnostics. Claim 21, reproduced below from the Claims Appendix of the
Appeal Brief, is illustrative of the claimed subject matter:
21. A method of providing fuel dispenser diagnostics, the
method comprising:
transmitting a diagnostic request from a controller to a
first fuel dispenser in electronic communication with the
controller, the first fuel dispenser being one of a plurality of
fuel dispensers at a fuel dispensing site, each of the plurality of
fuel dispenser being in electronic communication with the
controller, and the diagnostic request requesting that the first
fuel dispenser determine whether a fault condition is present at
the first fuel dispenser;
receiving diagnostic data at the controller from the first
fuel dispenser in response to the transmitted diagnostic request,
the diagnostic data indicating that a fault condition is present at
the first fuel dispenser, and the diagnostic data indicating a type
of the fault condition; and
transmitting a diagnostic command from the controller to
one or more of the plurality of fuel dispensers other than the
first fuel dispenser, the diagnostic command being based on the
type of the fault condition, and the diagnostic command
requesting the one or more of the plurality of fuel dispensers to
implement a remedial action that addresses the fault condition
present at the first fuel dispenser.
REFERENCES
The Examiner relies on the follow prior art in rejecting the claims on
appeal:
Finley et al.
("Finley")
Howard et al.
("Howard")
US 6,442,448 B 1
US 2005/0114262 Al
2
Aug.27,2002
May 25, 2005
Appeal2017-007940
Application 14/553,336
REJECTIONS
The Examiner maintains and Appellant seeks review of the rejection
under 35 U.S.C. § 103(a) of claims 21-24 and 26-30 over Finley in view of
Howard. Ans. 2; App. Br. 3.
OPINION
Claim 21 is the sole pending independent claim. App. Br. Claims
App 'x A-B. The Examiner finds that Finley teaches the first two elements
of claim 21, but is silent with respect to "transmitting a diagnostic command
from the controller to one or more of a plurality of fuel dispensers other than
the first fuel dispenser, .... " Final Act. 2-3. The Examiner finds that
Howard teaches that if one peer terminal is unavailable, other peer terminals
can take over the processing. Id. at 3. The Examiner finds Howard teaches
that a peer sends out messages to available peers, requesting processing a
payment that the unavailable peer cannot. Id. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art at the time of
the invention to incorporate the teachings of Howard into Finley's system so
that the system could continue providing service uninterrupted to a customer
by requesting at least one other fuel dispenser to process a service
unavailable at the first fuel dispenser. Id.
Appellant argues that the proposed combination of Finley and Howard
does not teach the claimed invention. App. Br. 9-10; Reply Br. 4.
Appellant contends that Howard does not disclose sending a diagnostic
command from the controller to a second fuel dispenser based on a fault
condition at a first fuel dispenser. App. Br. 1 O; Reply Br. 4.
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Appeal2017-007940
Application 14/553,336
We agree with Appellant that Howard does not meet the requirement
in claim 21 of "transmitting a diagnostic command from the controller to
one or more of the plurality of fuel dispensers other than the first fuel
dispenser, .... " Howard teaches peer-to-peer communication of requests,
but does not disclose a controller sending a diagnostic command to a second
fuel dispenser based on the type of the fault condition detected in a first fuel
dispenser. Therefore, combining the teachings of Finley and Howard would
not result in the invention claimed in claim 21.
Appellant also argues that the Examiner fails to provide a motivation
to combine Finley and Howard. App. Br. 10-11; Reply Br. 5.
"[W]hether there is a reason to combine prior art references is a
question of fact." Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
1342, 1367 (Fed. Cir. 2016) (citing Transocean Offshore Deepwater
Drilling, Inc. v. Maerski Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed.
Cir. 2010). The Examiner merely concludes that it would have been obvious
to combine the references so that the system may continue providing
payment service to the customer. Final Act. 3. However, as Appellant
points out, in Finley, diagnosis of a fault occurs separately from customer
interaction. App. Br. 9-10; Reply Br. 6; Finley col. 14, 1. 32---col. 15, 1. 45.
The Examiner's articulated reasoning fails to establish that an ordinarily
skilled artisan would have had motivation or reason to combine Howard's
teaching of a peer-to-peer system for payment processing with Finley's fuel
dispenser diagnostics.
Appellant also argues that the Examiner takes improper official notice
in determining that Finley teaches that a stop command may be issued if a
software bug, malfunction, or untrained cashier error occurs. Final Act. 3.
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Appeal2017-007940
Application 14/553,336
The Examiner finds, based on the Examiner's experience as a Field Engineer
in control equipment and computers and "from factual common knowledge"
that if one dispenser malfunctions and requires stopping, it is likely that
other dispensers would malfunction in the same way, and, therefore, it is
predictable that one would want to stop other dispensers. Ans. 5.
The Examiner fails to support adequately that these findings are
"common knowledge" at all, or that they were common knowledge known
to one of ordinary skill in the art at the time of the invention. See Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) ("In recognizing the
role of common knowledge and common sense, we have emphasized
the importance of a factual foundation to support a party's claim about
what one of ordinary skill in the relevant art would have known."); Mintz v.
Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012) ("The mere
recitation of the words 'common sense' without any support adds nothing
to the obviousness question."); Perfect Web Techs. Inc. v. InfoUSA Inc.,
587 F.3d 1324, 1330 (Fed. Cir. 2009) ("[T]o invoke 'common sense' or
any other basis for extrapolating from prior art to a conclusion of
obviousness, [the factfinder] must articulate its reasoning with sufficient
clarity for review.").
In addition, combining Finley's teaching with the alleged common
knowledge does not meet the limitations of claim 21.
For the reason above, we do not sustain the Examiner's rejection of
independent claim 21. For the same reasons, we do not sustain the rejections
of dependent claims 22-24 and 26-30.
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Appeal2017-007940
Application 14/553,336
DECISION
The rejection of claims 21-24 and 26-30 is reversed.
REVERSED
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