Ex Parte Kalley

Board of Patent Appeals and Interferences

Nov 30, 2010

09983597 (B.P.A.I. Nov. 30, 2010)

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.
09/983,597 10/25/2001 Terrence D. Kalley 14919.0060 1209
27890 7590 11/30/2010
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
PROCTOR, JASON SCOTT
ART UNIT PAPER NUMBER
2123
MAIL DATE DELIVERY MODE
11/30/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRENCE D. KALLEY
____________

Appeal 2009-005255
Application 09/983,597
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and CAROLYN
D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-5, 7-17, 20-21, and 24. The
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).

INVENTION
The Appellant describes the invention at issue on appeal as follows.
"An interactive demonstration system is provided to assist in training,
marketing, and instructing users in the operation and use of products such as
automobile diagnostic devices. Interactive simulations combine various
forms of media to provide a virtual hands-on learning or evaluation
experience." (Abstract.)

REPRESENTATIVE CLAIM
1. In a computer system including an input device and an
output device, a method of demonstrating an automotive
diagnostic device, the method comprising:
displaying an interactive simulation of the use of the
automotive diagnostic device using the output device;
receiving input from the input device;
updating the interactive simulation of the use of the
automotive diagnostic device based on the input received from
the input device; and
quizzing a user regarding the use of the automotive
diagnostic device.

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REJECTIONS
Claims 1, 4, 5, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent No. 5,860,810 ("Faul") and U.S. Patent
No. 6,546,230 ("Allison").
Claims 2 and 3 stand rejected under § 103(a) as being unpatentable
over Faul; Allison; and U.S. Patent No. 6,442,953 ("Trigiani").
Claims 7, 8, 10-13, and 16 stand rejected under § 103(a) as being
unpatentable over U.S. Patent No. 5,539,869 ("Spoto") and Faul.
Claim 9 stands rejected under § 103(a) as being unpatentable over
Spoto, Faul, and Trigiani.
Claims 14, 15, 17, 20, and 21 stand rejected under § 103(a) as being
unpatentable over Spoto, Faul, and the Examiner's Official Notice.

CLAIM GROUPING
Based on the Appellant's arguments, we will decide the appeal of
claims 1-5 and 24 on the basis of claim 1 alone. Likewise, we will decide
the appeal of claims 7-17, 20 and 21 on the basis of claim 7 alone. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues before us are whether the Examiner erred in finding that
Faul provides an interactive simulation as required by representative claim 1,
and whether the combined teachings of Faul and Spoto provide a description
module, a use module, and a safety module as required by claim 7.

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FINDINGS OF FACT
Faul describes its invention as "a method and apparatus useful in
performing a mechanical procedure such as a maintenance procedure. More
specifically, the approach of the invention is useful in providing step-by-step
instructions for a person performing the procedure." (Col. 4, ll. 17-21.)
Table I of Faul follows.

Faul's Table I "lists examples of generic statements such as would be stored
in [a] generic code file 42." (Col. 5, ll. 41-42.)
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Spoto describes its invention as follows.
Method and system are provided for processing and presenting
on-line, multimedia information such as diagnostic information
for a machine tool . . . . [t]he system uses diagnostic trees
having multimedia graphic icons which define the diagnostic
components. In developing a visual diagnostic tree, the
multimedia information can be assigned or mapped to each
node of the tree by selecting an appropriate icon to represent the
multimedia from an icon library.
(Abstract.)
ANALYSIS
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted). We address the aforementioned issues seriatim.

CLAIM 1
Here, the Examiner finds that "Faul clearly describes an interactive
simulation according to the claim language . . . ." (Ans. 15.)
The following teaching of Faul supports the Examiner's finding.
As noted, the instructions can be made more complex and
interactive, as may be necessary. For example, during the later
installation step, the installation instruction for the widget could
read "Install new widget and type in widget serial number here:
(blank)". The next step would not be displayed until the
mechanic had actually typed in the serial number of the newly
installed widget in the proper form for that serial number. The
mechanic could not forget to do so, possibly necessitating later
disassembly to determine the part serial number. The entered
serial number would be provided to the records file 58 for entry
into a report of the replacement operation and thence into the
maintenance log of the system. The reporting would be
accomplished automatically at the completion of the procedure,
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without further action by the mechanic. The report could be
printed, or transmitted electronically using a modem or a floppy
disk, for example.
(Col. 8, ll. 46-62.) More specifically, Faul's requiring the mechanic to enter
the part serial number to proceed constitutes interactive simulation.
For his part, the Appellant admits that Faul's entering of a part serial
number is interactive. More specifically, he acknowledges that "'interactive'
as described in Faul merely consists of entering a serial number of a widget .
. . ." (Appeal Br. 4.) The Appellant, however, makes the following
argument.
[The phrase] "interactive simulation" as described in claim 1
includes for example, "guiding a user to answer questions, such
as, how to identify a vehicle problem, how to operate a piece of
service equipment, how to repair or replace a vehicle part, how
to interpret a vehicle diagnostic report, or other pertinent
questions" following user input. See page 7, lines 11-16 of the
specification. . . . Faul does not teach or suggest a method of
demonstrating an automotive diagnostic device in a computer
system which includes updating the interactive simulation of
the use of the automotive diagnostic device based on the input
received from the input device.
(Appeal Br. 4.)
"During prosecution . . . the PTO gives claims their 'broadest
reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
"Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Here, the Appellant
is attempting to read limitations from the specification into claim 1. We
decline to do so. The Appellant's argument is not coextensive with the scope
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of the claim. Therefore, we conclude that the Examiner did not err in
finding that Faul provides an interactive simulation as required by
representative claim 1.

CLAIM 7
Here, the Examiner finds that "Spoto in view of Faul teach the
claimed 'interactive simulation module . . . wherein the simulation module
comprises a description module, a use module, and a safety module.'"
(Ans. 19).
The following teachings of Spoto support the Examiner's finding
concerning the description module and the use module. "Another important
aspect of this architecture is that the machine specific support information
can be stored in its original format . . . . " (Col. 4, ll. 8-11.) "[T]his approach
can provide a better and easier means of on-line interactive repair and
training procedures (i.e., by using full motion video) . . . ." (Col. 5, ll. 3-6).
Specifically, "machine specific support information" is reasonably
interpreted as information that describes a machine. That information,
stored in its original format, constitutes a description module. Moreover,
"full motion video" is reasonably interpreted as representing a use module
because the video demonstrates how to use equipment through on-line
interactive repair and training procedures. Thus, Spoto teaches a description
module and a use module.
The following teachings of Faul support the Examiner's finding
regarding the safety module. "An 'instruction' is, in general, formed of two
parts according to the present approach. There is a generic statement, such as
'install', 'remove ', 'clean ', 'obtain ', 'be aware of', or the like." (Col. 4, ll. 58-
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61). The illustrative statements in Table I include "AA Get help for lifting
or carrying objects weighing more than 95 pounds[]," "BB Do not twist
connector[]," and "KK Voltages may cause arcing. Remove rings, watches,
and other jewelry which may cause a shock/burn hazard." (Col. 5, ll. 59-64.)
Specifically, Faul teaches instructions such as "install" and "remove"
that clearly describe how to use and operate a device. These instructions
constitute a use module. Faul also teaches instructions such as "get help for
lifting" and "remove rings, watches, and other jewelry" that clearly
encompass safety considerations. Storing these instructions constitutes a
safety module.
For his part, the Appellant presents the following argument.
Contrary to the Examiner's allegations, the description module
as described in claim 7 does not correspond to the multimedia
system described in Spoto. The description module as
described in claim 7 "provides a component describing the
functionality of diagnostic device." See p. 9, lines 16-18 of the
specification. The use module as described in claim 7
"illustrate[s] the use and operation of [] device." See p. 9, lines
8-12 of the specification. The safety module as described in
claim 7 "identifies any safety issues that a technician needs to
identify to ensure the safe, correct operation of the diagnostic
device." See p. 10, lines 14-15 of the specification. Spoto does
not teach or suggest a demonstration software providing an
interactive simulation of a diagnostic device in a computer
system that includes an interactive simulation module which
includes a description module, a use module and a safety
module as detailed in claim 7. This defect is not remedied in
Faul either.
(Appeal Br. 6-7.)
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The Appellant is attempting to read limitations from the specification
into claim 7. We agree, however, with the Examiner's following claim
construction.
Contrary to Appellants' [sic] argument, the claim
language merely recites "an interactive simulation module . . .
wherein the simulation module comprises a description module,
a use module, and a safety module." Claim 7 does not contain
claim language requiring, for example, a module that "identifies
any safety issues that a technician needs to identify to ensure
the safe, correct operation of the diagnostic device." Instead,
the claim merely recites "a safety module".
. . . .

Therefore, Spoto in view of Faul teach the claimed
"interactive simulation module . . . wherein the simulation
module comprises a description module, a use module, and
a safety module." Appellants' [sic] deliberately chosen claim
language in claim 7 contains no further description of these
modules. The claims have been interpreted in light of the
specification without reading limitations from the specification
into the claims. Spoto in view of Faul teaches all of the
claimed elements in the invention of claim 7.
(Ans. 18-19.) In summary, the Appellant's argument is not coextensive with
the scope of the claim.
"[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage . . . .
taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Here, assuming arguendo that we were to require the safety module of
claim 7 to "identif[y] any safety issues that a technician needs to identify to
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ensure the safe, correct operation of the diagnostic device" (Appeal Br. 6),
we would still find that Faul teaches these features. For example, statement
AA is a cautionary warning that may prevent an operator from dropping and
breaking an unwieldy diagnostic device weighing more than 95 pounds.
Statement BB is a warning that may prevent an operator from damaging a
connector on a diagnostic device by means of excessive twisting. Likewise,
statement KK is a warning that may prevent an operator from damaging the
sensitive electronic circuitry of a diagnostic device by means of inadvertent
arcing. In view of the foregoing considerations, statements AA, BB, and
KK clearly encompass "any safety issues that a technician needs to identify
to ensure the safe, correct operation of the diagnostic device" (Appeal Br. 6).
Therefore, we conclude that the Examiner did not err in finding that the
combined teachings of Spoto and Faul provide a description module, a use
module, and a safety module as required by claim 7.

DECISION
We affirm the rejection of claims 1 and 7, and that of claims 2-5, 8-
17, 20, 21 and 24 which fall therewith. No time for taking any action
connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
See 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

Erc

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1330 CONNECTICUT AVENUE, N.W.
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