Ex Parte Ring

Patent Trial and Appeal Board

Mar 15, 2013

11000850 (P.T.A.B. Mar. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL E. RING
____________________

Appeal 2010-011864
Application 11/000,850
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011864
Application 11/000,850

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 9-131. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a train communication system that
uses communication assemblies installed on each railway car of a
locomotive (Spec. 1, ll. 7-11). Claim 9 is the sole independent claim.
EXEMPLARY CLAIM
Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. In combination with a railway train
having at least one locomotive and a
predetermined plurality of railway cars serially
coupled to said at least one locomotive, a serial
train communication system comprising a plurality
of communication assemblies, each of which is
installed on said at least one locomotive and on
each railway car, said each communication
assembly including:
(a) a power source;
(b) a controller coupled to said power
source;
(c) a first sound transmission means
associated with a sound wave having a
predetermined frequency, said first sound
transmission means attached at one end of said
each railway car and said at least one locomotive

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed Dec. 1,
2004), Appeal Brief (“Appeal Br.,” filed May 13, 2009), and Reply Brief
(“Reply Br.,” filed Jun. 22, 2010), as well as the Examiner’s Answer
(“Ans.,” mailed May 24, 2010).
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and coupled to said power source and said
controller; and
(d) a second sound transmission means
associated with said sound wave, said second
sound transmission means attached at an opposed
end of said each railway car and said at least one
locomotive in alignment with said first sound
transmission means, said second sound
transmission means coupled to said power source
and said controller, whereby each of said first and
second sound transmission means is operable in
absence of compressed air.
THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 9-13 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement; and
Claims 9-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Schmischke (DE 19934640 C1, pub. Nov. 30, 2000) in view of Zeng
(US 6,469,956 B1, iss. Oct. 22, 2002).
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
Independent claim 9, from which claims 10-13 depend, is rejected as
failing to comply with the written description requirement. Specifically, the
Examiner states that the claimed limitations of “each of said first and second
sound transmission means is operable in absence of compressed air” was not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that Appellant, at the time the application was
filed, had possession of this limitation (Ans. 3-4, 6-8). Appellant points to
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different portions of the original application as allegedly providing support
for these claim features, for example, page 1, line 22 to page 2, line 5, page
5, lines 12-13, page 11, lines 11-24, and page 14, lines 16-22, of the
Specification, as well as Figures 2-5 (App. Br. 3, 10-12; Reply Br. 2-6). We
have carefully reviewed these portions of the Specification, and find that
they do not address anything about whether the sound transmission means
64 and 66 do or do not operate in the absence of compressed air. Indeed,
they do not disclose compressed air at all. Thus, we agree with the
Examiner
that discussing the advantages and
disadvantages of EP [(electrically controlled
pneumatic)] and ECP [(electronically controlled
pneumatic)] braking systems in the background
section of the patent application does not suggest
that sound transmission means of the instant
invention are operable in the absence of
compressed air. Appellant then points to the
phrase “ ... there is a need for an improved
communication system for freight railway trains
...” on pg. 5 lines 12-13 of the specification as
proof of support for the added limitation in
question. Examiner maintains that the expression
of a need for an improved communication system
is simply that – a broad suggestion that the current
state of railway train communication needs
improvement. It is not a detailed description of
sound transmission means being operable in the
absence of compressed air as Appellant argues
(Ans. 6-7). We need not address the Examiner’s statements that paragraph
[0068] of the published application appears to describe the use of
compressed air (Ans. 4, 7-8) and Appellant’s arguments to the contrary
(App. Br. 11-12, Reply Br. 5-6), because we find the original Specification
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and drawings do not provide support for the sound transmission means
operable in the absence of compressed air.
For the foregoing reasons, we find that Appellant’s arguments are not
persuasive that the original application provides support for the claimed
features of “each of said first and second sound transmission means is
operable in absence of compressed air.” Thus, we sustain the rejection of
independent claim 9 under 35 U.S.C. § 112, first paragraph.
Appellant does not submit separate arguments regarding dependent
claims 10-13, but instead argue these claims are supported by the original
application for the same reasons as independent claim 9 from which they
depend. Thus, we sustain the rejection of claims 10-13 under 35 U.S.C.
§ 112 for the same reasons that we sustain the rejection of claim 9.
Rejection under 35 U.S.C. 103(a)
We reverse the Examiner’s rejection of claims 9-13 under 35 U.S.C. §
103(a) as unpatentable over Schmischke in view of Zeng. The Examiner
does not indicate that the limitation “each of said first and second sound
transmission means is operable in absence of compressed air” is shown or
suggested by either reference.
DECISION
The Examiner’s rejection of claims 9-13 under 35 U.S.C. § 112, first
paragraph, is AFFIRMED; and
The Examiner’s rejection of claim 9-13 under 35 U.S.C. § 103(a) as
unpatentable over unpatentable over Schmischke in view of Zeng is
REVERSED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

mls