Ex Parte Shah et al

Patent Trial and Appeal Board

Oct 30, 2012

11261929 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEMANG SHAH, LAKSHMY KALIVARADAN,
POOJITHA DAHANAIKE, MATHEW PASZTOR, BRANT STORY,
JIM KJEER, and ROBERT KOCHIE
____________

Appeal 2010-007196
Application 11/261,929
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/261,929

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STATEMENT OF THE CASE
Hemang Shah et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting under 35 U.S.C. § 102(e) claims 1-
5, 7, 9-14, 16-20, 22, 23, and 26 as anticipated by Rother (US 2005/0137762
A1, published Jun. 23, 2005); and under 35 U.S.C. § 103(a) claim 6 as
unpatentable over Rother and Jonker (US 5,250,935, issued Oct. 5, 1993);
and claims 8, 15, and 21 over Rother and Beronja (US 2006/0126669 A1,
published Jun. 15, 2006). Claims 24 and 25 have been withdrawn from
consideration. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to management and display of “vehicle
technical information and vehicle diagnostic data, on vehicle diagnostic
tools.” Spec. 1, para. [0001].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A technical information management device configured for
implementation with a vehicle diagnostic tool, comprising:
a database containing vehicle technical information;
an information manager configured to access the database and
retrieve a segment of the information;
a user interface builder configured to prepare an information
display including the segment of the information; and
a component selection feature configured to allow a user to
select a vehicle component for which to retrieve information, and
further configured to store the component selection throughout a
component functional test session, during which the information
manager is further configured to retrieve only information
corresponding to the component selection.

SUMMARY OF DECISION
We REVERSE.
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Application 11/261,929

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ANALYSIS
The anticipation rejection
Claims 1-5, 7, 9, 10, and 26
Independent claim 1 recites, inter alia, “a component selection feature
configured to allow a user to select a vehicle component for which to
retrieve information, and further configured to store the component selection
throughout a component selection test session.” Independent claim 26,
written as a means-plus-function claim, requires “means for facilitating user
selection of a vehicle component for which to retrieve information” and
“means for storing the component selection throughout a component
functional test session.” Br., Claims Appendix.
Pointing to Figures 2 and 3 and paragraph [0048] of Rother, the
Examiner found that:
Rother discloses in fig. 2 and fig. 3 a display
menu which allow a user to select from a menu
list, by selecting the icons (buttons) on the top to
bring up different fields. For example, the user
can select the vehicle identification icon which
brings up the different type of vehicles and
retrieve information about that type of vehicle
by clicking on the symptoms, component/system
or the fault codes. In addition, Rother discloses,
see paragraph 0048, that the user can choose
the test that found the problem (the component
selection) and that data is saved to a database.

Ans. 3-4 (boldface type in original). See also, Ans. 8.
Appellants argue that although the system of Rother saves “the data
relating to the test name and results, the current vehicle, and the selected
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Application 11/261,929

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symptoms,” Rother fails to teach, “the storage of ‘the component selection
throughout a component functional test session.’” Br. 8.
In response, the Examiner notes that the user of Rother’s system “can
choose the test that found the problem (the component selection) and the
data is saved to a database.” Ans. 11.
Appellants’ Specification describes a vehicle component selection
feature 112 that allows “the vehicle technician to select a particular
component of a vehicle to be tested.” Spec. 20, para. [0067] and fig. 8. The
vehicle component selection is then stored during a vehicle component
functional test session (test procedure) in order for a technician to have
“access to component-specific vehicle technical information.” Spec. 21,
para. [0067].
Although we appreciate that the data resulting from a selected test
procedure in the system of Rother is ultimately saved to a database after the
test procedure has been performed (see Rother, para. [0048]), independent
claims 1 and 26 require that the “vehicle component” be saved “throughout a
component functional test session,” that is, throughout the test procedure.
The Examiner has not provided any evidence that the system of Rother
necessarily stores the selected vehicle component throughout the test
procedure. Thus, we agree with Appellants that, “Rother does not disclose
storing the component selection throughout the test session,” as called for by
each of independent claims 1 and 26. Br. 7.
Accordingly, we cannot sustain the rejection under 35 U.S.C. § 102(b)
of claims 1-5, 7, 9, 10, and 26 as anticipated by Rother.

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Claims 11-14, 16-20, 22, and 23
Appellants argue that the rejection of claim 11 “was lumped with the
rejection of independent claim 1without additional explanation or
comments,” and as such, “Rother does not teach every aspect of the claimed
invention.” Br. 9. According to Appellants, Rother does not teach “a
second logical button” that allows a user to return directly to a previous
display screen. Id.
In response, the Examiner points to Figures 2 and 3 of Rother to show
“a display menu which allow[s] a user to select from a menu list, by
selecting the icons on the top to bring up different fields and [to] returns to a
previous display by clicking on the icons to go back to previous menu.”
Ans. 12.
At the outset, we note that claim 11 requires a first logical button for
accessing a menu of available vehicle technical information and a second
logical button for returning to a previous display. Br., Claims Appendix.
Since the icons at the top of the display in Rother’s Figures 2 and 3 allow a
user to both select from a menu list and to return to a previous display, the
Examiner has used the same element or structure in Rother, i.e., the icons at
the top of Rother’s display, to satisfy two different limitations from the
claimed subject matter, i.e., “a first logical button” and “a second logical
button.” See Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404-05
(Fed. Cir. 1996) (construing separate claim terms as reciting separate
structures). Thus, we do not agree that the icons at the top of the display in
Rother’s Figures 2 and 3 constitute “a second logical button,” as called for
by independent claim 11.
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Accordingly, the rejection of independent claim 11 and its dependent
claims 12-14, 16-20, 22, and 23 under 35 U.S.C. § 102(b) as anticipated by
Rother likewise cannot be sustained.

The obviousness rejections
Claims 6, 8, 15, and 21
The addition of Jonker and Beronja does not cure the deficiencies of
Rother as described supra. Thus, we shall not sustain the rejections under
35 U.S.C. § 103(a) of claim 6 as unpatentable over Rother and Jonker and of
claims 8, 15, and 21 as unpatentable over Rother and Beronja.

SUMMARY
The decision of the Examiner to reject claims 1-23 and 26 is reversed.

REVERSED

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