Ex Parte Sias et al

Board of Patent Appeals and Interferences

Jan 19, 2012

11015845 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/015,845 12/17/2004 William C. Sias 12397-42 3799
757 7590 01/20/2012
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
01/20/2012 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 WILLIAM C. SIAS, MATTHEW E. MEAD,
ROBERT J. PRINZ, DAMIR IBRAHIMOVIC,
PATRICK J. MITCHELL, TROY A. RACKNAGEL, and
ROY A. BURKHOLDER
____________

Appeal 2010-005728
Application 11/015,845
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-27 and 39-75. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants claim a bowling lane conditioning machine comprising
circuitry operative to display a graphical user interface on a display device.
Representative claim 69 is reproduced below:
69. A bowling lane conditioning machine comprising:
at least one of a lane dressing fluid application system,
and a cleaning fluid delivery and removal system;
a display device; and:
circuitry in communication with the display device and
operative to display a graphical user interface on the display
device, wherein the graphical user interface displays a plurality
of menu options including a menu option of a presently-
displayed screen, wherein the menu option for the presently-
displayed screen is displayed differently from the menu option
for a screen displayed prior to the presently-displayed screen.
The prior art listed below is relied upon by the Examiner as evidence
of obviousness:
Regan 3,418,672 Dec. 31, 1968
Ingermann et al. 4,959,884 Oct. 2, 1990
Caffrey et al. 5,641,538 June 24, 1997
Crum et al. 5,718,767 Feb. 17, 1998
Davis 5,729,855 Mar. 24. 1998
Davis 5,935,333 Aug. 10, 1999
Gebhardt et al. 6,090,203 July 18, 2000
Baker et al. 6,923,863 B1 Aug. 2, 2005
ERIK TROMP, X-TREME OPERATING INSTRUCTIONS (Levab
International 2004) (1997). (hereinafter “X-treme” brochure).
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Application 11/015,845

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NO BUFFERS NO ROLLERS NO WICKS! (Levab International 1998).
(hereinafter Levab brochure).
GUIDE- VECTOR SCORER (Brunswick Bowling and Billiards Corp.
2004). (hereinafter Vector Scorer brochure).
The grounds of rejection to be reviewed on appeal are as follow:

1. Whether Claims 69-72 are unpatentable under 35 U.S.C. § 102(a) or (b)
over the Levab International’s “X-treme” brochure;

2. Whether Claims 1-6, 8, 10, 12, 16, 18-20, 22, 24, 25, 27, 47-50, and 53
are unpatentable under 35 U.S.C. § 102(b) over Caffrey;

3. Whether Claims 69-72 are unpatentable under 35 U.S.C. § 103(a) over a
proposed modification to the Levab International’s “X-treme” brochure;

4. Whether Claims 7-9, 15, 17, 23, 26, 39-45, 66-75 are unpatentable under
35 U.S.C. § 103(a) over Caffrey;1

5. Whether Claims 54-65 are unpatentable under 35 U.S.C. § 103(a) over the
combination of Caffrey and the Levab brochure;

6. Whether Claims 21, 23, 26, 27, 47, and 49 (as well as claims 51 and 52)2
are unpatentable under 35 U.S.C. § 103(a) over the combination of Caffrey
and Davis;

7. Whether Claims 11, 13, 14, 28-38, and 46 are unpatentable under
35 U.S.C. § 103(a) over the combination of Caffrey and Regan;

1 Claims 23 and 26 are rejected over the combination of Caffrey and the
Admitted Prior Art (page 6 of the specification); and claims 66-68 are
rejected over the combination of Caffrey and Vector Scorer brochure.
2 Appellants have not presented substantive separate arguments to address
the separate rejection of claims 51 and 52 under 35 U.S.C. § 103(a) over the
combination of Caffrey, Gebhardt, Davis, and Baker. (Br. 27). Appellants
rely on the arguments presented for independent claim 47. Consequently,
claims 51 and 52 stand or fall with claim 47.
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8. Whether Claims 39-45 are unpatentable under 35 U.S.C. § 103(a) over the
combination of Caffrey and Crum; and

9. Whether Claim 46 is unpatentable under 35 U.S.C. § 103(a) over the
combination of Caffrey, Regan, and Crum.

We sustain these rejections for the reasons well stated by the
Examiner in the Answer. The following comments are added for emphasis.
The proper test of a publication as a § 102(b) bar is “whether one
skilled in the art to which the invention pertains could take the description of
the invention in the printed publication and combine it with his own
knowledge of the particular art and from this combination be put in
possession of the invention on which a patent is sought.” In re Elsner, 381
F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 936
(CCPA 1962)). In particular, in view of the publication, one must be able to
make the claimed invention without undue experimentation. Elsner, 381
F.3d at 1128; In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.
Cir. 1985).” In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701
(Fed. Cir. 1995) “).

A claimed apparatus must be distinguished from the prior art
apparatus on the basis of structure. Therefore, the patentability of an
apparatus claim depends only 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), or the function or result of that
structure. In re Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner,
171 F.2d 313, 315-16 (CCPA 1949). Language in an apparatus claim
directed to the function, operation, intent-of-use, and materials upon which
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these apparatus components work that does not structurally limit the
apparatus components or patentably differentiate the claimed apparatus from
an otherwise identical prior art apparatus will not support patentability. See,
e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d
937, 940 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971);
In re Yanush, 477 F.2d 958, 959 (CCPA 1973).

The rejection of claims 69-72 under 35 U.S.C. §§ 102 and 103
over the Levab International’s “X-treme” brochure
Applicants argue that this rejection should be withdrawn because the
“X-treme” brochure does not teach each and every element in the claim.
Applicants argue that the “X-treme” brochure’s LCD display merely
displays text, not a graphical user interface, as recited in independent claim
69. (Br. 7-9). Applicants also argue that “[a]lthough the ‘X-treme’ machine
can be connected as a peripheral to the PC, this connection does not mean
that the ‘X-treme’ machine ‘comprises’ every component and feature of the
PC.” (Id. at 9).
Appellants’ arguments are not persuasive for the reasons set forth by
the Examiner. (Ans. 3, 4, and 31-32). Appellants have not disputed that the
“X-treme” brochure discloses that a personal computer (PC) or a notebook
computer, which comprise a graphical display, are attached to the “X-treme”
machine through a serial cable. (“X-treme” brochure 21-24). A person
skilled in the art would have been capable of taking the description of the X-
treme” brochure and combine it with his own knowledge to develop a
graphical user interface, as recited in independent claim 69. Appellants have
not argued that the “X-treme” machine comprising the connected computer
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does not comprise circuitry and a display device that are capable of
performing the task described by the subject matter of claim 69.3

The rejection of claims 1-6, 8, 10, 12, 16, 18-20, 22, 24,
25, 27, 47-50, and 53 under 35 U.S.C. § 102(b) over Caffrey
Applicants argue that there is no teaching in Caffrey of dynamically
updating the graphical representation of the lane dressing pattern in response
to an inputted change to the lane dressing fluid pattern, as recited in
independent claims 1, 5 and 47. (Br. 10-16).
Appellants’ arguments are not persuasive for the reasons set forth by
the Examiner. (Ans. 4, 5, 9-11, and 32-34). Appellants have not disputed
that Caffrey discloses a bowling lane conditioning machine that is connected
to a computer that comprises an input device, circuitry, and a display device.
Appellants have not adequately explained why Caffrey’s bowling lane
conditioning machine comprising a computer (having circuitry) is not
capable of receiving input from an input device, displaying a graphical
representation, and dynamically updating the graphical representation as
required by the subject matter of claims 1, 5 and 47.
Appellants argue that the Examiner used the wrong standard in
analyzing the apparatus claims 1, 5 and 47. Specifically, Appellants argue

3 The replacement of an alphanumeric display system, utilizing binary
coded decimal signals, with a video display requiring different circuitry at a
fuel pump was obvious to a person skilled in the art. In re Raynes, 7 F.3d
1037, 1040 (Fed. Cir. 1993)
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that intended use should not apply to analysis of the steps that the apparatus
performs. (Br. 16-18).
These arguments are not persuasive for the reasons set forth supra.
As stated above, a claimed apparatus must be distinguished from the prior
art apparatus on the basis of structure. The patentability of an apparatus
claim depends only on the claimed structure, not on the use or purpose of
that structure.

The rejection of claims 7-9, 15, 17, 23, 26, 39-45, 66-75
under 35 U.S.C. § 103(a) over Caffrey.
Applicants argue that it would not have been obvious to modify the
single processor and the bowling lane conditioning machine in Caffrey to
include two processors having the functionality specified by the subject
matter of independent claim 39. (Br. 20-21).
Appellants’ arguments (id. at 17-18) are not persuasive for the reasons
set forth by the Examiner. (Ans. 12-14 and 34-35). Appellants have not
disputed the Examiner’s position that Caffrey’s bowling lane conditioning
machine utilizes a single processor to perform the functions specified by the
claimed invention. We agree with the Examiner’s determination that a
person of ordinary skill in the art would have found it obvious to utilize two
processors in Caffrey’s bowling lane conditioning machine. Appellants
have not directed us to evidence that establishes performing the claimed
functions with two processors produces unexpected results.
Appellants’ arguments regarding the subject matter of independent
claim 66 (Br. 23-24) are not persuasive for the reasons set forth by the
Examiner. (Ans. 18-19, and 36-37). Appellants have not adequately
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explained why a computer would not have been capable of performing this
function.

The rejection of claims 54-65 under 35 U.S.C. § 103
over the combination of Caffrey and the Levab brochure.
Appellants’ arguments (Br. 22-23) are not persuasive for the reasons
set forth by the Examiner. (Ans. 16-17, and 36). Appellants’ arguments
regarding the functionality of a bowling lane conditioning machine
comprising a computer are not persuasive for the reasons set forth above.

The rejection of claims 21, 23, 26, 27, 47, and 49 under
35 U.S.C. § 103 over the combination of Caffrey and Davis
Appellants’ arguments regarding the subject matter of independent
claim 47 (Br. 24-25) are not persuasive for the reasons set forth by the
Examiner. (Ans. 20). Appellants have not adequately explained why a
computer (comprising circuitry) would not have been capable of performing
this function. We also refer to our discussion of circuitry of a computer
discussed above.

The rejection of claims 11, 13, 14, 28-38, and 46 under
35 U.S.C. § 103(a) over the combination of Caffrey and Regan.
Applicants argue that it would not have been obvious to modify the
single processor and the bowling lane conditioning machine in Caffrey to
include two processors having the functionality specified by the subject
matter of independent claim 46. (Br. 26-27).
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Appellants’ arguments are not persuasive for the reasons set forth by
the Examiner. (Ans. 28-31 and 38-39). Appellants’ arguments regarding
multiple processors and their functionality have been addressed above.
Appellants do not specifically dispute the Examiner’s reasons for adding the
teachings of Regan to Caffrey’s bowling lane conditioning machine.

The rejection of claims 39-46 under 35 U.S.C. § 103
over the combination of Caffrey and Crum
Appellants’ arguments (Br. 28-29) are not persuasive for the reasons
set forth by the Examiner. (Ans. 26-30, and 39-42). Appellants’ arguments
regarding the functionality of a bowling lane conditioning machine
comprising a computer are not persuasive for the reasons set forth above.

For the reasons given by the Examiner in the Answer, we are
unpersuaded by Appellants’ argument against the rejections of claims 1-27
and 39-75.
The decision of the Examiner is affirmed.

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)(v).

AFFIRMED
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