Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10208905 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARNOLD C. WILSON,
DAVID EVERHART, and J.T. BADGETT
__________

Appeal 2009-000129
Application 10/208,905
Technology Center 3700
__________

Decided:1June 23, 2009
__________

Before DONALD E. ADAMS, LORA M. GREEN, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of activating a service apparatus. The Examiner has rejected the claims as

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000129
Application 10/208,905

obvious and/or lacking written description. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 30-37 and 40-55 are pending and on appeal (App. Br. 3). We
will focus on claim 30, which reads as follows:
30. A method of activating a service apparatus which provides at least one
of HVAC and electrical power to a truck parked at a parking site, said
method comprising:
providing a supply panel adapted to be attached to the truck, said
supply panel providing the at least one of HVAC and electrical power to the
truck;
displaying information on a display to a user of said service apparatus;
communicating the identification of the user to a control system;
said control system recording the identification of the user, activating
said service apparatus and recording usage of said service apparatus;
generating a signal, initiated by the user, to terminate usage of said
service apparatus; and
providing for electronic payment for prior use of said service
apparatus based on time of usage of said service apparatus.
Claims 30-37 and 40-55 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 3).
Claims 30, 32, 34, 43, and 45-51 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Holmes2 in view of Wetherell3 and Kenney4
(Ans. 3).

2 Holmes, US 2,962,951, Dec. 6, 1960.
3 Wetherell, US 6,109,049, Aug. 29, 2000.
4 Kenney et al., US 5,957,329, Sep. 28, 1999.
2
Appeal 2009-000129
Application 10/208,905

Claims 31, 33, 36, 37, 40-42, and 44 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Holmes in view of Wetherell, Kenney, and
Giordano5 (Ans. 4-5).
Claim 35 stands rejected under 35 U.S.C. § 103(a) as obvious over
Holmes in view of Wetherell, Kenney, and Park ’N View6 (Ans. 5).
WRITTEN DESCRIPTION
The Examiner finds that the “newly added ‘generating a signal,
initiated by the user, to terminate usage of said service apparatus’ constitutes
new matter not supported by the originally filed specification” (Ans. 3). In
particular, the Examiner finds that “nowhere in the specification does the
applicant disclose how and where the signal is generated by the user to
terminate the service apparatus” (id. at 6).
Appellants argue:
The Specification . . . clearly describes an electro-mechanical
device through which a user is able to interact with a control
system to obtain convenience services and to terminate the use
of such services when the user so desires. It is commonly
understood by persons skilled in the relevant art that
communication with an electro-mechanical device involves the
sending and/or receiving of signals. Persons skilled in the art
would therefore understand that the act of establishing
communication with the control system to terminate the
provided service involves the generation of a signal (which the
user has initiated) to indicate that the user desires to terminate
the service.
(App. Br. 9.)

5 Giordano et al., US 5,859,779, Jan. 12, 1999.
6 Park ’N View Completes Its 125th Truckstop Installation At TravelCenters
of America, Ontario, Ca., Business Wire, Aug. 25, 1998.
3
Appeal 2009-000129
Application 10/208,905

Issue
Have Appellants shown that the Examiner erred in finding that the
Specification does not provide written descriptive support for the claim
recitation “generating a signal, initiated by the user, to terminate usage of
said service apparatus”?
Findings of Fact
1. The Specification discloses an “apparatus for providing
convenience services to stationary vehicles independent of the vehicle
electrical system,” the apparatus including a stationary housing, “a supply
panel, which is releasably attached to the stationary vehicle,” and “[a]t least
one positionable conduit . . . attached to the stationary housing for
transferring the services to [the] supply panel” (Spec. 5: 5-11).
2. In particular, the Specification discloses a supply panel 108
having “a conditioned air discharge vent 212, a communications services
sub-panel 214, an electrical outlet sub-panel 216, a card reader 218, and a
keypad 224 and display 222 forming an operator interface sub-panel 220”
(id. at 7: 7-11).
3. The Specification also discloses a control system, which
includes both a local server and a central server, that “enables the desired
convenience services, controls the convenience services that require control,
tracks the use of convenience services provided, and compiles billing
information” (id. at 11: 25-28 & 12: 16-19).
4. In addition, the Specification discloses:
[T]he vehicle operator uses either the card reader 218 or the
operator interface sub-panel 220 to identify either the vehicle
operator or the billing entity and to specify the services desired.
4
Appeal 2009-000129
Application 10/208,905

If the card reader 218 is used, the operator inserts an identifying
card into the reader 218, which in turn communicates with the
control system. If the operator interface sub-panel 220 is used,
the operator enters codes and/or other identifying information
with the keypad 224. The operator interface sub-panel 220
communicates with the control system.
(Id. at 12: 6-13.)
5. The Specification also discloses:
When the operator wishes to discontinue use of the convenience
services, the operator establishes communications with the
control system, either through the card reader 218 or the
operator interface sub-panel 220. The vehicle operator then
disengages the supply panel 108 from the stationary
vehicle 120. The vehicle 120 can then leave the area of the
supply panel 108.
(Id. at 12: 20-24.)
Principles of Law
Under the written description requirement of 35 U.S.C. § 112, first
paragraph, “the applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). “In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
Analysis
The Specification discloses that, “[w]hen the operator wishes to
discontinue use of the convenience services, the operator establishes
communications with the control system” (Finding of Fact (FF) 5). The
5
Appeal 2009-000129
Application 10/208,905

Specification also discloses that the control system includes both a local
server and a central server and “enables the desired convenience services,
controls the convenience services that require control, tracks the use of
convenience services provided, and compiles billing information” (FF 3).
We agree with Appellants that a person of ordinary skill in this art would
recognize that communication with such a control system is through a signal
(App. Br. 9). Thus, although the Specification does not specifically refer to
a signal to terminate usage of the service apparatus, we agree with
Appellants that the Specification conveys that the inventors were in
possession of this concept.
Conclusion
Appellants have shown that the Examiner erred in finding that the
Specification does not provide written descriptive support for the claim
recitation “generating a signal, initiated by the user, to terminate usage of
said service apparatus.” We therefore reverse the written description
rejection of claims 30-37 and 40-55.
OBVIOUSNESS
The Examiner relies on Holmes for showing “a method of directing
heated or cooled air through a supply panel 3 to a vehicle cab 1 when user
pays an admission fee” to watch a movie at a drive-in theater (Ans. 3). The
Examiner relies on Wetherell for showing “a coin or payment operated air
conditioner” (id.). The Examiner relies on Kenney for teaching “an
interactive control, e. g. by coin or credit card, to activate [a] service unit
with an informational display A1, A2, B1, B2, D and to obtain electronic
payment” (id.). The Examiner concludes that it would have been obvious
6
Appeal 2009-000129
Application 10/208,905

“to control the Holmes’s air conditioner with a coin operated device of
Wetherell in order to make additional profits and to further modify the
service unit of Holmes to use credit card to activate the service unit with
informational display as taught by Kenney et al. in order to facilitate the
payment” (id. at 3-4).
With regard to the user initiated signal to terminate usage, the
Examiner finds that “it is nothing but a method of doing business. . . . In the
context of the present rejection, the user may simply turn on the engine
(sound and light signal generated and initialed by driver) and drive off
(terminate usage of service).” (Id. at 4.)
With regard to providing payment for prior use based on time of
usage, the Examiner finds:
The credit card payment in the prior art references does
constitute payment for “prior uses and based on time usage”
because credit card bills are normally on monthly basis.
Therefore, the time usage is considered to be “a month”.
Moreover, it is common practice and inherent to make
payments based “on time usage”. For example, credit card
payment for long distance telephone bills or for gas purchase at
gas station is for “prior use and based on time usage”.
(Id. at 9-10.)
Appellants argue that the applied references fail to teach or suggest
“the steps of generating a signal, initiated by the user, to terminate usage of a
service apparatus, and providing for electronic payment for prior use of the
service apparatus . . . based upon the time of usage of the service apparatus”
(App. Br. 11).
7
Appeal 2009-000129
Application 10/208,905

Issue
Have Appellants shown that the Examiner erred in concluding that the
applied references teach or suggest both “generating a signal, initiated by the
user, to terminate usage of said service apparatus” and “providing for
electronic payment for prior use of said service apparatus based on time of
usage of said service apparatus”?
Findings of Fact
6. Holmes “relates to an air conditioning system for automobiles
when parked in outdoor drive-in theaters” (Holmes, col. 1, ll. 15-17).
7. In particular, Holmes discloses a system including an air outlet
or nozzle 3 mounted on the top of an automobile window, the “air outlet or
nozzle 3 [being] connected to a flexible hose 3a which, in turn, is connected
to a hollow vertical post P. . . . The post in turn . . . is connected to a central
heating and cooling system.” (Id. at col. 1, ll. 61-71.)
8. Wetherell discloses a “system for cooling outdoor golf practice
tees” located in a building housing several practice tees each partially
enclosed by building structure, the system including an air conditioning unit,
a vent within each enclosure, and a blower motor including “a fan directed
such that rotations of the motor result in blowing of conditioned air through
the vent” (Wetherell, col. 2, l. 42, to col. 3, l. 2).
9. Wetherell discloses that “[e]ach enclosure includes a check
control mechanism designed to receive money and responsive to receipt of
the proper amount activating the blower motor for a prescribed period of
time” (id. at col. 3, ll. 3-6).
8
Appeal 2009-000129
Application 10/208,905

10. Kenney discloses a “coin and credit card activated windshield
washer solution dispensing system . . . through which an operator can neatly
transfer a metered amount of windshield washer solution directly into a
motor vehicle’s windshield washer fluid reservoir” (Kenney, Abstract).
11. In particular, Kenney discloses a system that is “coin-operated
or operated through the use of a credit or debit card, or all three. Activation
. . . by insertion therein of a coin or credit card, would cause dispensing of a
calibrated flow of windshield washer solution for a pre-determined period of
time.” (Id. at col. 4, ll. 25-31).
12. Kenney also discloses that the dispensing gun “would have a
cut-off control that is easily operable by a motorist to prevent overfill of a
vehicle windshield washer fluid reservoir and spillage” (id. at col. 4, ll. 22-
25).
13. In addition, Kenney discloses:
If the system was calibrated by its owner to fill an average
vehicle reservoir to an approximate ninety percent fluid
capacity, and the reservoir to be filled was already one-third
full, the operator would have to manipulate the nozzle cut-off
control until the system again became inactive to prevent
overfill of the reservoir. In contrast, if the system was
calibrated to fill vehicle reservoirs to an approximate fifty
percent capacity, and the reservoir to be filled was already one-
fourth full, the operator could choose whether to add one
dispensed amount of windshield washer solution without use of
the nozzle cut-off control, or to pay for a second timed period
of dispensing and manipulate the nozzle cut-off control when
the reservoir became full to prevent spillage.
(Id. at col. 4, ll. 36-49.)
9
Appeal 2009-000129
Application 10/208,905

Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted). “It is fundamental that rejections under 35
U.S.C. § 103 must be based on evidence comprehended by the language of
that section.” In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983).
Analysis
Holmes discloses a service apparatus providing air conditioning to a
parked automobile (FF 6-7). It is undisputed that Holmes does not disclose
“generating a signal, initiated by the user, to terminate usage of said service
apparatus” or “providing for electronic payment for prior use of said service
apparatus based on time of usage of said service apparatus.” In addition, we
agree with Appellants that the Examiner has not set forth a prima facie case
that it would have been obvious, based on the disclosures in Wetherell and
Kenney, to both “generat[e] a signal, initiated by the user, to terminate usage
of said service apparatus” and “provid[e] for electronic payment for prior
use of said service apparatus based on time of usage of said service
apparatus.”
First, we do not agree that the signal generating step should be
interpreted to include turning on the engine and driving off while the service
apparatus continues to run. While driving off arguably terminates the user’s
enjoyment of the service apparatus, the Examiner has not adequately
explained why turning on the engine, or the sound and/or light associated
10
Appeal 2009-000129
Application 10/208,905

therewith, constitutes a signal that a service apparatus would recognize as a
signal to terminate usage.
In addition, the Examiner has not adequately explained how the
applied references teach or suggest providing payment for prior use based on
the time of usage of the service apparatus. Although Kenney discloses a
nozzle cut-off control, Kenney does not disclose that the payment is for prior
use based on the time of usage (FF 10-13). Instead, as Appellants correctly
point out, Kenney teaches an apparatus, wherein patrons pay a fixed “charge
in advance to receive a pre-set amount of windshield washer solution,
regardless of the amount actually used” (App. Br. 13; see also FF 10-13).
The same is true of Wetherell’s apparatus, which allows patrons to purchase
air conditioning for a fixed duration of time (App. Br. 12; see also FF 9).
The Examiner argues that “it is common practice and inherent to
make payments based ‘on time usage’. For example, credit card payment
for long distance telephone bills or for gas purchase at gas station is for
‘prior use and based on time usage’.” (Ans. 9-10.) However, the Examiner
has not established an evidentiary basis in fact to support a conclusion that a
service apparatus taught by the combination of prior art relied upon could
somehow be modified to provide for payment for prior use based on time
usage. Accordingly, we are not persuaded by the Examiner’s unsupported
conjecture to the contrary.
With regard to claims 31, 33, 35-37, 40-42, and 44, which depend
from claim 30, the Examiner additionally relies on Giordano or Park ’N
View (Ans. 4-6). However, the Examiner has not pointed to any disclosure
11
Appeal 2009-000129
Application 10/208,905

in Giordano or Park ’N View that would make up for the deficiencies
discussed above.
Conclusion
Appellants have shown that the Examiner erred in concluding that the
applied references teach or suggest both “generating a signal, initiated by the
user, to terminate usage of said service apparatus” and “providing for
electronic payment for prior use of said service apparatus based on time of
usage of said service apparatus.” We therefore reverse the obviousness
rejections of claims 30-37 and 40-51.
SUMMARY
We reverse the rejection of claims 30-37 and 40-55 under 35 U.S.C.
§ 112, first paragraph, and the rejection of claims 30-37 and 40-51 under
35 U.S.C. § 103.

REVERSED

Ssc:
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202

12