Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Jun 22, 2009

10209519 (B.P.A.I. Jun. 22, 2009)

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.
10/209,519 07/30/2002 Arnold C. Wilson IATC / 11 5804
26875 7590 06/22/2009
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
LU, JIPING
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
06/22/2009 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 ARNOLD C. WILSON,
DAVID EVERHART, and J. T. BADGETT
__________

Appeal 2009-000224
Application 10/209,519
Technology Center 3700
__________

Decided:1 June 22, 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 service
unit for providing a convenience service to a cab of a tractor trailer. The

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).
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Examiner has rejected the claims as obvious and/or lacking written
description. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 30-54 are pending and on appeal (App. Br. 3). We will focus
on claims 30 and 50, which read as follows:
30. A service unit for providing a convenience service to a cab of a tractor
trailer, comprising;
a housing;
a supply panel coupled to said housing and operable to attach to
a cab of a tractor trailer, said supply panel providing conditioned air to
said cab and providing at least one convenience service selected from
the group consisting of radio signals, electrical power, telephone,
computer network and video;
an interactive control configured to activate said service unit, to
generate a signal initiated by a user to terminate usage of said service
unit, and to electronically obtain payment for prior use of said service
unit based on time of usage of said service unit; and
a display configured to provide information to an operator of
said service unit.
50. A service unit for providing a convenience service to a cab of a tractor
trailer, comprising:
a housing;
a supply panel coupled to said housing and operable to attach to
a cab of a tractor trailer, said supply panel providing conditioned air to
said cab;
an interactive control operable to activate said service unit so as
to provide conditioned air to said cab, to generate a signal initiated by
a user to terminate usage of said service unit, and to electronically
obtain payment for prior use of said service unit based on time of
usage of said service unit; and
a display configured to provide information to an operator of
said service unit.
Claims 30-54 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Ans. 3).
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Claims 50-53 stand rejected under 35 U.S.C. § 103(a) as obvious over
Smith2 in view of Wetherell3 and Kenney4 (Ans. 3).
Claims 30-32, 34-38, 43-45, and 48 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Smith in view of Park ’N View 19985 or Park ’N
View 1996,6 together with Wetherell and Kenney (Ans. 4).
Claim 33 stands rejected under 35 U.S.C. § 103(a) as obvious over
Smith in view of Park ’N View 1998 or Park ’N View 1996, together with
Wetherell, Kenney, and Whiteman7 (Ans. 6).
Claims 40, 46, and 47 stand rejected under 35 U.S.C. § 103(a) as
obvious over Smith in view of Park ’N View 1998 or Park ’N View 1996,
together with Wetherell, Kenney, and Takach8 (Ans. 6).
Claims 30-32, 34-38, 43-45, and 48 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Holmes9 in view of Park ’N View 1998 or Park ’N
View 1996, together with Wetherell and Kenney (Ans. 7).
Claim 33 stands rejected under 35 U.S.C. § 103(a) as obvious over
Holmes in view of Park ’N View 1998 or Park ’N View 1996, together with
Wetherell, Kenney, and Whiteman (Ans. 9).

2 Smith et al., US 2,746,372, May 22, 1956.
3 Wetherell, US 6,109,049, Aug. 29, 2000.
4 Kenney et al., US 5,957,329, Sep. 28, 1999.
5 Park ’N View, Inc. Secures Financing for National Expansion, PR
Newswire, Dec. 9, 1996.
6 Park ’N View Completes Its 125th Truckstop Installation At TravelCenters
of America, Ontario, Ca., Business Wire, Aug. 25, 1998.
7 Whiteman, US 4,632,019, Dec. 30, 1986.
8 Takach, US 2,646,496, Jul. 21, 1953.
9 Holmes, US 2,962,951, Dec. 6, 1960.
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Claims 40, 46, and 47 stand rejected under 35 U.S.C. § 103(a) as
obvious over Holmes in view of Park ’N View 1998 or Park ’N View 1996,
together with Wetherell, Kenney, and Takach (Ans. 9).
Claim 49 stands rejected under 35 U.S.C. § 103(a) as obvious over
Holmes in view of Park ’N View 1998 or Park ’N View 1996 (Ans. 10).
Claim 54 stands rejected under 35 U.S.C. § 103(a) as obvious over
Holmes in view of Park ’N View 1998 or Park ’N View 1996, together with
Kenney (Ans. 11).
WRITTEN DESCRIPTION
The Examiner finds that the “newly added ‘to generate a signal
initiated by a user to terminate usage of said service unit’ 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 unit” (id. at 13). In addition, the Examiner finds:
[T]he keypad 224 [cannot be interpreted to] generate a signal to
terminate service unit as suggested by the appellant. The
keypad 224 is provided to send numerical identification as
stated on page 12 of the specification. There is nothing
mentioned regarding interactive control configuration to
generate a signal to terminate service unit.
(Id. at 14.)
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
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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. 10-11.)
Issue
Have Appellants shown that the Examiner erred in finding that the
Specification fails to provide written descriptive support for the claim
recitation “to generate a signal initiated by a user to terminate usage of said
service unit”?
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,
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tracks the use of convenience services provided, and compiles billing
information” (id. at 11: 24-26 & 12: 16-18).
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.
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: 5-12.)
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: 19-23.)
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
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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
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. 10-11). Thus, although the Specification does not specifically
refer to a signal to terminate usage of the service unit, we agree with
Appellants that the Specification conveys that the inventors were in
possession of this concept.
In addition, the Specification discloses that the card reader 218 and
the operator interface sub-panel 220, which includes the keypad 224, are
mechanisms through which the operator establishes communication with the
control system “to discontinue use of the convenience services” (FF 5 & 2).
Thus, whether or not the Specification specifically discloses utilizing the
keypad 224 to generate a signal to terminate usage, we find that
Specification provides adequate written description to support the recitation
that the interactive control is configured (claim 30) or operable (claims 49,
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50, & 54) “to generate a signal initiated by a user to terminate usage of said
service unit.”
Conclusion
Appellants have shown that the Examiner erred in finding that the
Specification fails to provide written descriptive support for the claim
recitation “to generate a signal initiated by a user to terminate usage of said
service unit.” We therefore reverse the written description rejection of
claims 30-54.
OBVIOUSNESS
“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).
CLAIMS 50-53
The Examiner rejects claims 50-53 as obvious over Smith in view of
Wetherell and Kenney (Ans. 3). We will focus on claim 50.
The Examiner relies on Smith for showing “a service unit with a
housing 5 and a supply panel 29 for directing heated or cooled air to a
vehicle cab 6 when user pays an admission fee” to watch a movie at a drive-
in theater (id.). The Examiner relies on Wetherell for showing “a coin or
payment operated air conditioner” (id.).
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The Examiner relies on Kenney for showing “an interactive control,
e. g. by credit card, to activate [a] service unit with an informational display
A1, A2, B1, B2, D and obtain electronic payment for prior uses” (id.). The
Examiner finds that the “user initiates a signal to terminate usage of the
service unit . . . by manipulat[ing] the nozzle cut off control” (id. at 4).
The Examiner concludes that it would have been obvious
to control . . . Smith’s air conditioner with a coin operated
device of Wetherell in order to make additional profits and to
further modify the service unit of Smith to include an
interactive control with a display which uses credit card to
activate the service unit and generates a signal initiated by a
user to terminate usage of the service unit as taught by Kenney
et al. in order to facilitate the payment.
(Id.)
Issue
Have Appellants shown that the Examiner erred in concluding that the
applied references teach or suggest an interactive control operable to
“electronically obtain payment for prior use of said service unit based on
time of usage of said service unit”?
Findings of Fact
6. Smith “relates to air conditioners for automobiles” (Smith,
col. 1, ll. 15-16).
7. In particular, Smith discloses that the “device is adapted for use
on outdoor motion picture lots and the like, and the automobiles 6, to be
conditioned, are parked on opposite sides of the device . . and [are] serviced
with recirculating air through their window openings above the slidable
glass” (id. at col. 2, ll. 8-13).
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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).
10. The Examiner does not rely on Smith or Wetherell for
disclosing or suggesting an interactive control operable or configured “to
electronically obtain payment for prior use of said service unit based on time
of usage of said service unit” (Ans. 3-4).
11. 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).
12. 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).
13. 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
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vehicle windshield washer fluid reservoir and spillage” (id. at col. 4, ll. 22-
25).
14. 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.)
Analysis
The Examiner relies on Kenney for disclosing an interactive control
(Ans. 3). Kenney discloses a “coin and credit card activated windshield
washer solution dispensing system” (FF 11). In particular, Kenney discloses
that insertion of a coin or credit card causes “dispensing of a calibrated flow
of windshield washer solution for a pre-determined period of time” (FF 12).
Kenney also discloses a nozzle cut-off control, which can be used when the
reservoir becomes full to prevent spillage (FF 13-14). However, the
Examiner has not pointed to any teaching or suggestion in Kenney that,
when the nozzle cut-off control is used, the payment is based on the length
of time the solution was dispensed or even that Kenney’s control obtains the
payment after the solution is dispensed. Thus, we agree with Appellants that
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the Examiner has not set forth a prima facie case that Kenney discloses or
suggests “an interactive control operable . . . to electronically obtain
payment for prior use of said service unit based on time of usage of said
service unit.”
The Examiner argues, however, that credit card payment “does
constitute payment for ‘prior uses and based on time usage’ because credit
card bills are normally [sic] on monthly basis. Therefore, the time usage is
considered to be ‘a month’.” (Ans. 4.) We do not agree. First, the “time of
usage” recitation in claim 50 clearly refers to the “time of usage” of the
service unit, and has nothing to do with when a credit card bill is paid. In
addition, the claims require that the service unit comprises an interactive
control operable to electronically obtain payment. When the credit card user
pays his or her credit card bill has no bearing on when the interactive control
of the service unit obtains payment from a credit card company. Thus, that a
credit card user may pay his or her bill on a monthly basis does not
demonstrate that Kenney discloses “an interactive control operable . . . to
obtain payment for prior use of said service unit based on time of usage of
said service unit.”
The Examiner also 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 is for ‘prior use and based on time usage’.”
(Ans. 4.) However, the Examiner has not shown that any of the applied
references disclose an interactive control operable to “obtain payment for
prior use of [a] service unit based on time of usage of said service unit.” In
addition, we do not agree that the Examiner’s unsupported statement
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concerning credit card payment for long distance telephone bills is sufficient
to establish a prima facie case of obviousness.
Conclusion
Appellants have shown that the Examiner erred in concluding that the
applied references teach or suggest an interactive control operable “to
electronically obtain payment for prior use of said service unit based on time
of usage of said service unit.” We therefore reverse the obviousness
rejection of claim 50 and claims 51-53, which depend from claim 50.
CLAIMS 30-38, 40, 43-49, & 54
The Examiner rejects claims 30-32, 34-38, 43-45, and 48 as obvious
over Smith or Holmes in view of Park ’N View 1998 or Park ’N View 1996,
together with Wetherell and Kenney (Ans. 4 & 7). The Examiner also
rejects claim 33 as obvious over Smith or Holmes in view of Park ’N View
1998 or Park ’N View 1996, together with Wetherell, Kenney, and
Whiteman and claims 40, 46, and 47 as obvious over Smith or Holmes in
view of Park ’N View 1998 or Park ’N View 1996, together with Wetherell,
Kenney, and Takach (id. at 6 & 9). In addition, the Examiner rejects
claim 49 as obvious over Holmes in view of Park ’N View 1998 or Park ’N
View 1996 and rejects claim 54 as obvious over Holmes in view of Park ’N
View 1998 or Park ’N View 1996, together with Kenney (id. at 10-11). We
will focus on claim 30.
The Examiner relies on Smith, Wetherell, and Kenney substantially as
discussed above (Ans. 4-6). The Examiner relies on Park ’N View 1998 or
Park ’N View 1996 for teaching “providing fax, phone calls and
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Internet/data connectivity and cable television services to the truck drivers”
(id. at 5).
Alternatively, the Examiner relies on Holmes for showing
a vehicle stop having multiple parking spaces for providing
convenience services to the stationary vehicles 1 comprising a
plurality of parking places each having a separate service unit
with a housing (not show) for enclosing an HVAC unit and
connectors, at least one conduit arm 3a, a panel 3 dimensioned
[to] substantially fit a window of the stationary vehicle and a
gasket for forming a substantially airtight seal between window
and the panel. Said supply panel 3 has a speaker 12 to enable
patrons to phone in orders for refreshments.
(Ans. 7.) The Examiner finds that the “speaker 12 of Holmes may be
arguably considered a[] telephone” and that the “switches 13, 14 are
considered a display showing switch information at on or off positions” (id.).
As combined with Holmes, the Examiner relies on Wetherell, Kenney, and
Park ’N View 1998 or Park ’N View 1996 substantially as discussed above
(id. at 8-9).
Issue
Have Appellants shown that the Examiner erred in concluding that the
applied references teach or suggest an interactive control configured or
operable “to electronically obtain payment for prior use of said service unit
based on time of usage of said service unit”?
Finding of Fact
15. The Examiner does not rely on any of Holmes, Park ’N View
1998, and Park ’N View 1996 for disclosing an interactive control
configured or operable “to electronically obtain payment for prior use of said
service unit based on time of usage of said service unit” (Ans. 5 & 7-9).
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Analysis
The Examiner does not rely on any of Smith, Holmes, Park ’N View
1998, Park ’N View 1996, or Wetherell for disclosing an interactive control
configured “to electronically obtain payment for prior use of said service
unit based on time of usage of said service unit” (FF 10 & 15). Kenney does
not overcome the deficiencies of Smith or Holmes, Park ’N View 1998 or
Park ’N View 1996, and Wetherell for the reasons discussed above.
With regard to claims 33, 40, 46, and 47, which depend from
claim 30, the Examiner additionally relies on Whiteman or Takach (Ans. 6-7
& 9-10). However, the Examiner has not pointed to any disclosure in
Whiteman or Takach that would make up for the deficiency discussed
above.
Conclusion
Appellants have shown that the Examiner erred in concluding that the
applied references teach or suggest an interactive control configured or
operable “to electronically obtain payment for prior use of said service unit
based on time of usage of said service unit.” We therefore reverse the
obviousness rejection of claim 30 and of claims 31-38, 40, & 43-48, which
depend from claim 30. For at least the same reasons, we also reverse the
rejections of claims 49 and 54, which recite “an interactive control operable
. . . to electronically obtain payment for prior use of said service unit based
on time of usage of said service unit.”
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SUMMARY
We reverse the rejection of claims 30-54 under 35 U.S.C. § 112, first
paragraph, and the rejection of claims 30-38, 40, 43-54 under 35 U.S.C.
§ 103.

REVERSED

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