Ex Parte Kim

Patent Trial and Appeal Board

Mar 20, 2017

13141518 (P.T.A.B. Mar. 20, 2017)

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.
13/141,518 06/22/2011 Jae Hoon Kim D297.12-0017 5585
27367 7590 03/20/2017
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
DUONG, OANH
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
03/20/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JAE HOON KIM
Appeal 2016-005780
Application 13/141,518
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the Non-
Final Rejection of claims 1—4 and 9—19. Appeal Brief 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
Appellant’s invention relates to a “method for setting a remote
transmission cycle of information of a construction machinery for enabling a
user or a provider to directly set the transmission cycle of the information of
the construction machinery.” Abstract.
Appeal 2016-005780
Application 13/141,518
Illustrative Claim (Disputed limitations emphasized)
10. A method for transmitting a plurality of packets to a
server, the plurality of packets comprising at least a first packet
of a first type and a second packet of a second type, the method
comprising:
acquiring, if a communication terminal receives an
indicator which indicates a mode, the mode corresponding to a
set of cycle values, wherein the set of cycle values comprises a
first cycle value for the first type and a second cycle value for the
second type;
transmitting the first packet according to the first cycle
value; and
transmitting the second packet according to the second
cycle value thereby adjusting cycle values according to user’s
need for each information and expected cost of communication.
Rejections on Appeal
Claims 10-14 and 15—19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Norimatsu (US Patent Application Publication
Number 2004/0046651 Al; published March 11, 2004), in view of
Sekiguchi (US Patent Application Publication Number 2010/0007333 Al;
published January 14, 2010). Non-Final Rejection 2.
Claims 1^4 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Furuno (US Patent Application Publication Number
2006/0212203 Al; published September 21, 2006), in view of Sekiguchi.
Non-Final Rejection 7.
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Appeal 2016-005780
Application 13/141,518
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Non-Final Rejection (mailed November 18, 2014), the
Appeal Brief (filed June 1, 2015), and the Answer (mailed February 24,
2016) for the respective details. We have considered in this decision only
arguments Appellant actually raised in the Briefs.
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief, except where
noted.
Claim 10
Appellant argues Examiner error because “the cited combination fails
to teach or suggest the step limitation recited in independent method claim
10 of ‘transmitting the second packet according to the second cycle value
thereby adjusting cycle values according to user’s need for each information
and expected cost of communication.’” Appeal Brief 6. Appellant contends
the “transmitting the second packet” limitation is not taught or suggested by
either
(1) Norimatsu, because “[a]ll the data packets sent by the sensors are of
the same type” (Appeal Brief 6), or
(2) Sekiguchi, because “the intervals are determined by the time required
for arithmetic operation for generating each of the information types.”
Appeal Brief 7.
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Appeal 2016-005780
Application 13/141,518
Appellant further contends “the Examiner erred in combining Norimatsu and
Sekiguchi without establishing a teaching, motivation or suggestion to
combine these references in an attempt to reach the claimed invention”
(Appeal Brief 6) because “the technical field of Sekiguchi is very different
from that of the present invention.” Appeal Brief 7—8.
We are not persuaded by Appellant’s arguments. Regarding the
“transmitting the second packet” limitation, the Examiner finds the element
“thereby adjusting cycle values according to user’s need for each
information and expected cost of communication” is “not given patent[able]
weight when it merely expresses the intended result of [the] transmitting step
positively recited.” Answer 10. The Examiner finds the remainder of the
limitation taught by Norimatsu. See Answer 10, citing Norimatsu 166.
We agree. Given the language used, the “thereby” clause recited in
claim 10 is reasonably interpreted to identity the intended result when two
different cycle values are transmitted. Thus, the “thereby” clause at issue is
akin to a “whereby” clause that merely states an intended result. Our
reviewing court has concluded that “[a] ‘whereby’ clause that merely states
the result of the limitations in the claim adds nothing to the patentability or
substance of the claim.” (Citation omitted.) Compare Texas Instruments,
Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1172 (Fed. Cir. 1993)
(finding the whereby clause “merely describe[s] the result of arranging the
components of the claims in the manner recited in the claims.”) with Hoffer
v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (“‘a whereby
clause in a method claim is not given weight when it simply expresses the
intended result of a process step positively recited’. . . . However, when the
‘whereby’ clause states a condition that is material to patentability, it cannot
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Appeal 2016-005780
Application 13/141,518
be ignored in order to change the substance of the invention.”). Here, the
recited two cycle values cause the result obtained in the thereby clause, and
Appellant offers no evidence that the substance of the thereby clause is a
condition that is material to the patentability of claim 10. Additionally,
Appellant does not address and challenge the Examiner’s finding regarding
Norimatsu 166 as teaching the remainder of the “transmitting the second
packet” limitation.
Regarding Appellant’s argument that the Examiner failed to find a
motivation to combine the references, we agree with the Examiner that
motivation “to adjust Norimatsu’s transmission intervals” would be found by
one of ordinary skill in the art as it would lead to an improved “economy and
reliability” as taught by Sekiguchi. Answer 13, citing Norimatsu 144 and
Sekiguchi || 135, 16. Appellant’s argument that the technical field of
Sekiguchi is “very different” is non-persuasive attorney argument.1 Appeal
Brief 8—9.
Accordingly, we sustain the Examiner’s rejection of independent
claim 10. As Appellant makes essentially the same arguments for
independent claim 15 (see Appeal Brief 6—8), we sustain the Examiner’s
rejection of claim 15 for similar reasons, and we sustain the Examiner’s
rejection of dependent claims 11—14 and 16—19 not separately argued. See
Appeal Brief 7.
1 Attorney “argument. . . cannot take the place of evidence.” In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). See, e.g., In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are
insufficient to rebut a prima facie case).
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Appeal 2016-005780
Application 13/141,518
Claim 1
Appellant argues that neither Sekiguchi nor Furuno teaches or suggest
the “thereby” clause of claim 1. Appeal Brief 8—9. We do not find
Appellant’s argument persuasive for the reasons described above regarding
claim 10. Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and dependent claims 2-4 and 9 not separately argued. See Appeal
Brief 9.
DECISION
We affirm the Examiner’s rejection of claims 1—4 and 9—19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
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