Basir, Otman A. et al.

Patent Trials and Appeals Board

Apr 2, 2021

2019003657 (P.T.A.B. Apr. 2, 2021)

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.
13/559,930 07/27/2012 Otman A. Basir 60449-235 PUS1 1000
26096 7590 04/02/2021
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
BUTLER, RODNEY ALLEN
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
04/02/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OTMAN A. BASIR and WILLIAM BEN MINERS
____________

Appeal 2019-003657
Application 13/559,930
Technology Center 3600
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
PAUL J. KORNICZKY, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10, and 27–32, which are all the
pending claims. See Appeal Br. 3–10; Final Act. 1 (Office Action
Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
INTELLIGENT MECHATRONIC SYSTEMS INC. Appeal Br. 1.
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Application 13/559,930

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a vehicle monitoring
system in which a user can designate some usage as personal, such that the
location of the vehicle is not tracked,” where the “user can designate the
usage as personal in terms of time of day or day of the week or in terms of
geographic areas.” Spec. ¶ 4. Claims 1 and 6, reproduced below with
emphasis added, are the independent claims and are representative of the
subject matter on appeal.
1. A vehicle monitoring system comprising:
a location-determining device;
a communication device; and
a processor programmed to transmit a plurality of
locations as determined by the location-determining device over
the communication device, the processor programmed to
receive a user selection of locations not to transmit over the
communication device, the processor programmed not to
transmit the user selection of locations over the communication
device.

6. A method for monitoring a vehicle including the steps of:
a) monitoring locations of a vehicle over time;
b) a processor receiving a user selection of criteria for
which the locations should not be reported, wherein the user
selection of criteria includes a geographic area; and
c) the processor transmitting locations monitored in
step a) via a communication device, excluding locations
meeting the criteria.

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Application 13/559,930

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Fan US 2003/0009277 A1 Jan. 9, 2003
Edlund US 2003/0135486 A1 July 17, 2003
Collins ’692 US 2012/0109692 A1 May 3, 2012

REJECTION
The following rejection is before us for review: Claims 1–8, 10, and
27–32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Collins ’692 in view of Edlund or Fan. Final Act. 8–16.

ANALYSIS
The Examiner’s rejection of all the claims relies on Collins ’692 for
disclosing certain programming features of a processor, as recited in both
independent claims 1 and 6. Final Act. 8–9 (citing Collins ’692 ¶¶ 48, 55,
57, 62, 71); id. at 11. Appellant makes a threshold argument that at least
some of the disclosures from Collins ’692 relied on in the rejection do not
qualify as prior art to the present application. See Appeal Br. 3–7; Reply
Br. 1–2. In short, we agree with Appellant that the Examiner’s reliance on
certain disclosure from Collins ’692 is a fatal flaw in the rejection of record.
Appellant notes, and the Examiner does not dispute, that the present
application (filed July 27, 2012) claims priority to two provisional
applications—namely, Application 61/512,035 (filed July 27, 2011) and
Application 61/560,129 (filed November 15, 2011). Appeal Br. 3.
Appellant states that the claimed subject matter “is fully supported at least
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Application 13/559,930

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by Appellant’s second provisional application,” providing a priority date at
least as early as November 15, 2011. Id. at 4. Again, the Examiner does not
dispute this entitlement or make any findings that Appellant’s present claims
would not be entitled to this priority date.
Turning to the cited reference of Collins ’692, this published patent
application, which was filed December 12, 2011, is a continuation-in-part
(“CIP”) of Application 13/109,418, filed May 17, 2011 (the “Collins parent
application”), published as US 2012/0072243 A1 on March 22, 2012
(“Collins ’243”). Because the filing date of Collins ’692 (December 12,
2011) is after the priority date of the present application (at least as early as
November 15, 2011), the Examiner is relying on the earlier filing date of
the Collins parent application. But only the subject matter disclosed in the
Collins parent application would be entitled to this earlier filing date. Stated
in more straightforward terms, we agree with Appellant that, “to make things
simpler,” “the Examiner [should] have just cited the Collins parent
application [Collins ’243], which is prior art,” because only subject matter
disclosed therein qualifies as prior art to the present application. Appeal
Br. 3; see also Reply Br. 1 n.1 (same).
It seems somewhat telling in this case that the Examiner did not
simply cite to Collins ’243 (the Collins parent application) in the rejection,
as that reference does not include at least some of the disclosures relied on in
the rejection. See, e.g., Final Act. 8–9. This discrepancy illustrates the
problem of citing to Collins ’692. See Appeal Br. 5–7. In particular,
Appellant reproduces cited paragraphs 55 and 57 from Collins ’692 (along
with corresponding paragraphs 53 and 55 from Collins ’243 for ready
comparison), illustrating that the disclosures most relevant to the
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Application 13/559,930

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programming features of a processor claimed appear only in Collins ’692
and are not included in Collins ’243. Id. Stated another way, we agree with
Appellant that at least some of the disclosures from Collins ’692 relied on in
the rejection of record are not entitled to the earlier filing date of
Collins ’243 and, thus, are not prior art to Appellant’s present claims.
Because some “critical part[s]” of the disclosure of Collins ’692, as
relied on in the rejection, are not prior art to the present invention (Appeal
Br. 5), the rejection before us for review is fundamentally flawed and we do
not sustain it.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1–8, 10, and
27–32 under 35 U.S.C. § 103(a) as being unpatentable over Collins ’692 in
view of Edlund or Fan.

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10,
27–32 103(a)
Collins ’692, Edlund,
Fan
1–8, 10,
27–32

REVERSED