Ex Parte 5819201 et al

Patent Trial and Appeal Board

Jun 25, 2014

90012382 (P.T.A.B. Jun. 25, 2014)

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.
90/012,382 06/29/2012 5819201 B063-0009RE 6408
29150 7590 06/26/2014
LEE & HAYES, PLLC
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
LIE, ANGELA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/26/2014 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 BEACON NAVIGATION, GMBH
Patent Owner, Appellant
____________

Appeal 2014-004063
Reexamination Control 90/012,271
Patent 5,819,2011
Technology Center 3900
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and J. JOHN LEE,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination appeal proceeding (the “’201
patent”) issued to Brent L. DeGraaf on October 6, 1998.
Appeal 2014-004063
Patent 5,819,201
Reexamination Control 90/012,271

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A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a third-party request
(“Req.”), filed by Volkswagen Group of America, Inc. (“VWGoA”) on April
26, 2012, for ex parte reexamination of U.S. Patent No. 5,819,201 pursuant
to 35 U.S.C. § 302 and the provisions of 37 C.F.R. § 1.510. Req. 1. The
resulting reexamination proceeding was assigned control number 90/012,271
(the “’271 proceeding”), and reexamination of Claims 1 and 12 was granted.
On June 29, 2012, the same third-party requestor filed a second request for
ex parte reexamination of the ’201 patent, and on August 16, 2012, the
Office issued an order granting ex parte reexamination of Claim 18. The
resulting proceeding was assigned control number 90/012,382 (the “’382
proceeding”). On January 28, 2013, the Office sua sponte merged the ’271
and ’382 proceedings into the present ’271 proceeding. See Decision Sua
Sponte Merging Proceedings (“Merger Decision).
Assignee, Beacon Navigation GMBH (“Patent Owner,” “Appellant”)
appeals under 37 C.F.R. § 41.372 from the Reexamination Final Action,
dated September 3, 2013 (“Final Act.”), finally rejecting independent Claims
1, 12, and 18.3

2 Appellant relies on its Appeal Brief, filed December 2, 2013 (“App. Br.”),
and its Reply Brief, filed March 7, 2014 (“Reply Br.”).
3 Claims 2-11, 13-17, and 19-23 are not subject to reexamination. Final
Act. 3. (The pages of the Reexamination Final Action are not numbered.
The numbering corresponds sequentially to the pages as they appear in the
record.)
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We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An Oral
Hearing was held on May 28, 2014. We AFFIRM.
Related Proceedings
In addition to the merged reexamination proceedings, Appellant (App.
Br. 3-5) informs the Office of the following judicial proceedings involving
the ’201 patent, all in the Eastern District of Michigan:
2:13-cv-11389-PJD-MAR 2:13-cv-11407-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. AUDI AG; AUDI OF
AMERICA, INC.; AND AUDI OF
AMERICA, LLC, Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. BAYERISCHE
MOTOREN WERKE AG, et al.,
Defendants.

2:13-cv-11378-PJD-MAR 2:13-cv-11381-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. CHRYSLER GROUP
LLC, Defendant.
BEACON NAVIGATION GMBH,
Plaintiff, vs. FORD MOTOR
COMPANY, Defendant.

2:13-cv-11386-PJD-MAR 2:13-cv-11412-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. GENERAL MOTORS
LLC, Defendant.
BEACON NAVIGATION GMBH,
Plaintiff, vs. HONDA MOTOR CO.
LTD., et al, Defendants.

2:13-cv-11414-PJD-MAR 2:13-cv-11440-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. HYUNDAI MOTOR
COMPANY, et al., Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. KIA MOTORS CORP.,
et al., Defendants.

2:13-cv-11444-PJD-MAR 2:13-cv-11452-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. MAZDA MOTOR
CORPORATION, et al.,
Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. DAIMLER AG, et al.,
Defendants.
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2:13-cv-11459-PJD-MAR 2:13-cv-11499-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. NISSAN MOTOR CO.
LTD., et al., Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. DR. ING. H.C. F.
PORSCHE AG, et al., Defendants.

2:13-cv-11516-PJD-MAR 2:13-cv-11507-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. SUZUKI MOTOR
CORPORATION, et al.,
Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. FUJI HEAVY
INDUSTRIES LTD., et al.,
Defendants.

2:13-cv-11422-PJD-MAR 2:13-cv-11509-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. JAGUAR LAND
ROVER NORTH AMERICA LLC,
et al., Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. TOYOTA MOTOR
CORPORATION, et al.,
Defendants.

2:13-cv-11511-PJD-MAR 2:13-cv-11513-PJD-MAR
BEACON NAVIGATION GMBH,
Plaintiff, vs. VOLKSWAGEN AG,
VOLKSWAGEN GROUP OF
AMERICA, INC., AND
VOLKSWAGEN GROUP OF
AMERICA CHATTANOOGA
OPERATIONS, LLC, Defendants.
BEACON NAVIGATION GMBH,
Plaintiff, vs. VOLVO CAR
CORPORATION, et al.,
Defendants.

The Invention
The claims relate to a navigation system having GPS and display
means for generating and displaying vehicle service reminders. See
Abstract. Claim 1 is illustrative of the appealed subject matter and is
reproduced below (App. Br 20):
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1. An in-vehicle navigation system comprising:
a database of roads to be travelled by a vehicle;
a user input device for selecting a desired destination for
the vehicle relative to said database of roads;
a system for determining the position of the vehicle
relative to said database of roads;
a system for displaying said position of the vehicle;
a system for determining a route from said database of
roads between a position of the vehicle to said desired
destination;
a system for displaying said route to a user;
said system for determining said position of the vehicle
including a system for measuring the distance travelled by the
vehicle;
a system for displaying a vehicle service reminder based
upon a comparison of said distance travelled as determined by
said system for measuring the distance travelled and a vehicle
service distance interval.

The Prior Art
Freeman US 4,031,363 June 21, 1977
Zeevi (“’170”) US 4,878,170 Oct. 31, 1989
Bolger US 5,471,393 Nov. 28, 1995
Oshizawa US 5,898,390 Apr. 27, 1999
Kohli US 6,041,280 Mar. 21, 2000
Zeevi (“’066”) GB 2 180 066 Mar. 18, 1987

The Rejections
1. Claims 1 and 12 stand rejected under 35 U.S.C § 102(b) as
anticipated by Zeevi ’170. Ans. 6-8.
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2. Claims 1 and 12 stand rejected under 35 U.S.C § 102(b) as
anticipated by Zeevi ’066. Ans. 9-11.
3. Claims 1 and 12 stand rejected under 35 U.S.C § 103(a) as
obvious over Bolger and Freeman. Ans. 11-14.
4. Claim 18 stands rejected under 35 U.S.C § 103(a) as obvious
over Zeevi ’170 and Kohli. Ans. 15-16.
5. Claim 18 stands rejected under 35 U.S.C § 103(a) as obvious
over Zeevi ’170 and Oshizawa. Ans. 16-18.
6. Claim 18 stands rejected under 35 U.S.C § 103(a) as obvious
over Zeevi ’066 and Kohli. Ans. 18-20.
7. Claim 18 stands rejected under 35 U.S.C § 103(a) as obvious
over Zeevi ’066 and Oshizawa. Ans. 20-22.

APPELLANT’S CONTENTIONS
I. Appellant contends the Examiner ignores limitations allegedly
present in Claims 1 and 12. App. Br. 8-11.
II. Appellant contends that Zeevi ’170 fails to disclose a “system
for determining the position of the vehicle relative to the said database
of roads” (Claim 1) or a “position-determining device” (Claim 12).
App. Br. 11.

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ANALYSIS
CLAIMS 1 AND 12 AS ANTICIPATED BY ZEEVI ’170
Appellant contends that Zeevi ’170 does not have a “system for
determining the position of the vehicle relative to the said database of roads”
(Claim 1) or a “position-determining device” (Claim 12). App. Br. 11;
Reply Br. 2-3.
The Examiner finds that Zeevi ’170 discloses a system which employs
a non-volatile memory device for storing data representing a map, such as
for a region, a city, a village, or a route. Zeevi ’170 also discloses a
“position determining device” as a distance sensor and an angle sensor that
allow the location of the vehicle to be determined from the starting point of
the trip and distance traveled along maps stored in the map database. Ans.
6-7. We agree with these findings.
Appellant contends that the Examiner has proffered inconsistent
findings because, with respect to Claim 18, the Examiner expressly admits
that “Zeevi ‘170 does not explicitly teach: said navigation system
determining a distance travelled by the vehicle based on the determined
position of the vehicle.” App. Br. 11; Reply Br. 3. The Examiner answers
Claims 1 and 12 are not commensurate in scope with Claim 18. Claim 18
requires the navigation system to determine the distance travelled based on a
determination of the position of the vehicle. Therefore, the vehicle position
must be determined prior to a determination of the distance travelled.
Claims 1 and 12 do not recite such a limitation. Thus, the distance may be
determined before the vehicle’s position is determined, and consequently its
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position may be determined based on the distance travelled, as disclosed in
Zeevi ’170. Ans. 27.
We are not persuaded that the Examiner has erred in rejecting
independent Claims 1 and 12 as anticipated by Zeevi ’170.
CLAIMS 1 AND 12 AS ANTICIPATED BY ZEEVI ’066
The Zeevi ’066 reference appears to be substantially identical to the
Zeevi ’170 reference. The Examiner’s findings (Ans. 9-11; 27-28) and
Appellant’s traversals (App. Br. 12-13) are substantially the same for the two
Zeevi references. For the reasons discussed above, we are not persuaded
that the Examiner has erred in rejecting independent Claims 1 and 12 as
anticipated by Zeevi ’066.
CLAIMS 1 AND 12 AS OBVIOUS OVER BOLGER AND FREEMAN
Appellant contends that Bolger has a “speed sensor 14” through which
the navigation software “reads the distance traveled,” but does not have a
“system for determining vehicle position” or a “position-determining
device.” App. Br. 13-14.
The Examiner finds Bolger teaches a system for determining distance
traveled (“The navigation software reads the distance traveled and the
compass heading”) and a system for determining location of the vehicle,
wherein traveled distance and compass data is utilized to determine location.
See Ans. 28-29.
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Appellant does not reply to this portion of the Examiner’s Answer.
We are not persuaded that the Examiner has erred in rejecting independent
Claims 1 and 12 as obvious over Bolger and Freeman.
CLAIM 18 AS OBVIOUS OVER ZEEVI ’170 AND KOHLI
Appellant alleges, as above, that the Examiner has inconsistently
applied the Zeevi references. App. Br. 14. The Examiner finds, as discussed
above, that Claims 1 and 12 are not commensurate in scope with Claim 18.
Ans. 29.
Appellant does not reply to this portion of the Examiner’s Answer.
We are not persuaded that the Examiner has erred in rejecting Claim 18 as
obvious over Zeevi ’170 and Kohli.
CLAIM 18 AS OBVIOUS OVER ZEEVI ’170 AND OSHIZAWA
Appellant alleges, as above, that the Examiner has inconsistently
applied the Zeevi references. App. Br. 15. The Examiner finds, as discussed
above, that Claims 1 and 12 are not commensurate in scope with Claim 18.
Ans. 30.
Appellant does not reply to this portion of the Examiner’s Answer.
We are not persuaded that the Examiner has erred in rejecting Claim 18 as
obvious over Zeevi ’170 and Oshizawa.
CLAIM 18 AS OBVIOUS OVER ZEEVI ’066 AND KOHLI
Appellant alleges, as above, that the Examiner has inconsistently
applied the Zeevi references. App. Br. 16. The Examiner finds, as discussed
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above, that Claims 1 and 12 are not commensurate in scope with Claim 18.
Ans. 31.
Appellant does not reply to this portion of the Examiner’s Answer.
We are not persuaded that the Examiner has erred in rejecting Claim 18 as
obvious over Zeevi ’066 and Kohli.
CLAIM 18 AS OBVIOUS OVER ZEEVI ’066 AND OSHIZAWA
Appellant alleges, as above, that the Examiner has inconsistently
applied the Zeevi references. App. Br. 17. The Examiner finds, as discussed
above, that Claims 1 and 12 are not commensurate in scope with Claim 18.
Ans. 31-32.
Appellant does not reply to this portion of the Examiner’s Answer.
We are not persuaded that the Examiner has erred in rejecting Claim 18 as
obvious over Zeevi ’066 and Oshizawa.
ANDREWS DECLARATION
Appellant contends that the Andrews Declaration contains legal
conclusions that Mr. Andrews is not competent to make. Therefore, the
Examiner improperly relies on the Andrews Declaration. App. Br. 18. In
view of the Examiner’s explicit findings concerning the disclosure and
teachings of the references, we accept that the Examiner relied on the
references themselves, and not on Mr. Andrews’ legal conclusions. See Ans.
32.

Appeal 2014-004063
Patent 5,819,201
Reexamination Control 90/012,271

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DECISION
The rejections of Claims 1, 12, and 18 under 35 U.S.C. §§ 102 and
103 are AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

msc

For Patent Owner:

LEE & HAYES, PLLC
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201

For Third Party Requester:

CLIFFORD A. ULRICH
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004