Ex Parte 6,604,033 et al

Patent Trial and Appeal Board

Apr 30, 2014

90011304 (P.T.A.B. Apr. 30, 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.
90/011,304 12/01/2010 6,604,033 WTWI.P0001RE2 4336
39894 7590 04/30/2014
HUGHES TELEMATICS, INC.
2002 Summit Blvd
Suite 1800
ATLANTA, GA 30319
EXAMINER
CABRERA, ZOILA E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/30/2014 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 HTI IP, LLC
____________________

Appeal 2013-007227
Reexamination Control 90/011,304
US Patent No. 6,604,033 B11
Technology Center 3900
____________________

Before STEVEN D.A. MCCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Banet et al. on August 5, 2003 (hereinafter referred to as "the '033
patent").
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(b) and 306 from the
Examiner’s Final Rejection of claims 1, 2, 6-16, 20, 21, 24-30, and 32-36.2
We have jurisdiction under 35 U.S.C. § 134(b) and 306.
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ invention is directed generally "to the use of wireless
communications and diagnostic systems in automotive vehicles." Spec. col.
1, ll. 31-33. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for characterizing a vehicle's emissions, comprising
the steps of:
generating data representative of the vehicle's emissions with at
least one sensor disposed within the vehicle;
transferring the data to a data collector/router comprising a
wireless transmitter configured to transmit data over a wireless
communications network;
transmitting data representing the vehicle's emissions with the
wireless transmitter over the wireless communications network and
then to a host computer system;
at the host computer system, analyzing the data representing the
vehicle's emissions; and

2 Claims 3-5, 17-19, 22, 23, and 31 were not subject to reexamination.
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at the host computer system, comparing the analyzed data to at
least one predetermined value to characterize the vehicle's emissions.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Spaur
Naber
Jenkins
Lawrence
Bentley
US 5,732,074
US 5,916,294
US 6,253,129
US 6,505,106
US 6,529,723
Mar. 24, 1998
June 29, 1999
June 26, 2001
Jan. 7, 2003
Mar. 4, 2003

Dreher, "A Fuel-based Inventory for Heavy-duty Diesel Truck Emissions," J.
of the Air & Waste Management Ass’n, Vol. 48, April 1998, pp. 352-358.

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1, 2, 6, 7, 12-16, 20, 21, 24-26, 32, 33, and 35 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Bentley. Ans. 2.
2. Claims 8-11 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bentley and Naber. Id.
3. Claims 8-11 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bentley and Dreher. Id.
4. Claims 27-30 and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bentley and Lawrence. Id.
5. Claims 1, 2, 6-11, 16, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lawrence and Naber. Ans. 3.
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6. Claim 12-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lawrence, Naber, and Spaur. Id.
7. Claims 24, 25, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lawrence and Spaur. Id.
8. Claims 26-30 and 34-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lawrence, Spaur, and Naber. Id.
9. Claims 1, 2, 6, 7, 10-16, 20, 21, 24-30, 32, 33, 35, and 36 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Jenkins and
Lawrence. Id.
10. Claims 8, 9, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jenkins, Lawrence, and Naber. Id.
11. Claims 8, 9, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jenkins, Lawrence, and Dreher. Ans. 4.

ANALYSIS
Anticipation by Bentley
Claims 1, 2, 6, 7, 12-16, 20, and 21
Appellants argue claims 1, 2, 6, 7, 12-16, 20, and 21 as a group. We
select claim 1 as representative and all of the claims of this group stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants' main argument regarding the anticipation rejection over
Bentley is that "Bentley either discloses step (d) of analyzing received data
or step (e) of comparing the analyzed data to a predetermined value – but not
both." App. Br. 8. Appellants contend that this is so because the "final
office action incorrectly relied on the Bentley discussion of determining the
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sending of e-mail as disclosing the analyzing step" of the claims subject to
this rejection. Id. There does not appear to be disagreement over whether
Bentley discloses comparison at the host,3 but only whether it also discloses
an analysis step.
In the Answer, the Examiner clarified that Bentley does perform both
comparison and analysis as claimed because "an analysis step must take
place prior to making the comparison because the NOC 102 [the host] needs
to determine what kind of parameter [is] received from the detectors from
the plurality of parameters being monitored such as engine parameters,
emission parameters, chassis and accessory devices." Ans. 9-10 (citing
Bentley, col. 9, ll. 14-18). In the Reply Brief, Appellants again point to the
e-mail notification as an erroneous finding for the claimed analysis and also
point to the discussion of Figure 5 as being at the vehicle, not at the host, but
fail to address the Examiner's finding that determining what parameter is
received amounts to the claimed analysis step. See Reply Br. 3-7. We agree
with the Examiner, that the determination of what type of data as performed
at the NOC is sufficient to be an analysis step in addition to the comparison
with both steps being performed at the host. Accordingly, we affirm the
Examiner's rejection of claims 1, 2, 6, 7, 12-16, 20, and 21.
Claims 24-26, 32, 33, and 35
Appellants argue that Bentley "relates to providing notification to a
single user" and that it "does not describe a user accessing a web page to

3 As stated by Appellants, "[t]his discussion in Bentley may discuss that
NOC 102 performs a comparison, but the comparison at the NOC merely
determines when and how to notify a user of a condition determined at the
vehicle by detector 104." Reply Br. 5.
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view information related to multiple vehicles." App. Br. 11-12. The
Examiner first points to the fact that Bentley discloses, for example, "one or
more user items" as support for a user monitoring multiple vehicles. Ans. 20
(citing Bentley col. 3, ll. 18-20) (emphasis removed). These various
passages, however, do not deal with a user monitoring multiple vehicles, but
discuss the various parameters that may be monitored. The Examiner then
goes on to assert that because Bentley discloses each vehicle having a
"'Device ID Number ' as shown in Figs 9A-9B," "[a] user can have multiple
vehicles registered to be monitored." Ans. 21. The fact that each vehicle
has a unique ID number merely allows for unique identification of the
vehicle within the system. Nothing cited by the Examiner sufficiently
supports a disclosure in Bentley that anticipates "an interface system that
enables users to remotely access over the Internet the analyzed data for the
plurality of vehicles" as claimed (emphasis added). Accordingly, we do not
sustain the Examiner's rejection of claims 24-26, 32, 33, and 35 as
anticipated by Bentley.
Obviousness over Bentley and Naber
Appellants argue that Naber is insufficient because Naber teaches
"directly measuring emissions at the vehicle" (App. Br. 14) as opposed to
"predict[ing], infer[ring], or estimat[ing] the emissions of a vehicle" as
claimed. According to the Examiner, "Naber discloses an algorithm for
estimating emissions from a vehicle." Ans. 23 (citing Naber, Fig. 5, element
523, and col. 2, ll. 35-36). The portion of Naber cited by the Examiner
states, "[t]his switch ratio is then used as a diagnostic parameter for
determining the hydrocarbon efficiency of the catalyst." As noted by
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Appellants, this switch ratio involves a direct measurement at the vehicle.
We agree with Appellants that direct measurement is not the same as using
an algorithm for estimating as the Examiner finds. Accordingly, we do not
sustain the Examiner's rejection of claims 8-11 and 34 as unpatentable over
Bentley and Naber.
Obviousness over Bentley and Dreher
The Examiner also rejects claims 8-11 and 34 over the combination of
Bentley and Dreher and finds that Dreher teaches the claimed algorithm via
its usage of a formula to take vehicle usage data to estimate vehicle
emissions, which may then be combined with Bentley's system. See Ans.
26. As Appellants point out, Dreher "used tax records to determine diesel
fuel sold in the test area" and "applied factors empirically derived from
dynamometer testing of diesel trucks to an estimate of gallons sold in 1996
to estimate the amount of emissions from diesel trucks." App. Br. 15 (citing
Dreher, 48 J. Air & Water Mgmt. Ass’n at 353 (Bates No. PAR00048854)).
Dreher, therefore, takes an aggregate of vehicle usage data to determine
overall emissions for all vehicles in an area. It has nothing to do with "data
representative of a vehicle’s emissions that was wirelessly received from the
particular vehicle, to characterize the vehicle's emissions." Id. (emphasis
added). The mere fact that Dreher discloses a formula for estimating
emissions based on fuel usage for all vehicles in a certain area is insufficient
as a proxy for an algorithm used to take data transmitted wirelessly from
individual vehicles to estimate emissions as claimed. Accordingly, we do

4 The pages of Dreher in the reexamination file bear prominent Bates
numbers from an unknown source in their lower right-hand corners.
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not sustain the Examiner's rejection of claims 8-11 and 34 as unpatentable
over Bentley and Dreher.
Obviousness over Bentley and Lawrence
Claims 27-30 and 36 each depend from base claims that were rejected
as anticipated by Bentley. Having reversed the rejection over Bentley, we
determine that the Examiner has not shown how Lawrence makes up for the
deficiencies discussed supra with Bentley and likewise do not sustain the
rejections of claims 27-30 and 36 as unpatentable over Bentley and
Lawrence.
Obviousness over Lawrence and Naber
In rejecting the claims over this combination, the Examiner states that
"Lawrence does not explicitly disclose comparing the analyzed data
[emissions data] to a predetermined value to characterize the vehicle's
emissions," but that "Naber discloses a system and method for estimating
tailpipe emissions in a vehicle wherein an out-of-compliance signal is
provided when a statistical measure of hydrocarbon gas content exceeds a
threshold." Ans. 37 (internal quotation marks removed; square brackets in
original). Appellants argue, and we agree, that "Naber discusses measuring
chemicals through a catalytic converter of a vehicle and determining the
efficiency of the converter, at the vehicle." App. Br. 20. Appellants further
correctly point out that "both references teach comparing measured data
from a vehicle to a threshold or specification at the vehicle that produced the
measurement." Id. at 21. Accordingly, because neither reference teaches
performing this claim step at the host, we do not sustain the Examiner's
rejection of claims 1, 2, 6-11, 16, 20, and 21. This deficiency carries over
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into the rejection of claims 12-15 as unpatentable over Lawrence, Naber, and
Spaur, which Spaur fails to cure, so we likewise do not sustain the rejection
of claims 12-15.
Obviousness over Lawrence and Spaur
As with Lawrence and Naber, Appellants correctly assert that neither
Lawrence nor Spaur teaches the claimed characterization of emissions at the
central host, but rather both do so at the vehicle. See App. Br. 24.
Accordingly, for the same reasons discussed above, we do not sustain the
Examiner's rejection of claims 24, 25, 32, and 33. This deficiency carries
over into the rejection of claims 26-30 and 34-36 as unpatentable over
Lawrence, Spaur and Naber, which Naber also fails to cure, so we likewise
do not sustain the rejection of claims 26-30 and 34-36.
Obviousness over Jenkins and Lawrence
As noted above, the Examiner admits that Lawrence fails to teach the
claimed comparison at the central host. As Appellants further correctly
point out, Jenkins fails to make up for this deficiency because it "teaches that
the steps in the various methods shown in the figures occur at vehicle
devices 204 and 214." App. Br. 28. Accordingly, we do not sustain the
rejection of claims 1, 2, 6, 7, 10-16, 20, 21, 24-30, 32, 33, 35, and 36 as
unpatentable over Jenkins and Lawrence. Because neither Naber nor Dreher
is asserted to cure this deficiency we likewise do not sustain the Examiner's
rejections of claims 8, 9, and 34 over the additional combinations of Jenkins
and Lawrence with either of Naber or Dreher.
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DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1, 2, 6, 7, 12-16, 20, and 21 and REVERSE all remaining rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).  This is a
final decision. Parties to the proceeding seeking judicial review of the
decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

AFFIRMED-IN-PART

PATENT OWNER:
HUGHES TELEMATICS, INC.
2002 Summit Blvd.
Suite 1800
Atlanta, GA 30319

THIRD PARTY REQUESTER:
FULBRIGHT & JAWORSKI L.L.P.
2200 Ross Avenue
Suite 2800
Dallas, TX 75201-2784