Ex Parte 6636790 et al

Patent Trial and Appeal Board

Sep 24, 2013

90011306 (P.T.A.B. Sep. 24, 2013)

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.
90/011,306 12/03/2010 6636790 WTWI.P0001RE4/10910205 6607
39894 7590 09/25/2013
HUGHES TELEMATICS, INC.
2002 Summit Blvd
Suite 1800
ATLANTA, GA 30319
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/25/2013 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 2013-009535
Reexamination Control 90/011,306
1

Patent No. US 6,636,790 B1
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and STANLEY M.
WEINBERG, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 6-19, 22-28, 31, and 36-40.
2
We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We affirm.

1
The real party in interest is HTI IP, LLC.
2
Claims 2-5, 20, 21, 29, 30, and 32-35 are not subject to reexamination.
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Appellant‟s invention is a system and method for processing data
from a vehicle to determine parameters such as mileage, fuel level, and
period of operation. The method features the steps of (1) generating data
representative of the vehicle‟s mileage, fuel level, and/or period of operation
with at least one microcontroller disposed within the vehicle; (2) transferring
the data through an On-Board Diagnostics (OBD)-II connector or equivalent
in the vehicle to a data collector/router comprising: (i) a microprocessor, and
(ii) a wireless transmitter in electrical contact with the microprocessor; (3)
transmitting a data packet representing the data with the wireless transmitter
over an airlink to a wireless communications system and then to a host
computer; and (4) analyzing the data with a model (Spec. 5).
Claim 36 is exemplary of the claims on appeal:
36. A method for characterizing a vehicle's performance,
comprising the steps of:
retrieving data of a first set of data including data corresponding to a
first set of PIDs representative of the vehicle's performance
through an OBD or OBD-II connector at a
first predetermined time interval, and data of a second set of
data including data corresponding to a second set of PIDs, at a second
predetermined time interval, wherein the first set of PIDs differs from
the second set of PIDs and wherein the first predetermined time
interval differs from the second predetermined time interval, with a
data collector/router
comprising:
i) an electrical connector that connects to the OBD or
OBD-II connector and comprises electrical connections
for multiple vehicle models;
ii) a microprocessor, and
iii) a wireless transmitter in electrical contact with the
microprocessor;
generating data representative of the vehicle's location
with a global positioning system disposed within the
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vehicle;
wirelessly transmitting a third set of data representative of
the vehicle's performance with the wireless transmitter
to a wireless communications system and then to a host
computer;
wirelessly transmitting a fourth set of data representative
of the vehicle's location with the wireless transmitter to
a wireless communications system and then to a host
computer;
analyzing the first and second sets of data with the host
computer to generate analyzed data; and
displaying the analyzed data on one or more web pages
accessible on the internet.

Claims 6-18, 22-26, and 36-40 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 6-12 are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim that which Appellant
considers as their invention.
Claims 1, 19, and 28 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bentley.
3

Claims 1, 19, 28, and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lawrence et al. (hereinafter “Lawrence”)
4
in view
of APA.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lawrence in view of APA and Caci.
5

3
Bentley, US 6,529,723 B1, issued Mar. 4, 2003.
4
Lawrence et al., US 6,505,106, issued Jan. 7, 2003.
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Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bentley in view of APA and Caci.
Claims 1, 19, 27, 28, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Smith et al. (hereinafter “Smith”)
6
in view of
APA.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed February 12, 2013), the Reply Brief (“Reply Br.,” filed
July 9, 2013), and the Examiner‟s Answer (“Ans.,” mailed May 14, 2013)
for their respective details.
ISSUE
Appellant states that the only claims on appeal are claims 6 and 36-40
(App. Br. 2) and presents arguments directed only to the § 112, first
paragraph rejection.
Appellant argues that SAE J1979 establishes that it was known that
parameter identifiers (“PIDs”) are used to retrieve data through an OBD-II
connector (App. Br. 16) and that the Specification discloses retrieving or
collecting different data at different temporal frequencies (App. Br. 14, 16-
17, citing col. 8, ll. 46-48 and col. 9, ll. 46-53 of the „790 patent). Appellant
contends that SAE J1979 supports Appellant‟s position that one of ordinary
skill in the art would know that the retrieval of different sets of data with
different sets of PIDs is inherently supported in the Specification because
SAE J1979 describes different PIDs for different data (App. Br. 18).

5
Caci, US 6,154,658, issued Nov. 28, 2000.
6
Smith et al., US 6,879,962 B1, issued Apr. 12, 2005.
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Appellant further contends that the written description rejection
should be withdrawn because the USPTO did not make such a rejection in
Reexamination Control No. 90/011,307, which is commonly owned by the
patent owner of this application and features materially the same
Specification (App. Br. 8, 19). Appellant also asserts that the finality of the
Examiner‟s action should be withdrawn (App. Br. 23).
Appellant‟s contentions present us with the following issue:
Does the Specification, read in combination with the SAE J1979
document, reasonably convey to skilled artisans that Appellant possessed the
invention of “retrieving data of a first set of data including data
corresponding to a first set of PIDs representative of the vehicle‟s
performance through an OBD or OBD-II connector at a first predetermined
time interval, and data of a second set of data including data corresponding
to a second set of PIDs, at a second predetermined time interval, wherein the
first set of PIDs differs from the second set of PIDs and wherein the first
predetermined time interval differs from the second predetermined time
interval,” as claim 36 recites?

PRINCIPLES OF LAW
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the description
requirement under § 112 does not demand (1) any particular form of
disclosure, or (2) the Specification recite the claimed invention verbatim, a
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description that merely renders the invention obvious does not satisfy the
requirement. Id. at 1352 (citations omitted).
Appellant has not explained why, nor is it apparent that, certain
arguments were necessitated by a new point in the Answer or any other
circumstance constituting “good cause” for its belated presentation. See Ex
parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”
7
)
(absent a showing of good cause, Board not required to address argument in
Reply Brief that could have been presented in the principal Brief).
ANALYSIS
§ 112 REJECTION OF CLAIMS 36-40
The „790 patent‟s Specification discloses a wireless diagnostic system
and method for monitoring vehicles. A data collector/router queries data
generated by each vehicle‟s Electronic Control Unit (ECU) and on-board
diagnostics (OBD-II) systems through an OBD buss (col. 5, ll. 37-40). After
the query, each data collector/router receives data from the host vehicle and
sends it as a data packet over a wireless airlink to the wireless
communication system (col. 5, ll. 40-43).
Claim 36, added by amendment, recites receiving and transmitting a
first set of data corresponding to a first set of PIDs at a first predetermined
time interval, and a second set of data corresponding to a second set of PIDs
at a second predetermined time interval, the sets of PIDs and the time
intervals being different from each other. Claims 37-40 recite similar
limitations.

7
The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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The Examiner initially rejected claims 36-40 under § 112, first
paragraph, because the patent does not provide support for PIDs (Non-Final
Rejection mailed April 12, 2012, p. 14). In response, Appellant cited SAE
J1979 to establish that the OBD and OBD-II interfaces respond to
transmitted PIDs by providing vehicle data corresponding to the particular
PID (SAE J1979 p. 9). The Examiner then rejected claims 36-40 under § 112
because the „790 patent does not support a first and second set of PIDs, the
sets of PIDs and time intervals of their collection differing from each other
(Final Rej. 15).
We are not persuaded by Appellant‟s argument that the „790 patent
provides support for retrieving first and second sets of data respectively
corresponding to first and second sets of PIDs, the first and second sets of
PIDs differing from each other and the predetermined time intervals of data
set retrieval also differing from each other (App. Br. 3).
We find that the „790 patent provides support for retrieving a first set
of data at a first predetermined interval. The „790 patent discloses generating
data representative of the vehicle‟s performance with at least one
microcontroller disposed within the vehicle, and “transferring the data
through an OBD, OBD-II or equivalent electrical connector to a data
collector/router that includes a microprocessor and an electrically connected
wireless transmitter” (col. 2, ll. 51-56). The „790 patent discloses that such
generating and transferring “can be performed at any time and with any
frequency, depending on the diagnoses being performed” (col. 3, ll. 6-8).
“For a „real-time‟ diagnoses (sic) of a vehicle‟s engine performance, for
example, the steps may be performed at rapid time or mileage intervals (e.g.,
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several times each minute, or every few miles). Alternatively, other
diagnoses . . . may require the steps to be performed only once each year or
after a large number of miles are driven. . . . Alternatively, the vehicle may
be configured to automatically perform these steps at predetermined or
random time intervals” (emphasis added (col. 3, ll. 8-21).) “Data is typically
sent from the host vehicle 32a, 32b, 32n to each data collector/router 35a,
35b, 35n at a predetermined time interval” (col. 6, ll. 18-20).
We further find that SAE J1979 establishes that it is known to request
vehicle data values via an OBD or OBD-II connector by transmitting a
message containing the PID of the requested data value. The on-board
module will respond to this message by transmitting the requested data value
(SAE J1979 p. 9).
We are not persuaded by Appellant‟s arguments that the ‟790 patent
discloses transmitting more than one set of data, each set transmitted at
different, predetermined time intervals (App. Br. 3, 8, 14). Appellant
variously refers to col. 3, ll. 6-21; col. 5, ll. 36-41; col. 6, ll. 17-25; col. 8, ll.
46-48; and col. 9, ll. 46-53 as providing support for these claim limitations
(App. Br. 3, 14). As discussed supra, column 3 discloses retrieving different
data at different intervals, in the alternative. Column 5 discloses a
data/collector router querying data generated by each vehicle‟s ECU and
OBD-II systems; it does not disclose disparate data sets or retrieval intervals.
Column 6 discloses sending data from the host vehicle to each data
collector/router at a predetermined time interval, but contains no disclosure
of multiple data sets or intervals. Column 8 discloses only that the host
computer system sends a data packet to the vehicle to reset the trip
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odometer. Column 9 discloses the ability to adjust the frequency at which
data is collected to diagnose specific types of problems, but does not
disclose more than one data set, or more than one interval at a time.
We therefore find that the „790 patent does not disclose that a first set
of data is retrieved at a first interval, and that a second set of data is retrieved
at a second interval, the first set of data differing from the second set and the
first interval differing from the second interval. While it may very well have
been obvious from the Specification to retrieve two disparate sets of data at
two different intervals, a description that merely renders the invention
obvious does not satisfy the written description requirement. Ariad, 598
F.3d at 1352.
Appellant‟s further argument that the Specification supports the
claimed invention because the USPTO did not raise the issue of written
description in the „307 reexamination proceeding is not persuasive. An
Examiner‟s decision to enter, or not enter, a particular ground of rejection in
one reexamination proceeding does not create binding precedent on the
agency in another reexamination proceeding. Appellant‟s further contention
that the finality of the Examiner‟s rejection should be withdrawn is not
persuasive because it is not properly before this Board. These issues raised
by Appellant are (and in fact were) properly addressed by petition to the
Director of the Central Reexamination Unit, not by appeal to this Board.
The Director denied the requested relief on May 6, 2013. We lack
jurisdiction to review those decisions.
Last, Appellant‟s argument that Provisional Application No.
60/222,213 provides support for the subject matter recited in claims 36-40
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(Reply Br. 11-12) is waived as untimely. Appellant did not present this issue
before the Reply Brief, and Appellant has not presented good cause for its
belated presentation. Borden, 93 USPQ2d at 1473-74.
We find that the Examiner did not err in rejecting claims 36-40 (as
well as claim 6, dependent from claim 37) under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. We
will sustain the Examiner‟s rejection.
OTHER REJECTIONS
Appellant presents no arguments regarding the other outstanding
rejections. Accordingly, we will sustain pro forma the following rejections:
Claims 7-18 and 22-26, rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 6-12, rejected under 35 U.S.C. § 112, second paragraph.
Claims 1, 19, and 28, rejected under 35 U.S.C. § 102 as being
anticipated by Bentley.
Claims 1, 19, 28, and 31, rejected under 35 U.S.C. § 103 as being
unpatentable over Lawrence in view of APA.
Claim 27, rejected under 35 U.S.C. § 103 as being unpatentable over
Lawrence in view of APA and Caci.
Claim 27, rejected under 35 U.S.C. § 103 as being unpatentable over
Bentley in view of APA and Caci.
Claims 1, 19, 27, 28, and 31, rejected under 35 U.S.C. § 103 as being
unpatentable over Smith in view of APA.
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CONCLUSION
The Specification, read in combination with the SAE J1979
document, does not reasonably convey to skilled artisans that Appellant
possessed the invention of “retrieving data of a first set of data including
data corresponding to a first set of PIDs representative of the vehicle‟s
performance through an OBD or OBD-II connector at a first predetermined
time interval, and data of a second set of data including data corresponding
to a second set of PIDs, at a second predetermined time interval, wherein the
first set of PIDs differs from the second set of PIDs and wherein the first
predetermined time interval differs from the second predetermined time
interval,” as claims 36-40 recite.
ORDER
The Examiner‟s rejection of claims 1, 6-19, 22-28, 31, and 36-40 is
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

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