Ex Parte Abrams

Board of Patent Appeals and Interferences

Oct 8, 2010

10854475 (B.P.A.I. Oct. 8, 2010)

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.
10/854,475 05/26/2004 James d. Abrams 15923-000013/US 6620
28997 7590 10/12/2010
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
10/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES D. ABRAMS
____________

Appeal 2009-009782
Application 10/854,475
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009782
Application 10/854,475

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 17-20, 24-25, 27-28, 30-31 and 39 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C. §
6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a method related to
one-button user access to a service bureau for a service from among a
plurality of different services (Spec. [0003]). Claim 17, reproduced below,
is representative of the subject matter of appeal.

17. A method of assisting a user in obtaining a repair service from
one of a plurality of service providers providing a plurality of
different repair services, the method comprising:

installing a service request device at the user's premises by or
on behalf of a service bureau, the service request device configured to
automatically transmit a repair service request signal to the service
bureau in response to a single action input from the user, said request
signal including user identifying data and representing a request for
repair service by the user at said user's premises;

receiving said request signal from the service request device at
the service bureau, said service bureau representing the plurality of
service providers providing the plurality of different services;

initiating a voice telephone call to the user at said user's
premises in response to receiving the request signal;
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receiving user repair service information communicated by the
user at said user's premises during the voice telephone call, said user
repair service information including a requested repair service;

storing service provider information for the plurality of service
providers including the different one or more services provided by
each of the plurality of service providers; and

scheduling one of the service providers from the plurality of
service providers to perform the requested repair service.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Vega US 2002/0120554 A1 Aug. 29, 2002
OnStar ™ web pages, various web pages 1-9, archived on April 11,
2006. (Hereinafter “OnStar”).

The following rejections are before us for review2:
1. Claim 18 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement because subject
matter was not described in the specification to reasonably convey to one
skilled in the art that the inventor, at the time the invention was filed, had
possession of the claimed invention.
2. Claims 17-20, 24-25, 27-28, 31 and 39 are rejected under 35
U.S.C. § 103(a) as being unpatentable over OnStar.
3. Claim 30 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over OnStar and Vega.

2 Claim 38 has been withdrawn and therefore is not considered in this
Decision.
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THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regards to the rejection of claim 18 under 35 U.S.C. § 112, first
paragraph, this issue turns on whether the specification provides sufficient
written description for the service request device having “only one user input
device” as claimed.
With regards to the rejection of claims 17-20, 24-25, 27-28, 30-31 and
39, this issue turns on whether the prior art discloses the claim limitations
which have been argued for by the Appellant for each respective claim and if
the cited modification of the prior art would have been obvious.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:3
FF1. The Specification at Figure 1 shows a user input device 106.
FF2. The Specification at [0026] states, “In one preferred embodiment, user
input device 106 is a push-button momentary switch, whereby a user may
provide input to service assistance system 100 by depressing the push-button
switch.”
FF3. The Specification at [0031] states, “Fig. 3 illustrates a system for
providing service assistance with service assistance system 100 and a

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 10/854,475

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remotely situated service bureau 306. Service assistance system 100 is often
located at user premise or location 302.” Fig. 3 shows a house 302.
FF4. The Specification at [0022] discloses that services may include, repair,
installation, or removal services associated with: heating, ventilation, air
conditioning, glass/windows, automotive, sheet metal, telephone, television,
painting, appliances, electrical, and water leakage. These services may be
any type of installation, cleaning, repair, or removal service for a property
owner.
FF5. Webster’s New World Dictionary provides the following relevant
definition for “premises”: 2 [pl.] a) the part of a deed or lease that states the
parties involved, the property in conveyance, and other pertinent facts b) the
property so mentioned 3 [pl.] a piece of real estate; house or building and its
land [keep off the premises] Webster’s New World Dictionary (3rd College
Ed. 1988).
FF6. OnStar is an innovative in-vehicle safety, security and information
service that uses the Global Positioning System (GPS) satellite network and
cellular technology to link the vehicle and the driver to the OnStar Center,
where advisors are available 24 hours a day to offer real-time, personalized
help (Onstar, 7).
FF7. OnStar is a package of services designed to provide you with the
personal assistance you need while traveling. The Safety and Security plan
provides you with the peace of mind knowing that the push of a button
connects you to a highly trained OnStar Advisor that can help you any
time of day or night almost anywhere you drive (Onstar, 2). Services include
emergency services, remote diagnostics and scheduling service
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appointments, and information and convenience services such as restaurant
suggestions and making hotel reservations (Onstar, 8-9).
FF8. Onstar’s three-button system is a simple three-button keypad located on
the dash or adjacent to the rearview mirror and is all you need to be
connected to an OnStar Advisor (Onstar, 2).

ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Appellant argues that the rejection of claim 18 under 35 U.S.C. §
112, first paragraph, is improper because support is given for the service
request device having only one user input device at Figures 1 and 2 (Br. 9-
12, Reply Br. 4-6). The Appellant also cites paragraphs [0025], [0026], and
[0030] to provide support for the claimed service request device having only
one user input device (Br. 9 and 11).
In contrast, the Examiner has determined that the rejection of claim 18
under 35 U.S.C. § 112, first paragraph, is proper and that the specification
does not provide support for the claimed limitation that there is “only one
user input device” (Ans. 5-6, 16-18).
We agree with the Appellant. The factual inquiry for determining
whether a specification provides sufficient written description for the
claimed invention is whether the specification conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, applicant
was in possession of the invention as now claimed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). An applicant shows
possession of the claimed invention by describing the claimed invention
with all of its limitations using such descriptive means as words, structures,
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figures, diagrams, and formulas that fully set forth the claimed invention.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Here, the Specification at Figure 1 shows a user input device 106
(FF1) at [0026] states, “In one preferred embodiment, user input device 106
is a push-button momentary switch, whereby a user may provide input to
service assistance system 100 by depressing the push-button switch” (FF2).
Thus, we find that the Specification provides descriptive words and figures
to provide support for the claimed “only one user input device”. One of
ordinary skill in the art would understand that the “only one user input
device” could refer to the input device 106 as one integral unit in some
manner in light of the specification. For these reasons, the rejection of claim
18 under 35 U.S.C. § 112, first paragraph, is not sustained.

Rejections under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 17 is improper
because OnStar fails to disclose a user’s “premises” (Br. 4-7, Reply Br. 2-3).
The Appellant argues that the ordinary meaning of the word “premises” is
“the land and the buildings on it” or “a building or a section of a building”
and provides a dictionary definition to show this (Br. 5). The Appellant also
argues that “a motor home is a moving vehicle and does not qualify as a
user's premises” (Br. 6). Appellant further argues that the Examiner has not
presented a prima facie case of obviousness for modifying OnStar (Br. 7).
In contrast, the Examiner has determined that OnStar has disclosed
the argued claim limitation and that the modification of the reference to meet
the cited claim limitation would have been obvious (Ans. 11-16).
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We agree with the Examiner. We first construe the meaning of the
word “premises” as used by the Appellant in the claims. We determine the
scope of the claims in patent applications “not solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)). We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
The Appellant has cited the Specification with reference to Fig. 3 at
reference numeral 302 as disclosing a “premises” (Br. 6, Reply Br. 3). This
portion of the Specification does not define the term “premises” as limited to
being a building or land despite showing a house 302 (FF3) and a customary
dictionary definition of “premises” does include property that is leased
(FF5). The Specification does not provide a definition of a “premises” that
is narrower than or inconsistent with our definition (FF5) and we decline to
read a specific embodiment of “premises” from the detailed description into
the claims. Giving the term “premises” in the claim its broadest reasonable
interpretation in view of the Specification, we determine that one of ordinary
skill in the art would consider a motor home to be a “premises” since it is
property and a person can live there for extended time periods. Further,
Appellant’s Specification has disclosed the services available to a property
owner to include, heating, ventilation, air conditioning, glass/windows,
automotive, sheet metal, telephone, television, painting, appliances,
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electrical, and water leakage (FF4) which are all services required to
properly maintain a motor home.
OnStar has disclosed a package of services designed to provide you
with personal assistance while traveling by connecting you to an Advisor
who can offer a wide range of information and convenience services such as
heating, air conditioning, appliances and electrical repair (FF6, FF7). Here,
the modification of the OnStar system to be installed in a motor home would
have been an obvious, predictable modification to allow a user in a motor
home to have access to the information and services such as heating, air
conditioning, and appliance repair. The modification of Onstar to a motor
home would serve as a “service request device at the user's premises” as
claimed. For these reasons, the rejection of claim 17, and its dependent
claims, which have not been argued separately, is sustained. With regards to
claim 18, the OnStar reference has disclosed a three-button keypad which
serves an integral “one user input device” as claimed, thus meeting the cited
claim limitation.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 18 under 35 U.S.C. § 112, first paragraph.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 17-20, 24, 25, 27, 28, 31 and 39 under 35 U.S.C. § 103(a) as
being unpatentable over OnStar.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 30 under 35 U.S.C. § 103(a) as being unpatentable over
OnStar and Vega.
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Application 10/854,475

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DECISION
The Examiner’s rejection of claims 17-20, 24, 25, 27, 28, 30, 31 and
39 is sustained.

AFFIRMED

MP

HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS MO 63105