Ex Parte Ampunan et al

Board of Patent Appeals and Interferences

May 4, 2011

11062404 - (D) (B.P.A.I. May. 4, 2011)

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.
11/062,404 02/22/2005 Nathan D. Ampunan GP-305792 7701
60770 7590 05/04/2011
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
05/04/2011 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 NATHAN D. AMPUNAN, SYLVIA C.
KARMANOFF and STEVEN J. ROSS
________________

Appeal 2010-001376
Application 11/062,404
Technology Center 3600
________________

Before MICHAEL P. TIERNEY, JOHN C. KERINS and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2010-001376
Application No. 11/062,404

2
A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, General
Motors Corporation, [hereinafter “Appellant”] under 35 U.S.C. § 134(a),
from a final rejection of claims 1-11 and 17, the only claims on appeal. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Marko et al. U.S. 2003/0216889 A1 Nov. 20, 2003
DePrez et al. U.S. 2004/0064221 A1 Apr. 1, 2004

The Invention
This invention pertains to a vehicle’s telematics unit that, upon a
user’s command, wirelessly requests and receives vehicle data and, upon
such receipt, wirelessly transmits that data to a monitoring station.
Independent claim 1 is illustrative of the invention and is reproduced below:

1. A method of testing vehicle functions in a vehicle, the method
comprising:
receiving a user command inputted by a user at a vehicle
telematics unit;
sending a sensor data request from the telematics unit to at least
one sensor via a short-range wireless connection based on the
command;
receiving data from the sensor at the telematics unit of the
vehicle via a short-range wireless connection; and
sending the received data from the telematics unit to an
engineering monitoring station via a wireless connection.
(App. Br. Claims App’x 13).

Appeal No. 2010-001376
Application No. 11/062,404

3
The Rejection on Appeal
1. Claims 1-11 and 17 are rejected under 35 U.S.C. § 103(a) as being
obvious in view of Marko and DePrez (Ans. 3).

B. ISSUE
Would one of ordinary skill in the art have had reason to construct a
telematics unit that wirelessly requests and receives vehicle data for
submission to a monitoring station when it was known that telematics units
can communicate between a vehicle’s sensors and a monitoring station?

C. FINDINGS OF FACT
1. Marko discloses a vehicle telematics unit whose operation is triggered
by “operator initiated button presses” (Marko ¶ [0016]).
2. Marko’s telematics unit wirelessly communicates with a vehicle’s
sensors (Marko Fig. 1 and ¶¶ [00013] and [0027]).
3. Marko specifically teaches that “data requests are sent” to the
vehicle’s sensors and that the received data is stored for subsequent
transmission (Marko Fig. 6 and ¶¶ [0056] and [0057]).).
4. Marko’s telematics unit further communicates with a monitoring
station “via an RF antenna” (i.e. wireless) (Marko Fig. 2 and ¶ [0036]).
5. Marko teaches that upon being triggered, data “both prior to and after
the trigger event” is sent to the monitoring station (Marko ¶ [0014]).
6. DePrez discloses a vehicle control system that communicates with
vehicle sensors based on established standards “for short-range wireless
communications” (DePrez Title and ¶ [0019]).
Appeal No. 2010-001376
Application No. 11/062,404

4
7. DePrez discloses many benefits of wireless communications in
vehicles including the absence of wire installation costs, the elimination of
wires and their connectors as the source of a malfunction and the ability to
install sensors in areas where wires would be problematic (DePrez ¶ [0007]).

D. PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

E. ANALYSIS
Appellant only presents arguments with respect to independent claim
1 and dependent claims 2 and 11. The arguments for dependent claims 2
and 11 are similar and they will be addressed together. The remaining
claims (claims 3-10 and 17) stand or fall with these argued claims. 37 CFR
41.207(b)(1).

1. Claim 1 is Obvious in View of Marko and DePrez
Claim 1 requires a user-operated telematics unit that sends a “data
request” to a vehicle sensor “via a short-range wireless connection.” The
Examiner finds that Marko discloses all the limitations of claim 1 with the
exception of data being received “via a short range wireless connection” for
which DePrez is relied upon (Ans. 3-4). The Examiner finds that the
“motivation of using fewer wires” would cause “one skilled in the art to
connect the sensor to the module over a wireless connection” (Ans. 4).
Appellant contends that Marko’s telematics unit “does not send a data
request” nor does it have a reason to send a data request to a vehicle’s sensor
Appeal No. 2010-001376
Application No. 11/062,404

5
(App. Br. 7-9, Reply Br. 1-2). Appellant contends that Marko’s telematics
unit passively receives data from a vehicle’s sensors in anticipation of a
triggering event and that triggering the unit only identifies the previously-
received data that is to be transmitted (App. Br. 7-9, Reply Br. 2).
We disagree. Appellant’s claim 1 employs the open-ended
transitional phrase “comprising” and Appellant has not specifically defined a
“data request” as excluding the request for and receipt of previously
recorded data. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim.”). Thus,
Appellant’s contention that Marko does not teach sending a data request to a
vehicle’s sensor is not persuasive in light of the fact that Marko’s telematics
unit, after being activated, collects data from the sensor and transmits both
newly-collected and past vehicle sensor data (Marko ¶ [0014]).
Furthermore, Marko specifically states that “data requests are sent” to the
vehicle’s sensors (Marko ¶ [0056] and Fig. 6). Marko also states that the
telematics unit can gather information from the vehicle’s sensors “upon
demand” (Marko ¶ [0015]). Accordingly, we find that one skilled in the art
would have understood that Marko teaches sending a data request to a
vehicle’s sensor.
Appellant also contends that DePrez does not make up for the
deficiencies of Marko and that the Examiner has failed to identify how either
Marko or DePrez “would be modified” to render this subject matter obvious
(App. Br. 9-10, Reply Br. 2-3). Appellant specifically contends that DePrez
Appeal No. 2010-001376
Application No. 11/062,404

6
fails to disclose or otherwise teach “sending a sensor data request” (App.
Br. 9, Reply Br. 3).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). DePrez was not referenced by the Examiner for its
teaching of sending a data request as alleged. Instead, DePrez was
referenced by the Examiner for teaching the transmission of vehicle sensor
data “via a short range wireless connection” as required in claim 1 (Ans. 4).
DePrez discloses the benefit of wireless connectivity in a vehicle as
including the ability to design systems “without regard for wiring
requirements” and that such connectivity eliminates the wires and their
connectors as “a possible source of malfunction” (DePrez ¶ [0007]).
Appellant does not dispute that this manner of vehicle data transmission was
known and Appellant does not dispute that DePrez teaches this manner.
Accordingly, we hold that one skilled in the art would have understood that
it was known to communicate with vehicle sensors via short-range wireless
connections in view of DePrez.
Based on the record presented, we hold that claim 1 is directed to a
combination of known elements (short-range wireless connections and a
vehicle telematics unit) for their known purpose (wireless connectivity and
data collection) to achieve a predictable result (wireless transmission of
vehicle data). We affirm the Examiner’s rejection of claim 1 as being
obvious in view of Marko and DePrez.

Appeal No. 2010-001376
Application No. 11/062,404

7
2. Dependent claims 2 and 11 are Obvious in View of Marko and
DePrez
Claim 2 is dependent on claim 1 and further comprises a user
command that occurs remotely and is transmitted wirelessly to the telematics
unit. Claim 11 also requires a wireless user command but claim 11 is
dependent on claim 10. The Examiner finds that Marko discloses such a
remote user command while Appellant contends that because Marko does
not send a data request, Marko does not teach sending a user command from
a remote location that is then used to send a data request (Ans. 4; App.
Br. 11). We disagree with Appellant for the reasons stated above and
because Marko specifically teaches that “remote queries allowing vehicle
data to be gathered” can be made and that Marko’s system can respond to a
“remote command” (Marko ¶¶ [0016] and [0019]).).
Based on the record presented, we affirm the Examiner’s rejection of
claims 2 and 11. We also affirm the Examiner’s rejection of claims 3-10 and
17 as these claims were not separately argued.

F. CONCLUSION OF LAW
One of ordinary skill in the art would have had reason to construct a
telematics unit that wirelessly requests and receives vehicle data for
submission to a monitoring station when it was known that telematics units
can communicate between a vehicle’s sensors and a monitoring station.

G. ORDER
1. The rejection of claims 1-11 and 17 under 35 U.S.C. § 103(a) as being
obvious in view of Marko and DePrez is affirmed.
Appeal No. 2010-001376
Application No. 11/062,404

8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

ak