Ex Parte Banet et al

Patent Trial and Appeal Board

Feb 6, 2013

11526497 (P.T.A.B. Feb. 6, 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.
11/526,497 09/25/2006 Matthew Banet 0308816.0196 2832
39894 7590 02/06/2013
HUGHES TELEMATICS, INC.
2002 Summit Blvd
Suite 1800
ATLANTA, GA 30319
EXAMINER
ISSING, GREGORY C
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
02/06/2013 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 MATTHEW BANET, LARKIN LOWREY, PAUL WASHICKO,
and MICHAEL O’BRIEN
____________________

Appeal 2010-005372
Application 11/526,497
Technology Center 3600
____________________

Before: JAMES P. CALVE, LYNNE H. BROWNE, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005372
Application 11/526,497

2
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 57, 58, 61, 62, 75, 79, and 81 under 35 U.S.C.
§ 103(a) as being unpatentable over Kapolka (US 2004/0138790 A1; pub.
Jul. 15, 2004), Webopedia definitions of chipset and ASIC (Webopedia,
http://www.webopedia.com/TERM/A/ASIC.html, date unknown), and
Lindenmeier (US 6,140,969; iss. Oct. 31, 2000)12. Claims 1-56, 59, 60, 63-
74, 76-78, and 80 are cancelled. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 61 and 79 are independent. Claim 61, reproduced below, is
illustrative of the claimed subject matter:
61. A wireless appliance for monitoring a
vehicle, comprising:
(a) a microprocessor configured to select a vehicle-
communication protocol of a host vehicle and
communicate with the host vehicle through the
vehicle-communication protocol;
(b) a vehicle-communication circuit, in electrical
communication with the microprocessor,

1 The Examiner previously cited Robinson (US 2004/0138790 A1; pub. Jul.
15, 2004) in combination with Kapolka, Webopedia, and Lindenmeier in the
rejection of claims 57, 58, 61, 62, 75, 79, and 81 (See Final Office Action 6),
but has subsequently removed Robinson from the rejection (See Ans. 3).
2 The Examiner previously rejected claims 57, 58, 61, 62, 75, 79, and 81
(mistakenly referencing claim 56 in place of claim 58) under 35 U.S.C.
§ 103(a) as being unpatentable over Sheth (US 6,405,106 B1; iss. Jun. 11,
2002), Robinson, Webopedia, and Lindenmeier (See Final Office Action 2),
but has subsequently withdrawn this rejection (See Ans. 2-3).
Appeal 2010-005372
Application 11/526,497

3
configured to collect diagnostic data from the host
vehicle using the vehicle-communication protocol,
wherein the vehicle-communication circuit is
configured to support multiple different vehicle-
communication protocols;
(c) a satellite modem operating on a satellite
network and configured to receive and transmit
data collected by the vehicle-communication
circuit; and
(d) a single chipset that comprises the
microprocessor and the satellite modem.

OPINION
Claims 61 and 79 are each directed to a wireless appliance for
monitoring a vehicle and recite “a microprocessor configured to select a
vehicle-communication protocol of a host vehicle and communicate with the
host vehicle through the vehicle-communication protocol.” (emphasis
added). The Examiner finds that the claimed microprocessor is taught by
“(a) a processor 300 [in Kapolka] within the OBU that acts as the
processing unit of the on-board unit and manages transmission and reception
of information between a remote server 202 (Figure 2) and the vehicle 104
[0045].” Ans. 5. The Examiner reasons that “[s]ince the microprocessor
controls and manages the data flow and the vehicle communication circuit
comprises an interface selectable among a plurality of protocols, the
microprocessor is clearly capable of providing the function of selecting a
protocol to interface with the host vehicle data bus. Thus, the structure of
the claimed apparatus does not distinguish over the prior art.” Ans. 8.
Appellants argue that the Examiner “does not show where Kapolka
discusses that OBU 105 selects from a plurality of vehicle communication
protocols, and then communicates through the selected protocol.” Br. 19.
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Application 11/526,497

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Appellants explain that “controllers described in [0043] and [0048] [of
Kapolka] communicate with each other and with a central controller via a
vehicle bus according to a protocol” and that “a manufacturer specific
controller is not the same as a protocol of a vehicle.” Br. 22. Based on the
understanding of Kapolka outlined above, Appellants contend that “the
references do not disclose ‘a microprocessor configured to select a vehicle-
communication protocol of a host vehicle and communicate with the host
vehicle through the vehicle-communication protocol.’” Br. 25.
In response, the Examiner asserts that
as set forth in [0048], the vehicle interface, which is coupled to
the microprocessor controlling and managing the activities of
the OBU, may include a plurality of application specific
modules 312, one for each manufacturer specific controller
308/vehicle components within the vehicle. The plurality of
possible interfaces include but are not limited to 11780, 11939,
11850, IS09141, and OBDII/CAN which substantially
correspond to those envisioned in appellant’s Figure 2 (25a-
25f). In light of the function of the microprocessor for
controlling and managing the activities of the OBU, the
selection of the specific module 312 by the microprocessor is
deemed to be taught therein.
Ans. 9. We disagree. Paragraph [0048] of Kapolka describes “one or more
application specific modules 312, such as one for each manufacturer specific
controller 308 within the vehicle 104.” For example, in a Ford vehicle, the
controllers 308 and modules 312 may use a J1850 PWM communication
protocol. See Spec. 2.
While the OBU 105 of Kapolka includes multiple modules 312 and
can support various protocols, there is nothing to suggest that the protocol is
selected by the processor 300 or that the OBU 105 (and processor 300) is
capable of selecting the protocol. Instead, it seems at least equally likely
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Application 11/526,497

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that the protocol is predetermined based on a specific vehicle application and
that the OBU 105 is programmed accordingly (e.g., OBU 105 for a Ford
vehicle may be preprogrammed for a J1850 PWM protocol without any need
for the processor 300 to select a protocol). Kapolka also discloses that
wireless interface 302 may encapsulate protocol differences among various
wireless network devices to provide a standard output to the processor 300.
Para. [0044]; see also Para. [0048] (application specific modules 312 contain
software code logic to handle interfacing between processor 300 and vehicle
data bus 307). For these reasons, we are not convinced that the processor
300 selects or is capable of selecting the protocol as claimed. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”).
Accordingly, we do not sustain the rejection of claims 61 and 79, and
claims 57, 58, 62, 75, and 81 which depend from either claim 61 or 79.

DECISION
We REVERSE the Examiner’s decision to reject claims 57, 58, 61,
62, 75, 79, and 81.

REVERSED

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