Ex Parte BasirDownload PDFPatent Trial and Appeal BoardSep 26, 201712954084 (P.T.A.B. Sep. 26, 2017) Copy Citation 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. 12/954,084 11/24/2010 Otman A. Basir 67182-025 PUSl 4704 26096 7590 09/28/2017 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER TANG, SON M ART UNIT PAPER NUMBER 2685 NOTIFICATION DATE DELIVERY MODE 09/28/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OTMAN A. BASIR Appeal 2017-003878 Application 12/954,084 Technology Center 2600 Before JUSTIN BUSCH, JOHN D. HAMANN, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-003878 Application 12/954,084 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—4, 6—22, and 24—26. App. Br. 3^4.2 Claims 5 and 23 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE INVENTION Appellant’s invention facilitates inter-vehicle communication. Abstract. According to the Specification, inter-vehicle communication can be used to notify others of a hazardous road condition or impending traffic. Spec. 135. One embodiment transmits a text communication to a recipient vehicle based on a license-plate number. See id. H 29, 32. The invention can also prioritize some communications—e.g., a phone call—over others. Id. 132. THE REJECTIONS The Examiner relies on the following as evidence: Huang Griffith et al. Eisinger O’Brien et al. Himmelstein Carr US 6,362,748 B1 US 6,366,651 B1 US 2004/0082340 Al US 2006/0120343 Al US 7,123,926 B2 US 8,350,721 B2 Mar. 26, 2002 Apr. 2, 2002 Apr. 29, 2004 June 8, 2006 Oct. 17, 2006 Jan. 8, 2013 1 Appellant identifies the real party in interest as Intelligent Mechatronic Systems Inc. App. Br. 1. 2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”) mailed March 18, 2015, (2) the Advisory Action (“Adv. Act.”) mailed on Sept. 1, 2015, (3) the Appeal Brief (“App. Br.”) filed March 18, 2016, (4) the Examiner’s Answer (“Ans.”) mailed November 3, 2016, replacing the Answer mailed October 7, 2016, and (5) the Reply Brief (“Reply Br.”) filed January 3, 2017. 2 Appeal 2017-003878 Application 12/954,084 Claims 22 and 24—26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Eisinger and O’Brien. Final Act. 2—3. Claims 1—4, 6—11, and 13—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Huang, Griffith, and Himmelstein. Final Act. 4—7. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Huang, Griffith, Himmelstein, and Carr. Final Act. 7—8. Claims 17, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Huang and Carr. Final Act. 8—9. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Huang, Carr, and Griffith. Final Act. 9. THE OBVIOUSNESS REJECTION OVER HUANG, GRIFFITH, AND HIMMEFSTEIN Claim 1 Claim 1 is reproduced below with our emphasis on the limitation at issue: 1. A method for communicating including the steps of: receiving speech from a sender, the speech containing a recipient license plate number of a recipient vehicle; converting the speech to text to discern the recipient license plate number; associating the recipient license plate number with an electronic device in the recipient vehicle; receiving a speech communication from the sender; converting the speech communication to a text communication; and transmitting the text communication to the electronic device in the recipient vehicle based upon the recipient license plate number; wherein the step of associating is performed by a server at a location remote from the recipient vehicle and the sender. 3 Appeal 2017-003878 Application 12/954,084 Analysis In the proposed combination of Huang, Griffith, and Himmelstein, the Examiner finds that (1) Himmelstein’s base station corresponds to the recited server and (2) the base station associates the recipient license plate number with an electronic device in the recipient vehicle. Final Act. 4—5. Appellant argues that Himmelstein’s server only routes the message using the recipient-identifying information, but does not associate the information as recited. App. Br. 4. According to Appellant, the vehicle’s microprocessor performs the association, not a server. Reply Br. 3. Appellant’s argument is persuasive. According to Himmelstein, the base station’s routing function is the same as an Internet router’s. Himmelstein col. 7 11. 24—28. For instance, the base station routes communication packet 60 by reading the address and forwarding the packet to that address. Id. But the Examiner has not shown that this routing involves associating the recipient’s license-plate number with an electronic device in the recipient’s vehicle. See Ans. 3^4. On the contrary, Himmelstein teaches that identification number 71 can be a vehicle’s license-plate number, whereas another field—i.e., addresses field 79—includes a recipient’s address. Himmelstein col. 6 11. 11—18, col. 7 11. 2—15. Here, the Examiner has not shown, for example, that Himmelstein’s base station routes, or otherwise associates, identification number 71 with the recipient vehicle. Accord Reply Br. 3. The Examiner does not rely on the additional references to teach the limitation missing from Himmelstein. See Final Act. 4—5; Ans. 3^4. 4 Appeal 2017-003878 Application 12/954,084 On this record, we do not sustain the Examiner’s rejection of independent claim 1 and dependent claims 2—4, 6—11, and 13—16, for similar reasons. THE OBVIOUSNESS REJECTION OVER HUANG AND CARR Claim 17 Claim 17 is reproduced below with our emphasis: 17. A method for communicating including the steps of: a) identifying a presence of a user in a vehicle having a license plate number by identifying a presence in the vehicle of an electronic device associated with the user; b) associating the user with the license plate number based upon said step a); c) receiving a communication identifying an intended recipient by the license plate number; and d) directing the communication to the user based upon the user's association with the license plate number in said step b). Analysis The Examiner finds that Huang teaches every limitation recited in independent claim 17 except for identifying the user’s presence in a vehicle. Final Act. 8. In concluding that claim 17 would have been obvious, the Examiner cites Carr as teaching this feature. Id. In particular, the Examiner finds that Carr’s driving mode indicates that a user is in a vehicle. Id. (citing col. 2 11. 30-45). According to the Examiner, one of ordinary skill in the art would have been motivated to modify Huang with Carr’s driving mode for convenience and security. Final Act. 8. 5 Appeal 2017-003878 Application 12/954,084 Appellant argues that Carr does not identify the user’s presence in a vehicle. App. Br. 4; Reply Br. 4. According to Appellant, Carr merely pairs a phone with the vehicle’s information without identifying the user’s presence. App. Br. 4. Appellant contends that, although one could identify a user’s presence in a vehicle based on this pairing, Carr does not teach doing so. Reply Br. 4. Appellant’s argument is not persuasive. The disputed limitation of claim 17 recites, in part, “identifying a presence of a user in a vehicle having a license plate number by identifying a presence in the vehicle of an electronic device associated with the user” (“step (a)”). According to Appellant, this feature is found in the embodiments described in paragraph 20 of the Specification. App. Br. 2, Summary of Claimed Subject Matter. In one embodiment, server 27 “assumes” the user is in the vehicle when the mobile device connects with control unit 11, which can be mounted in a vehicle. See Spec. Tflf 8, 20. Alternatively, server 27 “may assume” that the user is in vehicle 8 with that license plate number only when the user’s mobile device is connected to control unit 11. Id. Although these examples inform our understanding of the limitation at issue, Appellant has not shown that claim 17 is limited to these embodiments. See App. Br. 4; Reply Br. 4. Rather, consistent with these examples (Spec. 120), a broad, but reasonable, interpretation of step (a) covers a method that is based on assumptions about the user’s presence from some indicia—i.e., the recited device’s presence. But the recited step (a) does not require the user’s actual presence, only this indicia. 6 Appeal 2017-003878 Application 12/954,084 Given this understanding of the claim, the Examiner did not err in finding that Carr identifies the presence of a user, as recited. Final Act. 8. For instance, Carr activates “driving mode” when client device 120 automatically pairs with the vehicle-information system. Carr col. 2 11. 33— 40. In this way, Carr detects the presence of the user’s device, like claim 17. See id. Carr’s system then uses “driving mode” to selectively process notifications when, for example, the user is not in a vehicle. Id. col. 2 11. 40— 45. Although Carr’s “driving mode” may not always correspond to the user’s presence in the vehicle, we agree with the Examiner that, under the broadest reasonable interpretation of step (a), Carr, nevertheless, identifies a user’s presence as recited, and does so by identifying a presence of an electronic device associated with the user—i.e., device 120. See Final Act. 8. Accordingly, Appellant has not persuaded us of error in the rejection of independent claim 17 and dependent claims 18 and 21, which are not separately argued. See App. Br. 4; Reply Br. 4. THE OBVIOUSNESS REJECTION OVER EISINGER AND O’BRIEN Claim 22 Claim 22 is reproduced below with our emphasis: 22. A method for communicating including the steps of: receiving a speech communication from a first user; converting the speech communication to a text communication; transmitting the text communication to a second user; prioritizing the text communication to the second user relative to at least one other communication to the second user or notification to the second user, and 7 Appeal 2017-003878 Application 12/954,084 converting the text communication to speech and playing the speech for the second user. Analysis The Examiner finds that Eisinger teaches every limitation recited in independent claim 22 except for prioritizing a communication to the second user. Final Act. 2—3. In concluding that claim 22 would have been obvious, the Examiner cites O’Brien as teaching this feature. Id. Appellant argues that the references do not teach the recited prioritizing. App. Br. 3; Reply Br. 1—2. In Appellant’s view, O’Brien routes messages based on a priority attached by the sender, which has no application in Eisinger. App. Br. 3; Reply Br. 2. According to Appellant, Eisinger sends messages anonymously to all terminals in the area via the same route. App. Br. 3; Reply Br. 2. Appellant’s argument is not persuasive. The disputed limitation of claim 22 recites, in part, “prioritizing the text communication to the second user relative to at least one other communication to the second user or notification to the second user.” But claim 22 does not recite which device performs this step. Nor does claim 22 require a specific method of prioritizing. Rather, claim 22’s prioritizing is broadly functional and result oriented. That is, claim 22 only requires that that the communications are prioritized as recited, but does not require doing so using a particular algorithm or a specific device. Although the Specification provides illustrative embodiments (see, e.g., Spec. 132), we do not find, nor does Appellant argue (App. Br. 3; Reply Br. 1—2), that the Specification defines or otherwise constrains our interpretation to a particular embodiment. 8 Appeal 2017-003878 Application 12/954,084 Given the breadth of claim 22 in this regard, the Examiner did not err in concluding that the recited subject matter would have been obvious. Final Act. 2—3. In particular, the Examiner relies on O’Brien as teaching prioritizing a message using a database. Id. For its part, O’Brien teaches that messages have a priority-level. O’Brien || 33, 58. O’Brien’s user can choose how to route certain messages—e.g., to a phone or email—by altering the message’s priority. Id. 133. O’Brien’s contact information can even contain a time indicator that indicates when a particular type of communication method should be used. Id. 1 62. By assigning a priority level to one communication and not another, O’Brien’s levels prioritize a communication “relative to at least one other communication.” See Final Act. 3 (discussing modifying messages to be priority messages); see also Adv. Act. 2. Given these teachings, the Examiner concludes that it would have been obvious to modify Eisinger with O’Brien’s prioritization. Final Act. 3. To be sure, Eisinger does not operate in the same way as O’Brien, as Appellant argues (App. Br. 3; Reply Br. 1—2). But Appellant has not shown, for example, that using O’Brien’s priority indicators in Eisinger would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant shown that the Examiner’s proposed combination would render the prior art unsuitable for its intended purpose or that the reference teaches away from such an approach. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Rather, the Examiner’s proposed enhancement to Eisinger uses O’Brien’s priority-level indicators predictably according to their established 9 Appeal 2017-003878 Application 12/954,084 function—i.e., indicating how to process certain messages—which is an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417, 421 (2007). Specifically, O’Brien’s priority-level indicators could be used to ensure that the driver receives certain messages, as the Examiner concludes. Final Act. 3. For instance, the Examiner finds that one message could be prioritized over another so that the message is sent to a cell phone instead of a home email address. Adv. Act. 2. Therefore, we are unpersuaded by Appellant’s argument against the Examiner’s obviousness conclusion. See App. Br. 3; Reply Br. 1—2. Although the Examiner makes additional findings regarding Eisinger (see, e.g., Ans. 6, discussed in Reply Br. 1—2), the Examiner, nevertheless, relies on O’Brien as teaching prioritizing communications to the second user (Final Act. 3). So, the Examiner’s additional findings regarding Eisinger’s prioritization (Ans. 6) are cumulative and any error in this regard does not affect our decision to sustain the rejection. Accordingly, Appellant has not persuaded us of error in the rejection of independent claim 22 and dependent claim 24, which is not separately argued. See App. Br. 4; Reply Br. 4. Claim 25 The disputed limitation of claim 25 recites, in part, “the at least one other communication or notification is a navigation instruction.” Appellant argues that O’Brien’s prioritizing does not apply to navigation instructions because a navigation instruction would not be sent via text message or email. App. Br. 3; Reply Br. 2. According to Appellant, “the Eisinger messages are coming from a different vehicle and Eisinger is 10 Appeal 2017-003878 Application 12/954,084 not going to send a navigation instruction from another vehicle.” Reply Br. 2. Appellant’s arguments are unpersuasive. Eisinger sends information about upcoming problems: an accident, ice on the road, or a radar speed check. Eisinger | 5, discussed in Ans. 5. The Examiner finds that this information corresponds to the recited navigation instruction. Ans. 5; see also Adv. Act. 2. Contrary to Appellant’s argument (Reply Br. 2), Eisinger does teach that one vehicle can send this information to another, different vehicle—i.e., “to interested or affected drivers.” Eisinger | 5. Furthermore, Appellant has not explained why this information could not be communicated via text message or email. App. Br. 3; Reply Br. 2. Nor has Appellant provided a definition for “navigation instruction” that would exclude this information. See App. Br. 3; Reply Br. 2. Because Eisinger’s information about upcoming problems (Eisinger 15) can be described by text and pertains to a vehicle’s navigation, the weight of the evidence favors the Examiner’s finding that O’Brien and Eisinger collectively teach the recited navigation instruction. Final Act. 3; Adv. Act. 2. On this record, Appellant has not persuaded us of error in the rejection of independent claim 25. Claim 26 The disputed limitation of claim 26 recites, in part, “the step of prioritizing includes prioritizing presentation of the text communication to the second user over presentation of the at least one other communication or notification to the second user.” That is, claim 26 further limits claim 22 by prioritizing “presentation.” 11 Appeal 2017-003878 Application 12/954,084 Appellant argues that the Examiner has not shown that the Eisinger- O’Brien combination prioritizes presentation. App. Br. 3; Reply Br. 3. Although claim 26 introduces this additional limitation not found in claim 22, the Examiner explains that claim 26 is “interpreted and rejected as addressed in claim 22 above.” Final Act. 3. Notably, the Examiner does not discuss a “presentation” in claim 22’s rejection. Id. In the Answer, the Examiner discusses text-to-speech but provides no citation to either reference. Ans. 7. From this brief discussion in the Answer, it is not apparent which teachings the Examiner is relying upon to arrive at the conclusion that claim 26 would have been obvious. In sum, the Examiner has not explained how Eisinger and O’Brien collectively teach the limitations introduced by claim 26, and we decline to speculate in this regard for the first time on appeal. We, therefore, are constrained by this record to find that the Examiner erred in rejecting claim 26. THE REMAINING OBVIOUSNESS REJECTIONS Claims 19 and 20 depend from claim 17. Appellant does not argue against the rejection of claims 19 and 20 separately with particularity. See App. Br. 4; Reply Br. 4. Therefore, for the reasons discussed in connection with claim 17, we also sustain the rejections of claims 19 and 20. We, however, do not sustain the Examiner’s rejections of dependent claim 12 for the same reasons discussed above in connection with claim 1. The additional reference, Carr, was not relied upon to teach the limitation missing from Huang, Griffith, and Himmelstein, and, thus, does not cure the deficiency discussed above. See Final Act. 7—8. 12 Appeal 2017-003878 Application 12/954,084 CONCLUSIONS We reverse the Examiner’s rejection of claims 1—4, 6—16, and 26 under 35 U.S.C. § 103. We affirm the Examiner’s rejection of claims 17—22, 24, and 25 under 35 U.S.C. § 103. DECISION We affirm-in-part the Examiner’s rejection of claims 1—4, 6—22, and 24—26. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation