Ex Parte Basir et al

Patent Trial and Appeal Board

Feb 28, 2018

12411265 (P.T.A.B. Feb. 28, 2018)

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.
12/411,265 03/25/2009 Otman A. Basir 67182-020PUS1 4838
26096 7590 03/02/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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 and WILLIAM BEN MINERS
Appeal 2017-002889
Application 12/411,2651
Technology Center 2400
Before JEAN R. HOMERE, HUNG H. BUI, and
DANIEL N. FISHMAN, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 3—6, 15—19, 21—23, and 26—29.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3 Because our reasoning relies on new factual findings
and analyses, we designate our affirmance as a new ground of rejection
1 The Real Party in Interest is Intelligent Mechatronics Systems Inc.
2 Claims 2, 7—14, 20, 24, and 25 have been cancelled and are not on appeal.
3 Our Decision refers to Appellants’ Appeal Brief filed August 9, 2016
(“App. Br.”); Reply Brief filed December 12, 2016 (“Reply Br.”); Final
Office Action filed February 9, 2016 (“Final Act.”); Examiner’s Answer
mailed October 12, 2016 (“Ans.”); and original Specification filed March
25, 2009 (“Spec.”).
Appeal 2017-002889
Application 12/411,265
pursuant to 37 C.F.R. § 41.50(b) to preserve Appellants’ procedural
safeguards. In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011).
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention relates to an interface, shown in Figures 1—2,
between (1) a mobile device and (2) a computing device (e.g., PC or in-
vehicle system), to permit a user to use such an interface to access and
control the operation of the mobile device. Spec 12.
Appellants’ Figure 2 is reproduced below:
Fig. 2 shows mobile device 12 communicating with in-vehicle computing
system 10b, via interface.
Mobile device 12 is capable of extracting text from an email
attachment, either the entire attachment or selected portions thereof, and
relaying that extracted text to the user, via computing device (PC 10a, shown
in Figure 1 or in-vehicle system 10b, shown in Figure 2) either on a display
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or converted to speech and presented audibly in order to reduce transmission
time and latency. Id. at || 3, 4, 26, and Abstract. This way, large
documents such as email attachments need not be transmitted to the
computing device (e.g., PC or in-vehicle system). Id. at 13.
Computing device 10b is operable in two modes: In a first mode,
computing device 10b receives information (i.e., emails or media files) from
mobile device for a visual display on display 16, where such information can
be modified via user input device 14 (i.e., keyboard, mouse or microphone)
and modified information (modified email such as replied or forwarded
email) may be sent back to mobile device 12 for storage and/or
retransmission. Spec. Tflf 15, 30. In a second mode, computing device 10b
acts only as a “dumb” terminal for mobile device 12 to receive information
for a visual display on display 16. Spec. Tflf 16, 31.
Claims on Appeal
Claims 1 and 15 are independent. Representative claim 1 is
reproduced below with disputed limitations emphasized:
1. A method of accessing information via a mobile
device including the steps of:
a) establishing a connection between a computing
device and the mobile device;
b) selecting one of a first and second operation mode
based on a determination to store information from the mobile
device on the computing device;
c) receiving an email;
d) detecting the presence of an attachment to the email;
e) requesting extracted text of the attachment;
f) receiving the extracted text of the attachment;
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Application 12/411,265
g) when the second operation mode is selected in said
step b), storing the extracted text of the attachment only on the
mobile device; and
h) when the first operation mode is selected in step b),
retrieving information including the extracted text from the
memory of the mobile device, storing the information on the
computing device, modifying the information using a user input
device connected to the computing device, and sending the
modified information back to the mobile device for one of (1)
storage on the mobile device and (2) retransmission by the
mobile device.
App. Br. 7 (Claims App).
Evidence Considered
Rybak US 7,567,542 B2 July 28, 2009
Basir US 2007/0042812 A1 Feb. 22, 2007
Harwood US 7,050,834 B2 May 23, 2006
Douglas US 5,875,429 Feb. 23, 1999
Examiner’s Rejections
(1) Claims 1, 3—6, 15—19, 21—23, and 26—29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Harwood, Rybak, and
Douglas. Final Act. 2—9.
(2) Claims 1, 3—6, 15—19, 21—23, and 26—29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Basir, Harwood, and Douglas.
Final Act. 9—16.
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Issues on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the cited prior art teaches or suggests the disputed limitation:
“modifying the information using a user input device connected to the
computing device, and sending the modified information back to the mobile
device,” as recited in independent claims 1 and 15. App. Br. 4—5; Reply Br.
1-2.
ANALYSIS
§103 (a) Rejection of Claims 1, 3—6, 15—19, 21—23, and 26—29 based on
Basir, Harwood, and Douglas
With respect to claims 1 and 15, the Examiner finds Basir teaches a
method of accessing information, via a mobile device, including most of the
claim limitations, except for (1) “selecting one of a first and second
operation mode based on a determination to store information from the
mobile device on the computing device” and (2) “modifying the information
using a user input device connected to the computing device, and sending
the modified information back to the mobile device [during the second
operation mode].” Final Act. 10-12 (citing Basir || 22, 24, 28, 44, Fig. 1).
Figure 1 of Basir is reproduced below with additional markings for
illustration.
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communication; system (•<>)
Basir’s Figure 1 shows a vehicle immersive communication system 10 that
integrates mobile device 12 to provide hands-free use of phone call, email
(and its attachment), text, and other functionality of mobile device 12.
To support the conclusion of obviousness, the Examiner then relies on
Harwood for teaching “selecting one of a first and second operation mode
based on a determination to store information from the mobile device on the
computing device” and its related functionality when the first or second
operation mode is selected. Final Act. 10-11 (citing Harwood 5:15—34,
7:15—56, 9:42—10:9, Fig. 4). The Examiner also relies on Douglas for
teaching “modifying the information using a user input device connected to
the computing device, and sending the modified information back to the
mobile device” in the context of using voice recognition to edit documents.
Final Act. 12 (citing Douglas 3:45—4:23, Figs. 2—7).
Appellants contend none of the cited prior art, including Basir,
Harwood, and Douglas, teaches or suggests the disputed limitation:
“modifying the information using a user input device connected to the
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computing device, and sending the modified information back to the mobile
device” as claimed. App. Br. 4—5; Reply Br. 1—2. In particular, Appellants
argue Basir—Appellants’ earlier disclosure—teaches a vehicle hands-free
system that generates “new information using text-to-speech (see Basir at
[0007]), and do not relate to modifying information from a mobile device, as
claimed.” App. Br. 5.
Appellants acknowledge “Harwood’s disclosure is related to an
interface between a cell phone 13 and a vehicle 12” but argue “Harwood’s
vehicle computer 12 does not modify any information retrieved from the cell
phone 13, and therefore Harwood’s cell phone 13 does not expect to receive
any such ‘modified information’ from its vehicle computer 12.” Id.
Likewise, Appellants argue Douglas “makes no mention of sending
information to a mobile device once it is modified.” Id.
Because neither Basir, nor Harwood, nor Douglas teach the disputed
limitation: “modifying the information using a user input device connected
to the computing device, and sending the modified information back to the
mobile device” as claimed, Appellants contend (1) there is no reason to
modify Harwood “such that its vehicle computer would send modified
information to its mobile device” and (2) “the only suggestion that
information can be modified using a computing device and then returned to
a mobile device is Applicant’s own patent application” and, as such, “the
Examiner’s rationale is entirely based on hindsight.” Id.
We are not persuaded by Appellants’ arguments. Rather, we find the
Examiner has provided a comprehensive response, supported by a
preponderance of evidence, to each of the contentions raised by Appellants.
Ans. 8—14. At the outset, we note claim terms are given their broadest
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reasonable interpretation consistent with the specification. In re Am. Acad.
ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The term “modified
information” is not defined by Appellants’ Specification. Rather, that term
is broadly described in Appellants’ Specification in the context of an email
as being “modified or forwarded or replied to by the user” at the computing
device, via user input device 14 (i.e., keyboard, mouse or microphone) and
modified information (modified email such as replied or forwarded email)
may be sent back to mobile device 12 for storage and/or retransmission.
Spec. 1115, 30.
Based on Appellants’ Specification, the Examiner has broadly but
reasonably interpreted the term “modified information” as encompassing an
edited document, via voice recognition application as disclosed by Douglas
when Douglas’ voice recognition application is incorporated into a vehicle
hands-free telephone system of Basir and Harwood for sending an email,
including an edited document back to a mobile device. Ans. 12—13 (citing
Douglas 3:45—4:23, Figs. 2—7). We find the Examiner’s interpretation
reasonable and consistent with Appellants’ Specification. As such, we agree
with the Examiner that the combination of Basir, Harwood, and Douglas
teach the disputed limitation of Appellants’ claims 1 and 15. Ans. 13.
More importantly, we note Basir also teaches the disputed limitation:
“modifying the information using a user input device connected to the
computing device, and sending the modified information back to the mobile
device” as recited in Appellants’ claims 1 and 15 in the context of reading, at
a computing device, an incoming email from a mobile device and sending
“automatic replies [back to the mobile device] without driver intervention”
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or “forward[ing] certain emails to a third-party without interruption.” See
Basir || 23—24.
In particular, Basir teaches:
In addition to reading email, the control unit 11 also enables the
driver to compose responses. The driver can send a reply using
existing text or voice templates (i.e. “I’m in the car call me at
'number,"” or “I’m in the car, I will reply as soon as I can”). New
emails can also be created and sent as a voice recording in the
form of a .wav or .mp3 file. The driver is also provided the
option of calling the sender of the email on the phone using
existing contact information in the address book, or responding
to meeting requests and calendar updates (i.e. Outlook). Emails
can also be created as freeform text responses by dictating the
contents of the email. The device then translates that into text
form for email transmission. An intelligent assistant will be
immediately available to suggest possible actions and to provide
help as needed. Again all of these options are prompted by verbal
inquires by the control unit 11 which can be selected by voice
commands by the driver.
Basir 128 (emphasis added).
Basir also teaches that “[t]he driver can also reply to an email with a
phone call” and “the intelligent parsing features include automatic replies,
forwarding and prioritization based on content and sender, and substitution
of difficult phrases (i.e. email addresses and web site URLs) with simple
names and words” or “[pjrepared text or voice replies can be used to send
frequently used responses (i.e. ‘I’m in transit right now’)” or “[s]ome
prepared quick-responses may be used to automatically forward an email to
a pre-selected recipient.” Basir || 37, 52.
Therefore, on this record, we sustain the Examiner’s obviousness
rejection of independent claims 1 and 15, and their respective dependent
claims 3—6, 16—19, 21—23, and 26—29, which Appellants do not argue
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separately. App. Br. 5. However, because we have relied on facts and
reasoning not raised by the Examiner, we designate our affirmance as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b) to preserve Appellants’
procedural safeguards. In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir.
2011) (“Had the Board labeled its rejection as a new ground of rejection,
Stepan could have reopened prosecution to address the newly-alleged
deficiencies in its Declaration with the examiner.”); In reLeithem, 661 F.3d
1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and
the same prior art references, alone, is insufficient to avoid making a new
ground of rejection when the Board relies on new facts and rationales not
previously raised to the applicant by the examiner.”).
CONCFUSION
On the record before us, we conclude the Examiner has not erred in
rejecting claims 1—6, 9—11, and 15—25 under 35 U.S.C. § 103(a) over Basir,
Harwood, and Douglas.
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1—6, 9—
11, and 15—25 under 35 U.S.C. § 103(a) over Basir, Harwood, and Douglas,
and designate our affirmance as a new ground of rejection pursuant to 37
C.F.R § 41.50(b) to preserve Appellants’ procedural safeguards because we
have relied on facts and reasoning not raised by the Examiner.
Our affirmance is dispositive as to all pending claims 1—6, 9-11, and
15—25. It is not necessary, therefore, to address the other, cumulative
ground of rejection entered by the Examiner, i.e., whether claims 1—6, 9—11,
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and 15—25 are patentable under 35 U.S.C. § 103(a) over Harwood, Rybak,
and Douglas. See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (noting
that affirmance of rejection of all claims under § 103(a) made it unnecessary
to reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (holding that by deciding a single dispositive
issue, the ITC was not required to review other matters decided by the
presiding officer).
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new [ejvidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record .... 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: 37 C.F.R, $ 41.50(b)
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