Ex Parte Boll et alDownload PDFPatent Trial and Appeal BoardMay 6, 201612891993 (P.T.A.B. May. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/891,993 09/28/2010 28395 7590 05/10/2016 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR David P. Boll 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 83162227 1439 EXAMINER ZUNIGA ABAD, JACKIE ART UNIT PAPER NUMBER 2469 NOTIFICATION DATE DELIVERY MODE 05/10/2016 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID P. BOLL, NELLO JOSEPH SANTO RI, THOMAS RICHARD ALEXANDER, and JOSEPH N. ROSS Appeal2014-007492 Application 12/891,993 Technology Center 2400 Before BRUCE R. WINSOR, JON M. JURGOV AN, and AARON W. MOORE, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse and institute a new ground of rejection pursuant to the provisions of 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellants' disclosed invention relates to "vehicle based operation of mobile applications stored on a remote server ... [which] enable[ s] the 1 The real party in interest identified by Appellants is Ford Global Technologies, LLC. (Br. 2.) Appeal2014-007492 Application 12/891,993 'remoting' of the services of the human machine interface (HMI) of a vehicle computing system to the mobile application to enable application operation." (Spec. 1:8-13.) Claim 1, which is illustrative, reads as follows: 1. A system comprising: a vehicle-computer comprising an occupant-controllable human machine interface (HMI); a remote application server, communicating with the computer and executing mobile applications configured to receive inputs from and transmit outputs to the computer; and an HMI application executing on the computer, comprising instructions for: providing RMI-services to the mobile applications enabling input/output exchange with the mobile applications; and enabling vehicle-based operation of the mobile applications executing remotely, via the HMI. Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ablay et al. (hereinafter "Ablay") (US 2003/0147534 Al; Aug. 7, 2003). (See Final Act. 4--9.) Claims 13-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ablay and Treyz et al. (hereinafter "Treyz") (US 6,526,335 Bl; Feb. 25, 2003). (See Final Act. 9-16.) Rather than repeat the arguments here, we refer to the Appeal Brief ("Br." filed Aug. 20, 2013) and the Specification ("Spec." filed Sept. 28, 2010) for the positions of Appellants and the Final Office Action ("Final Act." mailed Mar. 20, 2013) and Answer ("Ans." mailed Apr. 7, 2014) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not 2 Appeal2014-007492 Application 12/891,993 been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). ISSUE The dispositive issue presented by Appellants' contentions is as follows: Does Ablay disclose "an HMI application executing on the computer [in a vehicle] ... providing HMI-services to the mobile applications [executing remotely] enabling input/output exchange with the mobile applications[,] and enabling vehicle-based operation of the mobile applications executing remotely, via the HMI" (emphases added), as recited in claim 1 ? ANALYSIS The Examiner finds Ablay discloses all the recitations of claim 1. (Final Act. 4--5 (citing Ablay i-fi-f 19, 25-27, 30, 34, 58-63, 73, Fig. 1); see also Ans. 14--19 (additionally citing Ablay i-fi-128, 57, Figs. 2, 5).) Appellants contend, inter alia, the cited passages of Ablay "are related to download and installation of new software to upgrade existing system, and ... [not] directed at 'enabling vehicle-based operation of mobile applications executing remotely via the HMI' as claimed." (Br. 5---6 (referring to Ablay i-fi-1 59, 63).) We agree with Appellants. We agree with the Examiner that Ablay's user system 118 (Ablay Fig. 1) discloses the recited HMI. (See Ans. 15; Ablay i125.) We further agree with the Examiner that Ablay discloses input/output exchange between Ablay's user system 118 (Ablay Fig. 1) and an application running on Ablay's remote server 146 (id.), which the Examiner maps to the recited 3 Appeal2014-007492 Application 12/891,993 "mobile applications." (See Ans. 16-19; Ablay ilil 25, 57.) However, the passages of Ablay cited by the Examiner relate to updating or reprogramming the systems in a vehicle, such as the vehicle system 104 (Ab lay Fig. 1) or the user system 118, from the server 146. (See Ab lay i-fi-157---64, 73, Figs. 5, 7.) We find no disclosure in the cited passages of Ablay that the user system 118 enables a human user to interact with an application running on the server 146 by inputting instructions or outputting displayed information. In other words, we find no disclosure in Ablay that the user system 118 (id.) ''provid[es] HMI-services to the mobile applications" (emphasis added) executing on the server 146 thereby "enabling vehicle-based operation of the mobile applications executing remotely, via the HMI," as recited in claim 1. The passages of Ablay relied on by the Examiner do not show "each and every element as set forth in the claim ... , either expressly or inherently described, in a single prior art reference," Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), "arranged as in the claim under review," In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990), "in as complete detail as is contained in the ... claim," Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Accordingly, we find the cited passages do not anticipate claim 1. Appellants demonstrate error in the rejection of claim 1. Accordingly, we decline to sustain the rejections of claim 1 and claims 2-9, which depend from claim 1. Independent claim 10 recites a substantially similar limitation and was rejected on substantially the same bases as claim 1. (Compare Final Act. 7- 8 with id. at 4--5; see also Ans. 19.) Accordingly, for the same reasons as for 4 Appeal2014-007492 Application 12/891,993 claim 1, we decline to sustain the rejections of claim 10 and claims 11-17 which depend, directly or indirectly, from claim 10. Independent claim 18 is similar to claims 1 and 10, reciting the vehicle's microphone and speakers in place of the broader "RMI-interface." The Examiner relies on Treyz to teach use of a microphone and speakers as an HMI -interface (Final Act. 14 (citing Treyz co 1. 1, 11. 2 5-6 7, co 1. 15, 11. 19-48, col. 72, 11. 56-67, col. 73, 11. 1---67)), but otherwise provides mapping of the recitations of claim 18 to Ab lay that is substantially similar to that provided for claim 1. (Compare Final Act. 13-14 with id. at 4--5.) The Examiner relies on Treyz only for use of the vehicle's microphone and speakers as a type of interface, not for any additional teachings regarding the provision of RMI-services to the mobile application. Accordingly, for the same reasons as for claim 1, we decline to sustain the rejection of claim 18 and claims 19 and 20, which depend from claim 18. NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Independent Claims 1, 10, and 18 Claims 1, 10, and 18 are rejected on a new ground of rejection under 35 U.S.C. § 103(a) as unpatentable over Ablay and Treyz. Except as specifically addressed supra, we adopt as our own the Examiner's findings and conclusions regarding the teachings of Ablay and Treyz. (See Final Act. 4--5, 7-8, 13-14.) Appellants contend that Ablay's user system 118 (Ablay Fig. 1) is not a "vehicle-computer" because Ablay discloses both user system 118 and a vehicle system 104 (id.), distinguishing between the two. (Br. 5.) However, the interpretation of prior art references does not require the 5 Appeal2014-007492 Application 12/891,993 application of an ipsissimis verbis test. Cf Bond, 910 F.2d at 832-33 (citing Akzo N. V. v. US. Int 'l Trade Comm 'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) ("[a] reference ... need not duplicate word for word what is in the claims"). Appellants' Specification refers to a vehicle- computer as "a computer at the vehicle." (Spec. 3:29-30.) Ablay's user system 118 includes functions associated with a computer and Ablay teaches that user system 118 may be a laptop computer in the vehicle. (Ablay i-f 25.) Therefore, Ablay's user system 118 is encompassed by the broadest reasonable interpretation of "vehicle-computer." Treyz teaches "an HMI application executing on the computer [in a vehicle] ... providing RMI-services to the mobile applications [executing remotely] enabling input/output exchange with the mobile applications[,] and enabling vehicle-based operation of the mobile applications executing remotely, via the HMI," as recited in claim 1 and similarly recited in claims 10 and 18. For example, Treyz teaches the following: Illustrative restaurant ordering screens 902 and 904 that may be displayed to occupants of automobile 12 (e.g., occupants other than the driver) are shown in FIG. 78. Occupants of automobile 12 (e.g., rear-seat or front-seat passengers) may use highlight region 906 to select desired menu items from list 908. The order may be placed with the restaurant over a remote wireless link. When the occupants have placed the order, a confirmation message such as shown in screen 904 may be displayed. An audio confirmation may also be displayed. The menu items that were ordered may be paid for in person, may be paid for over the remote wireless link during the ordering process or may be paid for using a local wireless link (e.g., as the user drives through a drive-through lane at the restaurant). (Treyz col. 65, 11. 50-63; see also id. col. 73, 11. 29-37, Figs. 1, 78.) 6 Appeal2014-007492 Application 12/891,993 Thus, Treyz teaches an automobile personal computer 14 (Treyz Fig. 1 ), i.e., a "vehicle-computer," that enables vehicle occupants to interact with a remote server to place an order, 2 providing RMI-services to an application running on the remote server, i.e., a "mobile application." We conclude it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate Treyz's teachings into Ablay's system to increase the limited functionality of Ablay's system (see Treyz col. 1, 11. 17-22) by permitting user interaction with applications running remotely from the vehicle, as taught by Treyz. We further agree with the Examiner that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to improve upon the system described in Ablay by "providing services of the vehicle's microphone or speakers" as taught by Treyz because it would provide ... Ab lay' s system with the enhanced capability of providing [a convenient] interface for [the] driver/user to utilize/control the in-vehicle computing system for information and application services including mobile services. (Final Act. 14 (citing Treyz col. 1, 11. 25---67).) Dependent Claims We have entered new grounds of rejection for independent claims 1, 10, and 18. We leave it to the Examiner to consider the patentability of dependent claims 2-9, 11-17, 19, and 20 in light of our findings and conclusions supra regarding the independent claims. The fact that we did not enter new grounds of rejection for the dependent claims should not be 2 The order may be placed with an "on-line ordering service for the restaurant." (Treyz col. 65, 1. 48.) 7 Appeal2014-007492 Application 12/891,993 construed to mean that we consider the dependent claims to be directed to patentable subject matter or to be patentable over the prior art of record. DECISION The decision of the Examiner to reject claims 1-20 is reversed. We enter a new ground of rejection for claims 1, 10, and 18 under 35 U.S.C. § 103(a). Section 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." Section 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 ground 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 Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding 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. 37 C.F.R. § 41.50(b). No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation