Ex Parte Boll et al

Patent Trial and Appeal Board

Aug 27, 2018

12891993 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/891,993 09/28/2010
28395 7590 08/29/2018
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
08/29/2018 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):
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
Appeal 2018-002086
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 1-3, 6, and 10, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
Claims 4, 5, 7-9, and 11-20 are cancelled. App. Br. (Claims App'x 2).
We reverse and institute a new ground of rejection within the
provisions of37 C.F.R. § 41.50(b) (2016).
1 The real party in interest identified by Appellants is Ford Global
Technologies, LLC. (App. Br. 1.)
Appeal2018-002086
Application 12/891,993
RELATED PROCEEDINGS
Appellants state that there are no related appeals. App. Br. 2.
Appellants filed a previous appeal, Appeal 2014-007492, decided May 10,
2016, related to the present application. See Manual of Patent Examining
Procedure (MPEP) § 706.07(h) XI. A. (9th ed. Rev. 08.2017, Jan. 2018)
("[A] Board decision in an application is the 'law of the case/ and is thus
controlling in that application and any subsequent, related application.").
Accordingly, Appeal 2014-007 492 is related to the present appeal.
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "vehicle based operation of
mobile applications stored on a remote server ... [which] enable[ s] the
'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. Claims 1 and 10, which are illustrative, read as
follows:
1. A system comprising:
a vehicle-installed computer including a human machine
interface (HMI) and HMI gateway application;
a remote application server, storing application profiles for
each of a plurality of vehicles defining applications accessible to
each of a plurality of vehicles, in communication with the
vehicle-installed computer, and configured to execute the
applications;
an HMI application executing on the computer, wherein
the vehicle installed computer is configured to:
receive, at the HMI gateway application, input
requests from the mobile applications executing remotely;
receive input to the HMI; and
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transfer the input to the HMI gateway application;
and
via the HMI gateway application, enable operation of the
mobile applications based on the received input.
10. A computer-implemented method comprising:
receiving an input request, via a human machine interface
(HMI) gateway application executing on a vehicle computer,
from a mobile application executing on a remote application
server;
receiving input at a vehicle computer HMI;
relaying the input to the HMI gateway application;
providing the input from the HMI gateway application to
the mobile application responsive to the request, to enable
vehicle computer HMI control of the mobile application.
Claims 1-3, 6, and 10 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ablay et al. (hereinafter "Ablay") (US
2003/0147534 Al; Aug. 7, 2003) and Wang et al. (hereinafter "Wang") (US
2005/0256615 Al; Nov. 17, 2005). See Final Act. 3-7.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed June 29, 201 7; "Reply Br." filed Dec. 18, 201 7) for Appellants'
positions; the Final Office Action ("Final Act." mailed Feb. 10, 2017) and
Examiner's Answer ("Ans." mailed Oct. 18, 2017) for the Examiner's
reasoning, findings, and conclusions; the Specification ("Spec." filed Sept.
28, 2010); and the Decision in Appeal 2014-007492 ("'492 Dec'n"). Only
those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2016).
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ISSUES
The pivotal issues presented by Appellants' contentions are as
follows:
Does the Examiner err in finding the combination of Ablay and Wang
teaches or suggests "a remote application server, storing application profiles
for each of a plurality of vehicles defining applications accessible to each of
a plurality of vehicles" ( the "profile limitation"), as recited in claim 1?
Does the Examiner err in finding the combination of Ablay and Wang
teaches or suggests "receiving an input request, via a human machine
interface (HMI) gateway application executing on a vehicle computer" (the
"gateway limitation"), as recited in claim 1 O?
ANALYSIS
Claim 1
The Examiner finds Ablay combined with Wang teaches the profile
limitation. Final Act 3 (citing Ablay ,r,r 26-27, 57; Fig. 1), 5 (citing Wang
,r,r 13, 16, 27, 29, Figs. 1, 2); see also Ans. 7-12 (additionally citing Ablay
,r,r 25, 72, Figs. 2, 5; Wang ,r 2). The Examiner explains as follows:
Ablay discloses application layer 291 executes infrastructure
portions ( application profiles) of applications running in vehicle
102 ( define applications that are accessible to each of a plurality
of vehicles), which infrastructure portions of the applications are
stored in memory 150 and executed by processor 148 of server
146.
Regarding the applications that are accessible, Ablay
discloses a user system 118 (vehicle) that can request/access
services/applications from infrastructure 140 (applications that
are accessible to each of the vehicles).
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Application 12/891,993
Regarding the plurality of vehicles, Ablay discloses the
vehicle manufacturer that remotely communicates with a
plurality of vehicles for software updates in a mass, single effort
rather than on a vehicle-by-vehicle basis (applications that are
accessible to each of a plurality of vehicles).
Ans. 12.
In other words, Wang discloses for each of a plurality of vehicles
storing data/profiles/preferences for services/applications
accessible to the vehicle.
Therefore, given that Ablay discloses infrastructure
portions ( application profiles) stored at a server of applications
accessible by each of the plurality of vehicles and Wang
discloses defining applications/services accessible to each of a
plurality of vehicles, then the combination of Ablay and Wang
would naturally lead to limitations as claimed by the Appellant.
Ans. 14.
Appellants contend that Ablay merely teaches the infrastructure
portions of applications running on a central server and does not teach a
profile that defines applications accessible to each vehicle (App. Br. 4--5),
whereas Wang teaches that a server can store user preference data for setting
a vehicle's on-board systems (App. Br. 5). We agree with Appellants.
It is true that Ablay teaches "a remote application server, storing
application[ s] . . . for ... a plurality of vehicles ... accessible to ... [the]
plurality of vehicles," and Wang teaches "a remote application server,
storing ... profiles for each of a plurality of vehicles." However, contrary to
the Examiner's findings, the fact that the infrastructure portion of an
application program may run ( and be stored) on a central server does not
teach that the infrastructure portions of the application programs constitute a
profile of application programs accessible by each vehicle of the plurality of
vehicles. For example, all vehicles may have access to all application
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programs, or accessibility may be defined at each vehicle rather than at the
application server. Further, at most Wang teaches user preference profiles
stored at the application server, but does not teach or suggest that those
profiles include a profile of the applications accessible by each vehicle of the
plurality of vehicles.
For the foregoing reasons we do not sustain the rejection of claim 1
and claims 2, 3, and 6, which depend from claim 1 (see In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988) ("Dependent claims are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious.")).
Claim 10
The Examiner finds Ablay, when combined with Wang, teaches the
gateway limitation. Final Act. 6 ( citing Ablay ,r,r 24--25, 58, Fig. 5).
Appellants contend that the Examiner errs by implicitly mapping the
recited "human machine interface (HMI) gateway application" to the
combination of Ablay's Vehicle Gateway 108 and Wireless Gateway 120,
whereas claim 10 recites a single HMI gateway application. App. Br. 5---6.
Even accepting Appellants' contention, arguendo, however, it does not
demonstrate Examiner error. Combination of the functions of Ablay's two
gateways would have been merely an obvious integration or rearrangement
of components without any change in their functions. "[T]he use of a one
piece construction instead of the structure disclosed in [the prior art] would
be merely a matter of obvious engineering choice." In re Larson, 340 F.2d
965, 968 (CCPA 1965)). Further, the relocation of parts without a change in
function is a matter of engineering design choice. In re Japikse, 181 F .2d
1019, 1031 (CCPA 1950) (claims to a hydraulic power press which read on
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the prior art except with regard to the position of the starting switch were
held unpatentable because shifting the position of the starting switch would
not have modified the operation of the device).
Appellants next explain the Examiner maps the recited input request
to Ablay's teaching that gateway 120 "accepts service requests from remote
applications running in infrastructure 140" (Ablay ,r 24). App. Br. 6.
Appellants contend "there is no evidence presented that the 'service request'
is an 'input request' and that user input is passed to the application
responsive to the request' by any of the gateways in Ablay." Id. We agree
with Appellants. Although claim 10 does not explicitly identify the "input
[ received] at a vehicle computer HMI" as being a user input, the recited
interface is a "human machine interface (HMI)," and the broadest
reasonable interpretation of an input received by an HMI is an input from a
human, i.e., a user. Nothing in the cited portions of Ablay teaches a user
input to an HMI that is provided to the infrastructure portion of a remote
application ( the recited "mobile application") in response to a request for the
input from the mobile application. To be sure, Wang does disclose user
inputs (Wang's "service request") to an HMI (Wang's "input device") that
are relayed to a remote application (Wang's "call center") (Wang ,r,r 52-53)
but we find nothing in the cited passages of Wang that teaches that the
"service request" is in response to an input request from the call center, as
recited in claim 10.
In view of our findings and conclusions, infra, we need not address
Appellants' contention that Wang does not teach control of a mobile
application by the HMI. See App. Br. 6-7.
For the foregoing reasons, we do not sustain the rejection of claim 10.
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NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 4I.50(b)
Claims 10 is rejected on a new ground of rejection under 35 U.S.C.
§ I03(a) as unpatentable over Ablay, Wang, and Treyz et al. (hereinafter
"Treyz") (US 6,626,335 Bl; Feb. 25, 2003). 2 Except as addressed supra, we
adopt as our own the Examiner's findings and conclusions regarding the
teachings of Ablay and Wang. (See Final Act. 6-7).
Treyz teaches the following:
The user may place an order by, for example, using a web
browser on the automobile personal computer to Connect to an
on-line ordering service for the restaurant over a remote wireless
link.
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. 46-63; see also id. col. 65, 1. 64---col. 66, 1. 19, col. 73, 11.
29--37, Figs. 1, 78.
Treyz's ordering screens received from an on-line ordering service
and displayed on the automobile personal computer, which request that the
user press "enter" to select an option or to confirm a selection (see Treyz
2 Treyz is prior art of record in the present application. See '492 Dec'n 2.
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Fig. 78), when combined with Ablay's and Wang's teachings, teaches
"receiving an input request, via a human machine interface (HMI) gateway
application executing on a vehicle computer, from a mobile application
executing on a remote application server." The occupant selecting a menu
option and placing or confirming an order, when combined with Ablay's and
Wang's teachings, teaches "receiving input at a vehicle computer HMI,"
"relaying the input to the HMI gateway application," and "providing the
input from the HMI gateway application to the mobile application
responsive to the request." In this way, Treyz's automobile personal
computer is enabled to control the on-line ordering service such that the
occupant's order is placed by the ordering service with the restaurant, i.e.,
Treyz, teaches "providing the input from the HMI gateway application to the
mobile application responsive to the request, to enable vehicle computer
HMI control of the 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.
DECISION
The decision of the Examiner to reject claims 1-3, 6, and 10 is
reversed.
We enter a new ground of rejection for claim 10 under 35 U.S.C.
§ 103(a).
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This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.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 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.
37 C.F.R. § 4I.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.
§§ 41.50(±), 4I.52(b) (2013).
REVERSED
37 C.F.R. § 4I.50(b)
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