Ex Parte Daems et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612665360 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/665,360 12/22/2009 49443 7590 06/01/2016 Pearl Cohen Zedek Latzer Baratz LLP 1500 Broadway 12th Floor New York, NY 10036 FIRST NAMED INVENTOR Frank C. H. Daems 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. P-77881-US 1563 EXAMINER NILFOROUSH, MOHAMMAD A ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): USPTO@PearlCohen.com Arch-USPTO@PearlCohen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK C. H. DAEMS and MICHAEL M. P. PEETERS Appeal2014-000534 Application 12/665,360 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We REVERSE. 1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed July 26, 2013) and Reply Brief ("Reply Br.," filed Oct. 9, 2013), the Examiner's Answer ("Ans.," mailed Sept. 27, 2013), and the Final Office Action ("Final Action," mailed May 6, 2013). 2 Appellants identify the real party in interest as NXP B.V. (Appeal Br. 1). Appeal2014-000534 Application 12/665,360 CLAIMED INVENTION The claimed invention relates to "road toll systems, for implementing an automatic payment system for deducting road tolls based on the road sections used" (Spec. 1 :4---6). Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal (Appeal Br. 18, Claims App.). 1. A road toll system comprising: a satellite navigation receiver implementing a position tracking function, the satellite navigation receiver providing satellite navigation data; a first data processor that determines a route taken based on satellite navigation data provided from the satellite navigation receiver, the satellite navigation data being associated with a variable identity, and that determines a road toll level, the first data processor then outputting the determined road toll level; and a second data processor that receives, from the first data processor, the determined road toll level output by the first data processor, the second data processor outputting the determined road toll level, wherein the satellite navigation receiver obtains the determined road toll level from the second data processor using the variable identity. REJECTIONS 1. Claims 10 and 17 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claims 1-5 and 11-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Idler (EP 1,517,271 Al, pub. March 23, 2005), Grush (US 2007/0225912 Al, pub. Sept. 27, 2007), and Robinson (US 2007 /0285280 Al, pub. Dec. 13, 2007). 2 Appeal2014-000534 Application 12/665,360 3. Claims 6 and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Idler, Grush, Robinson, and Coffee (US 6,611,755 Bl, iss. Aug. 26, 2003). 4. Claims 7 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Idler, Grush, Robinson, and Jonge (US 2002/0072963 Al, pub. June 13, 2002). 5. Claims 8-10 and 17-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Idler, Grush, Robinson, and Tengler (US 7,609,174 B2, iss. Oct. 27, 2009). ANALYSIS Indefiniteness Rejection The Examiner determines that claims 10 and 17 are indefinite because it is unclear how the satellite navigation receiver can provide the satellite navigation data to the first data processor as required by claims 1 and 11 if the satellite navigation data is provided to the second data processor as required by claims 10 and 17 (Ans. 10). Appellants argue that no contradiction exists (Appeal Br. 5). We agree with Appellants. Claims 1 and 11 require a "satellite navigation receiver providing satellite navigation data" and "a first data processor" that makes a determination based on "satellite navigation data provided from the satellite navigation receiver" (Appeal Br. 18, Claims App.). Thus, claims 1 and 11 require that the satellite navigation data is provided from the satellite navigation receiver to the first data processor. However, claims 1 and 11 do not require that the satellite navigation data is provided directly from the 3 Appeal2014-000534 Application 12/665,360 satellite navigation receiver to the first data processor. We see nothing in claims 1 and 11 that contradicts the second data processor acting as a proxy between the satellite navigation receiver and the first data processor as required by claims 10 and 17. Accordingly, the rejection of claims 10 and 17 as being indefinite is not sustained. Obviousness Rejections Independent claim 1 requires a "satellite navigation receiver providing satellite navigation data" that is "associated with a variable identity." The satellite navigation data is provided to "a first data processor" that determines a road toll level, and then outputs the determined road toll level to "a second data processor," and the satellite navigation receiver subsequently "obtains the determined road toll level from the second data processor using the variable identity." (Appeal Br. 18, Claims App.). The Examiner relies on "Grush [for] disclos[ing] the use of a variable identity," and finds that the "unique transaction code" disclosed in paragraphs 82, 101, and 236 of Grush (Ans. 15-16) correspond to this feature as recited in claim 1. According to the Examiner, "this transaction code is variable because it is varied each time this journey information is transmitted to a different system, and it only lasts for the duration of each transaction" (Ans. 16) (citing Grush, paragraphs 101 and 236). Appellants dispute this finding. In particular, Appellants argue that "Grush's 'unique transaction code' cannot be regarded as equivalent to the claimed variable identity." (Appeal Br. 10). During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary 4 Appeal2014-000534 Application 12/665,360 skill in the art. As the Examiner acknowledges in the Answer, the Specification describes "variable identity" as "a tag which is remembered by the OBU and used subsequently to gain access to the calculated road toll values" (Ans. 14--15) (citing Spec., paragraph 55). The language ofclaim 1, which recites that "the satellite navigation receiver obtains the determined road toll level from the second data processor using the variable identity," is consistent with the Specification. By referring to the same antecedent element, claim 1 requires that the satellite navigation receiver use the same variable identity provided to the first data processor to obtain the road toll level from the second data processor. We are persuaded by Appellants' argument that the Examiner's interpretation of the claimed subject matter is inconsistent with the Specification and the plain language of claim 1. The claimed "variable identity" is varied each time a block of samples of satellite navigation data is provided to the first data processing means" (Spec. 3 :20-23). Because Grush discloses that a new and different transaction code is used with each system and only for the duration of a single transaction, Grush fails to disclose using the same "variable identity" to communicate data to a first data processor and subsequently obtain data from a second data processor, as required by claim 1. Moreover, Grush's transaction code is varied for each transaction with each different system, and not varied with each block of samples of satellite navigation data. Because all the claim features of claim 1 are not taught or suggested by the applied prior art, we find that a prima facie case of obviousness has not been established. Accordingly, we do not sustain the rejection of independent claim 1 as obvious over Idler, Grush, and Robinson. For the same reasons, we do not 5 Appeal2014-000534 Application 12/665,360 sustain the rejections of claims 2-10 dependent thereon. Cf Jn re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Independent claim 11 recites similar limitations and the Examiner's rejection of claim 11 as obvious over Idler, Grush, and Robinson relies on the same erroneous findings as in claim 1. Thus, for the same reasons, we do not sustain the rejections of independent claim 11, and claims 12-19 dependent thereon. DECISION The Examiner's decision to reject claims 1-19 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation