Ex Parte Eich et al

Patent Trial and Appeal Board

Feb 16, 2016

13018405 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/018,405 0113112011 Rodger W. Eich
22428 7590 02/18/2016
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
108918-0114 8470
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODGER W. EICH, MONICA LEVY, MICHAEL CROWE,
JOHN SIBSON, and WILLIAM J. FLUHARTY
Appeal 2014-003261 1
Application 13/018,4052
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
September 5, 2013) and Reply Brief ("Reply Br..," filed January 4, 2014),
and the Examiner's Answer ("Ans.," mailed November 6, 2013) and Final
Office Action ("Final Act.," mailed November 2, 2012). The record
includes a transcript of the oral hearing held February 4, 2016.
2 Appellants identify Johnson Controls Technology Company as the real
party in interest. App. Br. 2.
Appeal2014-003261
Application 13/018,405
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-18, 20, and 21. We have jurisdiction under 35 U.S.C.
§ 6(b ). Appellants' representative appeared for oral hearing in this appeal on
February 4, 2016.
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellants' claimed invention "generally relates to the field of
communication between electronic devices. More specifically, the present
application relates to wireless communication between electronic devices"
(Spec. ii 2).
Claim 1, reproduced below, is the sole independent claim and
representative of the subject matter on appeal:
1. An in-vehicle control system for communicating
data between at least one of an office control system and a
residential control system comprising:
a transceiver configured to be in communication with the
at least one of the office control system and the residential
control system;
a memory device in communication with the transceiver
wherein the memory device is configured to store a data file
received from the at least one of the office control system and
the residential control system; and
a processing device coupled to the transceiver and the
memory device, wherein the processing device is configured to
automatically display or audibly play the data file by the in-
vehicle control system in response to a determination that the
vehicle having the in-vehicle control system is pulling out of a
driveway.
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Application 13/018,405
REJECTIONS
Claims 1-18 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Alter-Tech (WO 2000/10029 Al, pub. Feb. 24, 2000) and
Barnes (US 2003/0065805 Al, pub. Apr. 3, 2003).
Claim 21 is rejected under 35 U.S.C. § 103(a) unpatentable over
Alter-Tech, Barnes, and Shearer (US 2011/0019825 Al, pub. Jan. 27, 2011).
ANALYSIS
Independent claim 1 and dependent claims 2-18 and 20
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the combination of Alter-Tech and Barnes does
not disclose or suggest a "processing device ... configured to automatically
display or audibly play the data file by the in-vehicle control system in
response to a determination that the vehicle having the in-vehicle control
system is pulling out of a driveway," as recited in claim 1 (App. Br. 5-9).
The Examiner cites ii.Jter-Tech as disclosing substantially all of the
limitations of claim 1 (Final Act. 3). But the Examiner acknowledges that
Alter-Tech does not explicitly disclose an office control system or a
residential system or a processing device "configured to automatically
display or audibly play the data file by the in-vehicle control system in
response to a determination that the vehicle having the in-vehicle control
system is pulling out of a driveway," as recited in claim 1 (id. at 4).
The Examiner cites Barnes to cure the deficiencies of Alter-Tech (id. (citing
Barnes i-fi-1383-385)). And the Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Alter-Tech by
incorporating the teachings of Barnes relating to office control
systems and a residential control systems with the motivation of
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Appeal2014-003261
Application 13/018,405
Id.
providing users with capabilities based on their precise
locations and changes in location. Barnes, paragraph 0006.
Barnes is directed to a system, method, and apparatus for providing
location-based functions and mobile e-commerce (Barnes Abstract), and
discloses a portable multi-function communication device including
programing for performing various functions based on the location of the
device (Barnes i-fi-1383, 384). Barnes, thus, describes that, based on user
inputs, the device may establish a communication link with the user's home
computer, e.g., to control electrical devices in the user's home, when the
user is within a predetermined distance from his/her home or at a
predetermined location, e.g., in the user's driveway (id.). Barnes discloses
that the device also can be programmed to control devices, e.g., tum a device
on or off, when the user leaves a particular area (id. i1385).
Appellants argue that the cited portions of Barnes merely describe that
the multi-function communication device can control other devices in a
user's home or another location remote from the device, and do not disclose
or suggest "automatically display[ing] or audibly play[ing] the data file Qy_
the in-vehicle control system in response to a determination that the vehicle
having the in-vehicle control system is pulling out of a driveway." (App.
Br. 7). We agree.
Responding to Appellants' argument in the Response to Argument
section of the Answer, the Examiner asserts that "reciting playing 'by the in-
vehicle control system' does not establish playing in a vehicle [i.e., that the
in-vehicle control system actually plays the data file]. It merely establishes
that the in-vehicle control system causes the data file to be played" (Ans. 8).
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Appeal2014-003261
Application 13/018,405
That construction cannot stand at least because it is inconsistent with the
claim language.
As Appellants observe, claim 1 recites that the in-vehicle control
system comprises a processing device configured to "automatically display
or audibly play the data file," which is received from an office control
system or residential control system and stored in the vehicle, i.e., in the
memory device of the in-vehicle control system, after transmission (Reply
Br. 3). In our view, the claim language, thus, unambiguously requires that
the display or playback of the vehicle-stored data file occur in the vehicle
itself rather than merely being caused to play by the in-vehicle control
system, as the Examiner suggests.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner's rejection under§ 103(a) of dependent claims 2-18
and 20. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent
claims are nonobvious if the independent claims from which they depend are
nonobvious").
Dependent claim 21
The Examiner's rejection of claim 21under35 U.S.C. § 103(a) based
on Shearer, in combination with Alter-Tech and Barnes, does not cure the
deficiency in the Examiner's rejection of claim 1. Therefore, we do not
sustain the Examiner's rejection of claim 21 under 35 U.S.C. § 103(a).
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Appeal2014-003261
Application 13/018,405
New Ground ofRejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Written Description
Claim 1, which is the sole independent claim, recites, inter alia, that
the in-vehicle control system automatically displays or audibly plays the
data file "in response to a determination that the vehicle having the in-
vehicle control system is pulling out of a driveway." Appellants point, in the
Appeal Brief, to paragraph 48 of the Specification as describing this feature
(App. Br. 3). However, we find nothing in paragraph 48 that describes that
the in-vehicle system automatically displays or audibly plays a data file in
response to a determination that the vehicle is pulling out of a driveway.
Instead, paragraph 48 merely describes that a user-selected file may be
downloaded by the in-vehicle control system for later viewing or
• 1 • mampu1ation.
Paragraph 50, which is the only passage in the Specification where we
find any mention of a driveway, states:
[0050] User 60 pulls out of a driveway 68 in vehicle 10, data
content may automatically be displayed on or played audibly by
in-vehicle control system 106. For example, weather data,
news data, navigation data, media data, etc. may be displayed or
played according to predefined settings.
But there is nothing in paragraph 50 that describes that a determination is
made that the vehicle is pulling out of the driveway. Nor is there any
description in that paragraph that the data content is automatically displayed
or played audibly in response to such a determination.
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Application 13/018,405
We find that the originally-filed Specification (including the original
claims) does not convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, Appellants were in possession of the
invention as now claimed, which is required to satisfy the written description
requirement. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991). Therefore, we enter a new ground of rejection of
independent claim 1, and claims 2-18, 20, and 21, which depend therefrom,
under 35 U.S.C. § 112, first paragraph.
DECISION
The Examiner's rejections of claims 1-18, 20, and 21under35 U.S.C.
§ 103(a) are reversed.
A NEW GROUND OF REJECTION has been entered for claims 1-
18, 20, and 21under35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also
provides that the 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.
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Application 13/018,405
(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).
REVERSED; 37 C.F.R. § 41.50(b)
tkl
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