Ex Parte Enborg

Patent Trial and Appeal Board

Feb 28, 2014

10151427 (P.T.A.B. Feb. 28, 2014)

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.
10/151,427 05/20/2002 Kenneth Enborg GP-302249-OST-ALS 2913
74829 7590 02/28/2014
Julia Church Dierker
Dierker & Associates, P.C.
3331 W. Big Beaver Road
Suite 109
Troy, MI 48084-2813
EXAMINER
GRAHAM, CLEMENT B
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
02/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH ENBORG
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Appeal 2011-013376
Application 10/151,427
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013376
Application 10/151,427

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 and 3-21. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A method for enabling purchase units within a
portable device using a mobile vehicle telematics device,
comprising:
via one of the mobile vehicle telematics device or a
dedicated Web site, requesting a number of purchase units;
via a data transmission device at a call center, delivering
the purchase units from the call center to the mobile vehicle
telematics device;
via the mobile vehicle telematics device, transferring at
least a portion of the purchase units from the mobile vehicle
telematics device to a portable device; and
via the portable device, decrementing purchase units
from the portable device.

Appellant appeals the following rejection:
Claims 1 and 3-21 under 35 U.S.C. § 103(a) as unpatentable over
Rolf (US 7,376,581 B1; iss. May 20, 2008) and Villaret (US 2002/0046184
A1; pub. Apr. 18, 2002).

APPELLANT’S CONTENTIONS
Appellant argues that:
it is submitted that the monetary units described in Rolf are not
delivered from the processing facility 16 to a mobile vehicle
telematics device, and then a portion of the purchase units are

Appeal 2011-013376
Application 10/151,427

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transferred from the telematics device to the communications
device. In other words, Rolf does not disclose or suggest using
an intermediate device (such as a telematics device) that
communicates with the processing facility (such as to retrieve
monetary units therefrom) and with the communications device.
(App. Br. 12).

ISSUE
Did the Examiner err in rejecting the claims because Rolf does not
disclose using a mobile vehicle telematics device as an intermediate device
that communicates with the processing facility and with the communications
device?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred, e.g., the Wireless Application
Protocol of Villaret does not discloses or suggest transferring at least a
portion of the purchase units from the mobile vehicle telematics device to a
portable device given it is merely a hands free feature for paying for a
purchase from an associated device without mention of decrementing
purchase units from the device.
Thus, as to Appellant’s above contention, we agree.

DECISION
We reverse the decision of the Examiner.

REVERSED

Appeal 2011-013376
Application 10/151,427

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