Ex Parte Everhart

Board of Patent Appeals and Interferences

Feb 4, 2005

09170156 (B.P.A.I. Feb. 4, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHARLES ALLEN EVERHART
_____________
Appeal No. 2004-1459
Application No. 09/170,156
______________
ON BRIEF
_______________
Before JERRY SMITH, RUGGIERO, and MACDONALD, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-13, which constitute
all the claims in the application.
The disclosed invention pertains to a mobile information
system located in a vehicle for processing information which is
wirelessly exchanged with a remote information server.
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Application No. 09/170,156
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Representative claim 1 is reproduced as follows:
1. A mobile information system in a vehicle
for processing information which is wirelessly exchanged
with a remote information server, comprising:
a microphone for receiving spoken sounds;
a speech processor coupled to said microphone
for recognizing said spoken sounds and identifying
corresponding voice commands for processing
said information;
a state controller responsive to commands
including said voice commands from said speech
processor, said state controller having a main menu
mode and an electronic mail mode;
reconfigurable control elements coupled to said
state controller and mounted on a steering wheel of
said vehicle for generating control signals to select
particular manual commands in accordance with a
current state of said state controller;
a heads-up display coupled to said state
controller and displaying at least one indicator above
an instrument panel of said vehicle, said indicator
identifying said manual commands available in
said current state;
a voice synthesizer for generating audio output
corresponding to said information; and
a wireless communication device for exchanging
said information with said remote information server;
wherein said main menu mode provides selectable
access to said electronic mail mode; and
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wherein said electronic mail mode is comprised of
1) an “initial mail” state for selecting by voice command
the reading of either old mail or new mail, 2) a
“reading note” state wherein said old mail or new mail
is reproduced by said voice synthesizer, and 3) a
“next/previous note” state that is accessed from said
“reading note” state to select a different electronic
mail note for said “reading note” state in response to
either a corresponding voice command or a manual command.
The examiner relies on the following references:
Zeinstra 4,827,520 May 2, 1989
“The Network Vehicle,” pages unnumbered (IBM Corp., COMDEX Booth
L1814, Nov. 17, 1997)(hereinafter referred to as COMDEX).
Claims 1-13 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Zeinstra in view of
COMDEX.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
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Application No. 09/170,156
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arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-13. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
Appeal No. 2004-1459
Application No. 09/170,156
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(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039-40, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered and are deemed
to be waived (see 37 CFR § 41.37(c)(1)(vii)(2004)).
With respect to independent claims 1 and 9, the examiner
essentially finds that Zeinstra teaches the claimed invention
except for the particular claimed major functions such as an
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e-mail mode, a news mode, a calendar mode and a browser mode.
The examiner cites COMDEX as suggesting a mobile information
system for a vehicle which includes these major functions. The
examiner finds that it would have been obvious to the artisan to
incorporate Zeinstra’s voice actuated control system with the
advanced features of COMDEX. The examiner notes that the system
of Zeinstra can be trained to recognize and activate these major
functions (answer, pages 3-6).
Appellant argues that the cited references do not teach
or suggest the feature of reconfigurable control elements within
the context of the appealed claims. Specifically, appellant
asserts that push button 20 of Zeinstra, identified as the
reconfigurable control element by the examiner, has a permanent
and singular function. Appellant notes that although Zeinstra
can be trained to recognized additional speech, there are no
reconfigurable control elements disclosed therein. With respect
to the claimed states of the electronic mail mode, appellant
argues that COMDEX is nothing more than a conceptual
advertisement and does not teach or suggest the states as recited
in claims 1 and 9 (brief, pages 9-14).
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The examiner responds that since Zeinstra’s voice
actuated control system can be trained to recognize and activate
the major functions, then additional voice commands corresponding
to the claimed states can be recognized by the system (answer,
page 7).
Appellant responds that the training function in Zeinstra
is limited to the learning of additional vocabulary, and that
Zeinstra never contemplates the training of the overall system to
incorporate new functions as claimed. Appellant also responds
that COMDEX is completely devoid of mentioning states such as
“initial mail,” “reading note” and “next/previous note” as
claimed. Finally, appellant reiterates that Zeinstra does not
disclose a set of reconfigurable control elements as claimed
(reply brief, pages 1-4).
We will not sustain the examiner’s rejection of
independent claims 1 and 9 for essentially the reasons argued by
appellant in the briefs. Specifically, there are no
reconfigurable control elements mounted on the steering wheel in
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Zeinstra. The push button 20 identified by the examiner has a
single permanent function and is not reconfigurable. The
conceptual teaching within COMDEX fails to suggest the specific
three states of the mail mode as recited in claims 1 and 9. The
fact that the references could be modified to implement the
claimed invention does not support the rejection based on
obviousness when there is no suggestion to make the modifications
within the applied prior art. We agree with appellant that there
are recitations within claims 1 and 9 which are neither taught
nor suggested by the applied prior art.
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In summary, we have not sustained the examiner’s
rejection of independent claims 1 and 9. Accordingly, we also do
not sustain the rejection of any of the dependent claims.
Therefore, the decision of the examiner rejecting claims 1-13 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
JS/hh
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Application No. 09/170,156
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