Ex Parte Feller et al

Patent Trial and Appeal Board

May 31, 2017

12752437 (P.T.A.B. May. 31, 2017)

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.
12/752,437 04/01/2010 Ross FELLER P009702-RD-MJL 2473
72823 7590
Quinn IP Law
21500 Haggerty Road
Suite 300
Northville, MI 48167
06/02/2017 EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
amb@quinnlawgroup.com
U S Docketing @ quinnlawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS FELLER, ALFRED C. TOM, and BYRON T. SHAW1
Appeal 2015-000545
Application 12/752,437
Technology Center 3600
Before ANTON W. FETTING, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 17—31, which are all the pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 Appellants identify “GM Global Technology Operations, LLC” as the real
party in interest. Appeal Br. 2 (filed Apr. 15, 2014).
Appeal 2015-000545
Application 12/752,437
CLAIMED INVENTION
Appellants’ invention “relates generally to external device integration
within a vehicle.” Spec. 11.
Claim 17, the sole independent claim reproduced below, is
representative of the subject matter on appeal.
17. A portable device-to-vehicle interface communication
system comprising:
[(a)] a portable device capable of running a host
software application and a plurality of slave software
applications, the host software application capable of enabling
slave software applications stored on the portable device via a
vehicle; and
[(b)] a vehicle interface system for communicating with
the portable device, the vehicle interface system including at
least one human machine interface device for receiving input
commands from a user for selecting and controlling the
plurality of slave software applications on the portable device;
[(c)] wherein the host software application is enabled in
response to establishing a communication link from the vehicle
interface system to the portable device, wherein a challenge-
response authentication is initiated between the vehicle
interface system and the host software application, wherein the
host software application presents a list of authorized slave
software applications to a user, wherein a respective slave
software application is manually selected utilizing the at least
one human machine interface device, wherein the selected slave
software application is launched via the host software
application invoking a launch request command to the selected
slave software application, and wherein an operating system of
the portable device executes control of the selected slave
software application via the vehicle human machine interface.
Appeal Br. 21, Claims App. (added formatting/bracketed matter).
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Application 12/752,437
REJECTIONS
Claims 17—31 stand rejected under 35 U.S.C. § 112, second
paragraph, (1) as indefinite for claiming both a product and the method steps
of using the product in a single claim, and (2) as failing to disclose the
structure necessary in a means plus function claim.
Claims 17—31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Madhavan et al. (US 2009/0249074 Al, pub. Oct. 1, 2009,
hereinafter “Madhavan”), Howarter et al. (US 8,224,313 B2, iss. July 17,
2012, hereinafter “Howarter”), and Fuchs et al. (US 6,970,703 B2, iss. Nov.
29, 2005, hereinafter “Fuschs”).
DISCUSSION
Indefiniteness Rejections
Product and Process
The Examiner maintains that independent claim 17 “appears to be
directed to neither a ‘process’ nor a ‘machine,’ but rather embraces or
overlaps two different statutory classes of invention,” thus rendering claims
17—31 indefinite. Answer 13 (mailed Sept. 9, 2014). The Examiner finds
the preamble of claim 17 supports an interpretation that the claimed
invention is directed to a product, whereas, limitation (c) in the body of the
claim “indicates the claim is directed to a process or method.” Final Action
4 (mailed Nov. 19, 2013). In support of the rejection, the “Examiner notes
the decision from In re Katz [639 F.3d 1303] (Fed. Cir. 2011)” and
determines that “it is unclear if claim 17 is a product or a process claim.” Id.
at 5 (citing MPEP 2173.05(p)(II) and Ex Parte Lyell, 17 USPQ2d 1548
(BPAI 1990)).
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Application 12/752,437
Appellants contend that the Examiner is incorrect and argue “[t]he
fact that functionality is recited in the claims does not prevent the claim from
being an apparatus claim as the functionality defines the linking
relationships between each of the devices that comprise the communication
system, ft is well understood by those skilled in the art that a system, such
as the communication system recited herein, does not require that each
component be physically connected to one another in order to be an
apparatus.” Appeal Br. 5. In the Reply Brief, Appellants further argue:
The fact that claim 17 recites functional language does not
render the system claim indefinite, nor should functional
language be ignored. Appellant is not disputing that portable
devices or the human machine interface devices are known;
rather, the contents of each device and the technique in which
the devices interrelate and operate with one another establishes
the novelty of the communication system, as well as their
structural relationship to one another. The Examiner appears to
be treating the communication system as a purely mechanical
system that must be structurally defined by its physical
connection to one another; however, those skilled in the art in
electrical and communication systems understand that such
systems operate in environments where wireless devices, as
well as wireline devices, communicate signals between one
another and operations of such devices are thereafter executed
based on the signals without physical interaction.
Reply Br. 2 (filed Oct. 7, 2014).
We are not persuaded by Appellants’ arguments at least because they
fail to address the Examiner’s actual rejection. Contrary to Appellants’
arguments, it is not the Examiner’s position that functional language in a
system claim renders that claim indefinite. Rather, the Examiner’s position
is that a single claim which claims both a system (machine) and the method
steps of using the system (process) is indefinite under 35 U.S.C. 112, second
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Appeal 2015-000545
Application 12/752,437
paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639
F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “a system with an
interface means for providing automated voice messages ... to certain of
said individual callers, wherein said certain of said individual callers
digitally enter data” was determined to he indefinite because the italicized
claim limitation is not directed to the system, but rather to actions of the
individual callers, which creates confusion as to when direct infringement
occurs. Katz, 639 F.3d at 1318 (emphasis added) (citing IPXL Holdings v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), in which a system
claim that recited “an input means” and required a user to use the input
means was found to be indefinite because it was unclear “whether
infringement. . . occurs when one creates a system that allows the user [to
use the input means], or whether infringement occurs when the user actually
uses the input means.'’).
Here, there is no dispute that the preamble of claim 17 is directed to a
system (see Appeal Br. 5), but limitation (c) recites an input means,
“wherein a respective slave software application is manually selected
utilizing the at least one human machine interface device,” and in doing so,
“the selected slave software application is launched via the host software
application invoking a launch request command to the selected slave
software application, and wherein an operating system of the portable device
executes control of the selected slave software application via the vehicle
human machine interface.” See Appeal Br. 21, Claims App. In addition to
claiming a system, by requiring manual selection of a slave software
application or action from a user via a human machine interface device,
claim 17 also invokes the method of using the system, which creates
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Application 12/752,437
confusion as to when direct infringement occurs. In other words, it is
unclear whether claim 17 requires only a system that allows the user to use
the input means or instead requires that the user actually use the input
means. Because claim 17 recites both a system and the method for using the
system, it does not apprise one of ordinary skill in the art of its scope,
therefore, rendering it indefinite. We also note that claim 22 improperly
refers to the “method of claim 21”, whereas, claim 21 is directed to “[tjhe
system of claim 17.”
Accordingly, we sustain the rejection of claims 17—31 under 35
U.S.C. § 112, second paragraph, because a single claim which claims
product and the process of using the product is indefi nite.
Means-plus-function
We are persuaded by Appellants’ arguments that “[cjonstruing claim
17 as a means-plus-function claim is clearly in error” (App. Br. 6—7) because
“Fig. 1 of the drawings and Par [0008-0013] of the detailed description
which provides the structure necessary for performing the claimed
functions.” Reply Br. 3. The relevant portion of limitation (b) recites “a
vehicle interface system for communicating with the portable device, the
vehicle interface system including at least one human machine interface
device.” We agree with Appellants that the Specification describes the
human machine interface (HMI) device as a navigation device, structure
necessary for performing the claimed functions. See Spec. 111 (“The
navigation device has dedicated buttons or a touch screen for accepting the
user's selection. The navigation device further includes a display screen that
can be used to display application content. Another example of a device
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Application 12/752,437
having dual functionality is a radio system. Radio control buttons/knobs can
be used by the user for making input selections and the radio display may be
used for presenting the application content to the user.”). As such, one of
ordinary skill in the art would construe the claimed HMI device as a
navigation device or its equivalents. Accordingly, we do not construe the
disputed limitation as a means-plus-function limitation, and, therefore, we
do not sustain the indefiniteness rejection based on this reasoning.
Obviousness Rejection
In view of our affirmance of the indefiniteness rejection above, we do
not reach the merits of the rejection of claims 17—31 under 35 U.S.C.
§ 103(a) at this time.
Before a proper review of the rejection under § 103(a) can be made,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the scope of the claims is
unclear and indefinite, we are constrained to reverse, pro forma, the
Examiner’s obviousness rejection. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language). It should be
understood that our decision to reverse the rejection of claims 17—31
under 35 U.S.C. § 103(a) is based solely on the indefmiteness of the claims,
and does not reflect on the merits of the underlying rejection.
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Application 12/752,437
DECISION
The rejection of claims 17—31 under 35 U.S.C. § 112, second
paragraph, is AFFIRMED for claiming both a product and the process of
using the product in a single claim.
The rejection of claims 17—31 under 35 U.S.C. § 112, second
paragraph, is REVERSED for failing to provide supporting structure in a
means-plus-fimction limitation.
The rejection of claims 17—31 under 35 U.S.C. § 103 is REVERSED
pro forma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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