Ex Parte Feller et alDownload PDFPatent Trial and Appeal BoardMay 31, 201712752437 (P.T.A.B. May. 31, 2017) Copy Citation 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). 2 Appeal 2015-000545 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)). 3 Appeal 2015-000545 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 4 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 5 Appeal 2015-000545 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 6 Appeal 2015-000545 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. 7 Appeal 2015-000545 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 8 Copy with citationCopy as parenthetical citation