Ex Parte Firestone

Board of Patent Appeals and Interferences

Jan 11, 2006

09635624 (B.P.A.I. Jan. 11, 2006)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PAUL A. FIRESTONE
_______________

Appeal No. 2005-2370
Application No. 09/635,624
_______________
HEARD: OCTOBER 20, 2005
_______________
Before THOMAS, JERRY SMITH, and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 11, 13, 15, 16, 18, 20, 22, 23, 25 and 26.
Claims 1-10, 12, 14, 17, 19, 21 and 24 have been canceled.
We affirm.
BACKGROUND
Appellant’s invention is directed to a method of collecting
fees associated with vehicles for road usage wherein every
vehicle contains a unique identification code readable by a
scanner. According to Appellant, the identification code is used
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for collecting fees, identifying vehicles and their regulatory
compliance (specification, pages 5-6). An understanding of the
invention can be derived from a reading of exemplary independent
claim 11, which is reproduced bellow:
11. A method for collecting vehicular road use fees
comprising:
(a) issuing a mandatory unique vehicle identifier to a
vehicle by a governmental central agency that issues a vehicular
registration;
(b) inputting information concerning said vehicle to said
central agency;
(c) establishing an account at said central agency for said
vehicle to pay for road use fees;
(d) attaching said unique vehicle identifier to said
vehicle;
(e) reading said vehicle identifier with a mobile reader
when said vehicle is stationary and reading said vehicle
identifier with a stationary reader when said vehicle is moving
to retrieve said vehicle identifier from said vehicle;
(f) communicating said vehicle identifier to said central
agency;
(g) charging said account with a road use fee; and
(h) communicating said information in said central agency to
said mobile and stationary reader.
The Examiner relies on the following prior art references:
Leitner et al. (Leitner) 5,587,575 Dec. 24, 1996
Urbish et al. (Urbish) 5,734,343 Mar. 31, 1998
Slavin et al. (Slavin) 5,819,234 Oct. 6, 1998
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Claims 11, 13, 15, 16, 18, 20, 22, 23, 25 and 26 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Urbish, Slavin and Leitner.
We make reference to the briefs and answer for the
respective positions of Appellant and the Examiner. 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 briefs have not been considered (37 CFR
§ 41.37(c)(1)(vii)).
OPINION
In rejecting the claims, the examiner relies on Urbish for
teaching an identification label for a vehicle that is read at a
toll booth without the need for the vehicle to slow down or stop
at the booth (answer, page 3). The Examiner further relies on
Slavin for providing a transponder for communicating from a
service center the information related to an account established
in connection with the vehicle identification tag (answer, page
4). Relying on Leitner for teaching a portable scanner for
reading the tag and retrieving the vehicle information, the
Examiner concludes that using such portable scanner allows
reading the vehicle information from a tag in situations where a
fixed reader is not available (id.).
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Appellant argues that because Leitner provides for a stand-
alone unit, no active communication with a center is performed to
deliver the “real-time” status information regarding the vehicle
to the identification tag (brief, page 8). Appellant further
points out that neither Urbish, nor Slavin cures the deficiency
of Leitner as they lack any teachings related to a two-way system
of reading a vehicle identifier using a mobile reader and sending
the information back to the reader in real time (brief, page 9).
Appellant also adds that according to the invention the
information concerning the vehicle identifier is issued by a
governmental agency that has access to information concerning the
vehicle (brief, page 10). Thus, Appellant concludes that what
distinguishes Appellant’s invention from the prior art is the
coordination between governmental agency and the reader in the
toll booth and the communication of the vehicle information to
the reader (brief, paragraph bridging pages 10 & 11).
In response to Appellant’s arguments, the Examiner asserts
that the toll plaza computer of Slavin does communicate with a
centrally located computer to send information from the
identification tag and to receive updates on the credit balance
associated with a vehicle account (answer, page 5). The Examiner
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further points out that the mobile reader of Leitner is used when
the vehicle is stationary to read the vehicle information from a
label as taught by Urbish (answer, page 6). With respect to the
entity issuing the label, the Examiner argues that the label
taught by Urbish contains the vehicle identification number in
relation to a vehicular registration which is issued by a
governmental central agency (id.).
As a general proposition, in rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting
a prima facie case of obviousness. See In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) and In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings
of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993); In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,
1783-84 n.14 (Fed. Cir. 1992); Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985). In considering the
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question of the obviousness of the claimed invention in view of
the prior art relied upon, the Examiner is expected to make the
factual determination 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. See also In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). However,
the motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary
skill in the art, or, in some cases the nature of the problem to
be solved. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999).
From our review of Urbish, Slavin and Leitner, we find that
the references are all concerned with reading the vehicle
information from an identification tag or label. Urbish teaches
the use of an optical label on a vehicle which contains, for
example, the vehicle identification number and is scanned for
toll collection (col. 4, lines 17-28) without the need for the
vehicle to slow down (col. 4, lines 46-53). Slavin, similarly
pertains to automated toll collection wherein an identification
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tag attached to a vehicle is scanned and the toll amount is
subtracted from a pre-paid toll credit account set up for the
vehicle at a central location and linked to the tag (col. 5,
lines 53-60). Thus, contrary to Appellant’s assertion that
communicating information concerning the vehicle from the central
agency to the reader is absent in Slavin (brief, page 10), the
identification information of the vehicle is communicated to the
central computer which, in turn, updates the credit balance in
the local computer associated with the tag reader.
We also note that Leitner was specifically relied on for
teaching a mobile reader for reading the identification
information from a vehicle tag. Although we agree with Appellant
that Leitner does not mention collecting road use fees based on
the information read (reply brief, page 4), to the extent that a
portable scanner is used for collecting the vehicle
identification information from a tag, the reference teachings
provide added flexibility and mobility to the toll collection
system of Urbish and Slavin in other road use fee collections.
We also remain unconvinced by Appellant’s argument (reply
brief, page 3) that the information communicated from the central
agency in Slavin relates to a credit card and not to a vehicle.
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In that regard, Slavin specifies that the tag number broadcast by
the transponder tag is associated with a toll account number of a
vehicle (col. 5, lines 49-51). The fact that Slavin communicates
information associated with the toll credit account does not
preclude reading the claimed “information concerning said
vehicle” and “communicating said information” on such toll
account corresponding to a specific vehicle. This information
includes vehicle ID, credit card, account balance, etc., which,
although may also relate to the user of the vehicle, correspond
to a vehicle identified with unique tag where all concern that
specific vehicle. Therefore, we remain unpersuaded by
Appellant’s arguments that any error in the Examiner’s
determination regarding the obviousness of the claimed subject
matter has occurred. Accordingly, as the Examiner has
established a prima facie case of obviousness with respect to
claim 11, we sustain the 35 U.S.C. § 103(a) rejection of claim
11, as well as claims 13, 15, 16, 18, 20, 22, 23, 25 and 26,
argued as one group and stated as falling together (brief, page
4), over Urbish, Slavin and Leitner.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 11, 13, 15, 16, 18, 20, 22, 23, 25 and 26 under
35 U.S.C. § 103 is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/kis
Appeal No. 2005-2370
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