Ex Parte Flick

Patent Trial and Appeal Board

Feb 26, 2018

14505062 (P.T.A.B. Feb. 26, 2018)

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.
14/505,062 10/02/2014 Kenneth E. Flick 58127CON1 REI 9811
27975 7590
ADD&G - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE
P.O. BOX 3791
ORLANDO, EL 32802-3791
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
creganoa @ allendyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH E. FLICK
Appeal 2017-010597
Application 14/505,062
Patent 7,015,830 B2
Technology Center 3900
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
JOYCE CRAIG, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection2 of claims 1—39, which constitute all of the claims pending
in this reissue application of US Patent No. 7,015,830 B2. We have
jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on February 6, 2018.
We reverse.
1 According to Appellant, the real party in interest is Omega Patents, L.L.C
App. Br. 1.
2 We refer to the Final Office Action, mailed Mar. 10, 2016 (“Final Act.”);
Appeal Brief, filed July 8, 2016 (“App. Br.”); Examiner’s Answer, mailed
Mar. 2, 2017 (“Answer”). A Reply Brief was filed on Mar. 16, 2017.
Appeal 2017-010597
Application 14/505,062
INVENTION
Appellant’s invention relates to a vehicle tracking unit for controlling
operable vehicle devices using a vehicle data bus extending throughout the
vehicle. Abstract. Claim 1 reads as follows:
1. A vehicle tracking unit for a vehicle of a type comprising
a vehicle data bus extending throughout the vehicle and at least
one operable vehicle device connected thereto, the at least one
operable vehicle device responsive to at least one data bus code
on the vehicle data bus, the vehicle tracking unit comprising:
a vehicle position determining device;
a wireless communications device; and
a controller spaced apart from the at least one operable
vehicle device and connected to the vehicle data bus so that the
vehicle data bus extends from said controller to the at least one
operable vehicle device, said controller for cooperating with
said vehicle position determining device and said wireless
communications device to send vehicle position information to
a user;
said controller generating the at least one data bus code
on the vehicle data bus to control the at least one operable
vehicle device based upon a command signal received by said
wireless communications device;
the at least one operable vehicle device comprising a car
starter device.
App. Br. 32 (Claims Appendix) (emphasis added).
REJECTIONS
Claims 1—39 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Mansell et al. (US Patent No.
5,223,844; issued June 29, 1993 (“Mansell”)), Suman et al. (US Patent No.
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Application 14/505,062
6,028,537; issued Feb. 22, 2000 (“Suman”)), and McMillan et al. (US Patent
No. 6,064,970; issued May 16, 2000 (“McMillan”)).3
ANALYSIS
Rejection of Claims 1—39 under 35 U.S.C. § 103(a)
The Examiner rejected claims 1—39 over Mansell, Suman, and
McMillan. Final Act. 15—27. Mansell describes a system for tracking a
vehicle using mobile units mounted in “hidden locations” in the vehicle to
be monitored through a remote communications link. Mansell, Abstract,
1:31—34. In Mansell’s system, a microcomputer, including a conventional
microprocessor with an associated data bus, governs operations of the
mobile units’ hardware. Id. at 11:27-41. McMillan describes a vehicle
monitoring system for determining a cost of insurance. McMillan, Abstract.
McMillan monitors operation of a vehicle using various sensors, which are
connected to a “vehicle data bus” controlled by a computer. Id. at 6:66—
7:16.
In rejecting independent claim 1, the Examiner found Mansell teaches
most of the claimed limitations. The Examiner points to (1) Mansell’s horn,
vehicle relay, and “device responsive to code from the data bus” as teaching
the claimed “at least one operable vehicle device,” and (2) Mansell’s
microcomputer as the claimed controller. Final Act. 15. According to the
3 The Examiner describes this rejection in two separate rejections:
(1) rejecting original claims 1—17 (Final Act. 15—25); and (2) rejecting new
claims 1—39 {id. at 25—27). Because both grounds involve the same
references combined in the same manner and Appellant relies on the same
arguments for all claims (App. Br. 29-30), for purposes of this Decision, we
treat this as one ground.
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Application 14/505,062
Examiner, the claimed vehicle data bus4 is met by Mansell’s data bus “that is
included in the microprocessor.” Id. (citing Mansell 11:27—34). According
to the Examiner, Mansell’s microprocessor data bus is used to control
operable devices—“the exact same function” as the claimed vehicle data
bus—“this is considered an obvious variation on the claimed subject matter
and is not deemed a patentable innovation.” Id.
The Examiner adds that “[t]o the extent that the [Applicant] argues
that the data buses of Mansell appear to be merely on-chip, buses that do not
extend beyond the confines of the microprocessor 202 (which the Examiner
does not agree[]), this feature is well known in the art as evidenced by
McMillan.” Id. at 17. Specifically, the Examiner states that “McMillan
discloses that the operation of the vehicle is monitored through various
sensors 412 and by the way of the vehicle data bus 304, is connected to the
controller 300 and cooperate[s] with the wireless communication system or
the like 314, and GPS 312.” Id. According to the Examiner, a person of
ordinary skill
would have had ample motivation to [use McMillan’s vehicle
data bus] because it would reduce many I/O [sic] and because
4 Neither Examiner nor Appellant addresses whether the preamble phrase “a
vehicle data bus extending throughout the vehicle,” is limiting. For purposes
of this decision, we find that because the body of the claim relies on this
phrase for antecedent basis, it limits the claim’s scope. Catalina Mktg. Int 7,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(“[Dependence on a particular disputed preamble phrase for antecedent
basis may limit claim scope because it indicates a reliance on both the
preamble and claim body to define the claimed invention.”).
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Application 14/505,062
in using the data bus of McMillan one would not have to use
separate wiring for each and [every] individual device in order
to establish communication between the controller and the
devices.
Id. at 17—18.
Appellant contends that Mansell does not teach the claimed vehicle
data bus because it discloses data busses associated with the microprocessor
only and does not suggest a bus that would “extend beyond the confines of
the microprocessor and throughout the vehicle.” App. Br. 15. We agree
with Appellant that an on-chip data bus is different than a bus that extends
throughout a vehicle connecting separate operable devices. We also agree
that the Examiner has not shown it would have been obvious to make such a
substantial modification to Mansell’s system.
Appellant further argues that the Examiner has not properly shown
that a person of ordinary skill in the art would have combined McMillan’s
vehicle data bus with Mansell’s system. Id. at 16—22. According to
Appellant, the Examiner did not properly explain the assertion that it would
be “common sense” to make this combination. Id. at 17. In addition,
Appellant contends that the Examiner used hindsight in declaring that the
combination is merely a simple substitution and yields predictable results.
Id. at 18—19 (citing Final Act. 6).
Appellant has persuaded us that the Examiner erred. Nowhere in the
final rejection or the Answer does the Examiner explain why a person of
ordinary skill in the art would have added a data bus extending throughout
the vehicle to Mansell’s system. Although we agree with the Examiner that
general use of a data bus for connecting various electronic devices was well-
known in the art at the time of the invention (see Final Act. 17), on this
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record we find the Examiner has not fully developed the record to show why
an artisan at the time of the invention would have had any need to add a data
bus extending throughout the vehicle being monitored by Mansell’s system.
Moreover, we find speculation would be required to agree with the
Examiner’s explanation that the combination would reduce the amount of
I/O, because it is unclear what I/O in Mansell is excessive, or would benefit
by being reduced. Final Act. 17—18. We decline to engage in speculation.
Thus, we find the Examiner looks to the secondary McMillan
reference to solve a purported problem (lack of a vehicle data bus) not
contemplated by Mansell. To the extent a conventional parallel (e.g., 8 bit,
16-bit) data bus is represented by the bidirectional arrow connecting
microcomputer 202 with memory 210, as depicted in Mansell’s Figure 2B,
we are of the view that extending the very short-length memory data bus
throughout the vehicle would have required a major redesign to Mansell, as
a data bus extending throughout the vehicle would have different electrical
requirements, in terms of impedance loading, voltage, and tri-state buffering
to prevent contention on the bus, as would have been known to an artisan
possessing an ordinary level of skill in the art at the time of the invention.
Moreover, a memory data bus (Mansell, Fig. 2B) would typically
have a much higher speed requirement (in terms of memory R/W access
speed) than a vehicle data bus that typically conveys sensor data back to a
microprocessor at a much slower rate, as known to artisans. In most
applications, a serial vehicle data bus would likely be less expensive, and
thus, may be preferred over a conventional parallel data bus, of the kind that
typically connects a microprocessor with a memory in an embedded system
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Application 14/505,062
over a very short distance, as depicted in Mansell’s Figure 2B
(Microcomputer 202, Memory 210).
The same is true for the Examiner’s statement that the combination
would save on separate wiring between the devices for communication
between those devices and a controller. We see no explanation for why,
other than to achieve the claimed subject matter, a person of ordinary skill
would have desired such communication between individual devices
throughout a vehicle and a controller when Mansell emphasizes that
communication mainly takes place between mounted mobile units and a
remote Control Center. See, e.g., Mansell, Abstract, Fig. 1, 1:39-60.
Nevertheless, the Examiner further explains in the Answer (18):
What is more common sense than using a data bus to
establish communication between a controller and plurality of
operable vehicle devices in a vehicle for the purpose of
providing vehicle monitoring and tracking (such as the system
of Mansell, See Abs.), when the same data bus is used in
another car for the purpose of providing communication
between a controller and plurality of operable vehicle devices
for a different purpose (such as the system of McMillan, See
Abs.).
(Emphasis added.)
Regarding the Examiner’s additional reliance on “common sense” in
the Answer (id.) to support the proffered combination, ‘“the mere recitation
of the words ‘common sense’ without any support adds nothing to the
obviousness equation.’” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343,
1354 (Fed. Cir. 2013).5 For the reasons discussed above, we find a short-
5 “‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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length data bus connecting Mansell’s microcomputer 202 with memory 210
is not the “same data bus” (Ans. 19-20) as an extended length vehicle data
bus, which would have different electrical and data rate requirements. See
Mansell, Fig. 2B.
The Examiner relies on Suman to show the limitation of sending
vehicle position information to a user. Final Act. 15—16. On this record, the
Examiner has not shown how the Suman reference overcomes the
deficiencies of Mansell and McMillan, as discussed above.
Therefore, on this record, we find a preponderance of the evidence
supports Appellant’s contention that the rejection does not provide a
sufficient explanation of why, other than for purposes of replicating the
claimed subject matter, a person of ordinary skill in the art would have
combined McMillan’s teaching of a data bus throughout a vehicle with the
mobile unit monitoring system of Mansell. Without such explanation, we
cannot eliminate the possibility that the Examiner relied upon impermissible
hindsight, and looked to Appellant’s Specification and claims as a roadmap
for the rejection here.
Appellant also argues that the Examiner provides insufficient weight
to the Rule § 1.132 Declaration of named inventor, Kenneth Flick,
describing several licenses of the claimed invention. App. Br. 22—30.
Our reviewing court guides that objective evidence of secondary
considerations (e.g., commercial success, unexpected results, long felt but
unmet need), “operates as a beneficial check on hindsight.” Cheese Sys.,
obviousness.’” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Application 14/505,062
Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013). “Failure to give proper consideration to such evidence . . . can
be fatal because ‘common sense’ may not be so apparent in view of
objective evidence of nonobviousness (e.g., commercial success and
copying), particularly when all reasonable inferences are drawn in favor of
the patentee.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed.
Cir. 2013).
Here, we cannot sustain the obviousness rejection based on an
insufficient rationale to combine Mansell and McMillan, for the reasons
discussed above. The Rule § 1.132 Declaration proffered as evidence of
commercial success by the named inventor has been fully considered by the
Board, but we find it is not dispositive in this appeal.
Accordingly, on the record before us, we reverse the Examiner’s
35 U.S.C. § 103(a) rejection of independent claims 1, 10, 18, 25, and 32.
For the same reasons, we reverse the rejection of dependent claims 2—9, 11—
17, 19-24, 26-31, and 33-39.
DECISION
We reverse the Examiner’s decision to reject claims 1—39.
REVERSED
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