Ex Parte Ford et al

Patent Trial and Appeal Board

Feb 19, 2013

10442806 (P.T.A.B. Feb. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID JOHN FORD, JOHN GARFIELD GRAHAM,
JOSEPH RETZBACH, KENNETH JAMES McCAFFREY, and
NADINE ANN MOONEY
____________________

Appeal 2011-006115
Application 10/442,806
Technology Center 3600
____________________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

NEW DECISION ON APPEAL
An administrative error was made in the processing of our Decision in
this Appeal mailed February 11, 2013. That Decision on Appeal is hereby
vacated in favor of this New Decision on Appeal.

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6, 10, 11, and 14-38. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellants’ invention relates to an online method and system for
advising customers on service needs, facilitating the scheduling of vehicle
service appointments, and checking vehicle service status (Spec. 1,
ll. 14-17).
Claim 15, reproduced below, is representative of the subject matter on
appeal:
15. An online system for advising a customer on service needs
and facilitating the scheduling of a vehicle service appointment,
the system comprising at least one server computer operably
serving at least one client computer, the at least one server
computer configured to:
(a) receive a service inquiry wherein the service inquiry
is selected from a group consisting of: a service request, a
scheduled maintenance request, and a recall request;
(b) receive input information regarding potential service
of the vehicle wherein a service request for at least one of an
HV AC, steering, braking, transmission or smell problems

1 Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed November 15, 2010) and Reply Brief (“Reply Br.,” filed
February 22, 2011), and the Examiner’s Answer (“Ans.,” mailed
December 22, 2010).
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causes the DMS to send, to a user computer, at least two
symptom probing questions, wherein at least one of the
symptom probing questions is directed to the conditions under
which the problem occurs, and wherein user entered responses
are sent in response from the user computer to the DMS;
(c) transmit an open appointments request to a dealer
management system (DMS), the DMS electronically
communicates with a vehicle service provider computer;
(d) receive a plurality of open appointments from the
DMS, wherein each of the plurality of open appointments is
comprised of a preselected date and time based on available
appointment dates and arrival times for a vehicle service
provider;
(e) cause display of the plurality of open appointments
wherein one of the plurality of open appointments is selected as
an appointment request;
(f) transmit the input information and the appointment
request to the DMS to facilitate the scheduling of the vehicle
service appointment; and
(g) schedule a vehicle service appointment via steps (c),
(d), (e) and (f).

THE REJECTIONS
The following rejections are before us for review:
Claims 10-11 and 25-31 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Himes (US 2003/0191660 A1, pub. Oct. 9, 2003).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Himes.
Claims 1, 3-6, 15-24, and 32-38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Himes in view of Bill Wink Chevrolet
(http://web.archive.org/web/2001 04080921
03/http://www.billwinkchevy.com/index.htm) (hereinafter referred to as
“Wink”) in view of Blasingame (US 2002/0022975 A1, pub. Feb. 21, 2002)
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and further in view of Last (US 2001/0037225 A1, pub. Nov. 1, 2001) and
Official Notice.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Himes in view of Wink.

ANALYSIS
Independent claim 10 and dependent claim 11
Claim 10 is directed to an online vehicle service method, and recites
that the method comprises, inter alia, “receiving, at the DMS, input
information regarding the potential service of the vehicle wherein the input
information is a check on a real-time status of an ongoing vehicle repair”
and “accessing, through the DMS, a database containing the real-time status
of the ongoing repair.” We are persuaded that the Examiner erred in
rejecting claim 10 as anticipated by Himes by Appellants’ argument that
Himes does not disclose “accessing through the DMS, a database containing
the real-time status of an ongoing repair,” as recited in the claim (App. Br.
12-13) and Reply Br. 1-2).
The Examiner cites paragraph [0023] of Himes as disclosing this
feature (Ans. 5). However, we agree with Appellants that paragraph [0023]
of Himes nowhere discloses “accessing . . . a database containing the real-
time status of an ongoing [vehicle] repair,” as recited in claim 10 (App. Br.
12-13) and Reply Br. 1-2).
Himes discloses a customer data capture system, integrated with a
dealership data management system, that allows customer and vehicle
maintenance data to be exchanged between a kiosk on the floor of the
dealership and the data management system. The customer inserts a
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customized card into the kiosk, and interacts with pre-programmed software
on the kiosk (Himes, Abstract). The card contains customer and vehicle
information, e.g., name, address, vehicle identification number (VIN), as
well as customer specific maintenance schedules and coupon information,
and the kiosk is equipped with software that enables it to read and process
the information provided on the card (Himes, para. [0018]).
Himes describes that the information stored on the card may be
printed out or displayed on a touch screen (Himes, paras. [0020] and
[0021]), and further describes in paragraph [0023], cited by the Examiner,
that a “screen display [shown in Figure 5] can be presented when a user
wants to review . . . certain aspects of the user’s current status.” However,
Himes does not disclose that information regarding an ongoing repair is
stored on the card or that the real-time status of an ongoing vehicle repair is
displayed.
The Examiner takes the position that the disclosure in paragraph
[0023] that a “user can check their current status . . . is equivalent to
checking real-time status since it is understood that in order for a user to
check their CURRENT status then real-time monitoring is required” (Ans.
27-28). The Examiner also asserts that the claims are “extremely vague” as
to what is included in the status update such that one of ordinary skill would
have understood that simply providing the user with the message, “Current
repair pending,” or a timetable of when the repair will be finished, reads on
the claimed limitation (Ans. 28). However, the Examiner fails to show that
Himes discloses in paragraph [0023] or elsewhere that such messages or
timetables are provided or that a user can otherwise check the “the real-time
status of an ongoing [vehicle] repair.”
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Paragraph [0023] states that a user may review “certain aspects of the
user’s current status,” and references Figure 5, which shows various current
information that may be displayed, e.g., whether or not an extended warranty
is currently in effect for the user’s vehicle (field 604), the current mileage of
the vehicle (field 605), the current balance on the user’s Loyalty Card for
vehicle (field 607), and the total amount saved by the user on this Loyalty
Card to date (field 608) (see Himes, figs. 5 and 6 and para. [0024]).
Himes also describes that “[a] variety of displays can be used [for]
displaying a variety of information stored on the smart card, or generated at
the current user visit for new maintenance and service, or information
retrieved from the dealer management system, or other information” (Himes,
para. [0024]). But, nowhere in paragraph [0023], Figure 5, or elsewhere in
Himes is there any disclosure that one of the “certain aspects” that may be
reviewed by a user is the “real-time status of an ongoing repair.”
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). The Examiner does not maintain that Himes
expressly disclose “accessing . . . a database containing the real-time status
of an ongoing vehicle repair,” as recited in claim 10. And to the extent that
the Examiner’s rejection is based on a view that Himes inherently describes
the claim limitation, more than speculation is required.
In particular, the Examiner must provide evidence and/or technical
reasoning that makes “clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto
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Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). “Inherency. . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” Id. at
1269 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).
The Examiner has not established on this record that the system and
method disclosed in Himes inherently includes accessing a database
containing the real-time status of an ongoing vehicle repair, as required by
claim 10. Instead, the Examiner has merely speculated regarding the type of
current status information that may be disclosed. An anticipation rejection
may not properly be based on unfounded assumptions and speculation, only
necessarily inherent features. See, e.g., Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375 (Fed. Cir. 2005).
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 10 under 35 U.S.C. § 102(e). We also will not sustain the
Examiner’s rejection of claim 11, which depend from claim 10.

Dependent claim 14
Claim 14 depends from claim 10 and recites that “the service request
can additionally be for drivability concerns, climate control concerns,
vibration concerns, chassis concerns, engine starting concerns, fluid leakage,
instrumentation concerns, entertainment system concerns or noise concerns.”
The Examiner’s obviousness rejection of dependent claim 14 relies on
Himes to teach the limitations of claim 10. Accordingly we will not sustain
the Examiner’s rejection of claim 14 for the same reasons as set forth above
with respect to claim 10.

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Independent claim 25 and dependent claims 26-31

Independent claim 25 is directed to an apparatus for use in facilitating
scheduling of a vehicle service appointment based on a service inquiry, and
recites that the system includes, inter alia, “a dealer computer having an
interface for communicating over a computer network” and “a service
request routine, wherein a service request for at least one of an HVAC,
steering, braking, transmission or smell problems causes the dealer computer
to send, to a user computer, at least two symptom probing questions.”
The Examiner does not contend that Himes discloses a “service
request routine,” as recited in claim 25 (see Ans. 5-6 and 10). Instead, the
Examiner maintains that the “service request routine” is a mere intended use
and non-functional descriptive material, which is not entitled to patentable
weight (Ans. 5-6 and 29-30). We cannot agree.
The service request routine is software executable on the dealer
computer, and is operable to program the dealer computer to perform certain
functions. The Examiner asserts that the limitation is non-functional
descriptive subject matter because it does not further limit the structural
components of the apparatus, i.e., the dealer computer (Ans. 6-7). Yet it is
clear from the claim language that the service request routine materially
alters the functioning of the dealer computer, i.e., it causes the dealer
computer, in response to a service request for at least one of an HVAC,
steering, braking, transmission or smell problems, to “send, to a user
computer, at least two symptom probing questions.”
The “service request routine” plainly limits the structural components,
i.e., the dealer computer, of the apparatus. Therefore, the “service request
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routine” cannot properly be considered a mere intended use or non-
functional descriptive material.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 25 under 35 U.S.C. § 102(e).

Claims 1, 3-6, 15-24, and 32-38
Appellants argue claims 1, 3-6, 15-24, and 32-38 as a group (App. Br.
14-17). We select claim 15 as representative. The remaining claims stand
or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that none of the cited references discloses or suggests
a server computer configured to “receive, at the DMS, input information
regarding potential service of the vehicle, wherein a service request for at
least one of an HV AC, steering, braking, transmission or smell problems
causes the DMS to send, to a user computer, at least two symptom probing
questions, wherein at least one of the symptom probing questions is directed
to the conditions under which the problem occurs, and wherein user entered
responses are sent in response from the user computer to the DMS,” i.e.,
limitation (b), as recited in claim 15 (App. Br. 14-17).
The Examiner concedes that Himes does not disclose “at least two
symptom probing questions, wherein at least one of the symptom probing
questions is directed to the conditions under which the problem occurs, and
wherein user entered responses are sent in response from the user computer
to the DMS,” and the Examiner relies on Blasingame to cure this deficiency
(Ans. 10-11).
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Blasingame discloses a medical information (“MI”) system, and
describes that when a patient schedules an appointment with a physician, the
physician enables (selects) medical conditions that the patient is known to
have (or may have). The patient then connects to the MI system site, and the
MI system site interactively interviews the patient regarding the enabled
condition and stores information from the patient regarding the condition in
patient files at the server site (Blasingame, Abstract and para. [0009]).
Appellants assert that Blasingame does not teach or suggest the claim
limitation because in the Blasingame system, the condition-specific
interview is initiated only after the physician has selected the medical
conditions that the patient is known to have or may have. Therefore,
according to Appellants, “[i]f the system of Blasingame were applied, the
dealer would be required to perform at least the extra and different step of
enabling the system for access and providing access to potential vehicle
problems” before the customer would receive any questions (App. Br. 16).
Appellants maintain that “[t]his is a different system from the DMS sending
the question in response to a service inquiry” (App. Br. 16).
Appellants’ argument is not persuasive because it is not
commensurate with the scope of the claim. Claim 15 recites that “a service
request . . . causes the DMS to send, to a user computer, at least two
symptom probing questions.” But there is nothing in the claim language that
requires the two symptom probing questions to be sent immediately upon
receipt of the service request, without any intervening actions on the part of
the dealer, e.g., enabling the system for access and providing access to
potential vehicle problems. That the Blasingame method may require
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intervening actions, thus, does not preclude Blasingame from meeting this
claim limitation.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 15 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 1, 3-6, 16-24, and 32-38, which stand or fall with
claim 15.

Claim 2
Claim 2 depends from claim 1. Appellants do not provide any
arguments in support of the separate patentability of claim 2 except to assert
that the secondary reference, Selent, does not cure the alleged deficiency of
the rejection of claim 1 and that claim 2, therefore, is allowable based on its
dependency on claim 1 (App. Br. 17).
Because we found Appellants’ arguments unpersuasive with respect to
claim 1, we find them equally unpersuasive with respect to claim 2.
Therefore, we will sustain the Examiner’s rejection of claim 2 under
35 U.S.C. § 103(a).

DECISION
We have vacated the Decision on Appeal mailed February 11, 2013 in
favor of this New Decision on Appeal.
The Examiner’s rejection of claims 10-11 and 25-31 under 35 U.S.C.
§ 102(e) is reversed.
The Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a) is
reversed.
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The Examiner’s rejection of claims 1-6, 15-24, and 32-38 under
35 U.S.C. § 103(a) is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART

MP