Ex Parte Grover et al

Patent Trial and Appeal Board

Feb 24, 2017

14148129 (P.T.A.B. Feb. 24, 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.
14/148,129 01/06/2014 Joey Ray Grover 83414024 9414
28395 7590 02/28/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER MURPHY, JOSEPH B
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
2435
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEY RAY GROVER, JOEL FISCHER, and
JUSTIN DICKOW
Appeal 2016-005189
Application 14/148,1291
Technology Center 2400
Before KRISTEN L. DROESCH, LARRY J. HUME, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—3, 5—13, and 15—20. Appellants have canceled
claims 4 and 14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. App. Br. 2.
Appeal 2016-005189
Application 14/148,129
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "generally relate to a
method and apparatus for driver notification handling." Spec. 11.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A system comprising:
a processor configured to:
receive a notification request from a portable
entity in wireless communication with a vehicle
computing system (VCS);
receive notification content and parameters;
validate a right of the entity to display a
notification on the VCS;
validate the notification content as a
permitted content type;
validate the parameters based on entity
parameter-use permissions; and
queue a notification for display following
successful right, content and parameter validation.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 30, 2015); Reply Brief ("Reply Br.," filed Apr. 14, 2016); Examiner's
Answer ("Ans.," mailed Feb. 25, 2016); Final Office Action ("Final Act.,"
mailed Aug. 19, 2015); Advisory Action ("Adv. Act.," mailed
Nov. 18, 2015), and the original Specification ("Spec.," filed Jan. 6, 2014).
2
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Application 14/148,129
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Menig et al. ("Menig") US 6,289,332 B2
Westra et al. ("Westra") US 2011/0296037 Al
Lau et al. ("Lau") US 2013/0067014 Al
Park et al. ("Park") US 2013/0086518 Al
Sept. 11,2001
Dec. 1,2011
Mar. 14, 2013
Apr. 4,2013
Rejections on AppeaP
Rl. Claims 1—3, 5, 6, 8, 9, 11—13, 15, 16, 18, and 20 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Menig and Park. Final Act. 13.
R2. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Menig, Park, and Lau. Final
Act. 18.
R3. Claims 10 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Menig, Park, and Westra. Final
Act. 19.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7—9), we decide the appeal
of obviousness Rejection Rl of claims 1—3, 5, 6, 8, 9, 11—13, 15, 16, 18,
and 20 on the basis of representative claim 1.
3 We note the Examiner has withdrawn the rejections of claims 1—3, 5—13,
and 15—20 under both 35 U.S.C. § 112B (Adv. Act. 2), and § 101. Ans. 2-A.
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Application 14/148,129
Remaining claims 7, 10, 17, and 19 in rejections R2 and R3, not
argued separately or with specificity, stand or fall with the respective
independent claim from which they depend.4
ISSUE
Appellants argue (App. Br. 7—9; Reply Br. 2—3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Menig and Park is in error. This contention present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes "a processor configured to," inter alia,
"validate a right of the entity to display a notification on the [vehicle
computing system] VCS," as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).5
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
5 With respect to Appellants' Appeal Brief, the Examiner notes:
[T]he recitation of claims presented in Appellant's Brief under
the heading "111. SUMMARY OF CLAIMED SUBJECT
MATTER" does not accurately reflect the claims as last
amended. As discussed herein, infra, Appellant filed an After
Final Amendment/Argument after Notice of Appeal on October
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Application 14/148,129
We disagree with Appellants' arguments with respect to claim 1, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellants contend, inter alia, claim 1 recites:
"validate a right of the entity to display a notification on the
VCS." In Menig, the "entities" are all vehicle subsystems
installed as part of the vehicle. Further, the Examiner points to
col. 11, lines 8-44 as both validating a right of the entity to
display a message and validating the parameters. At the
disclosed portions, the process evaluates parameters to
determine a message ordering. At no point does the process of
Menig determine if one of the installed vehicle subsystems has
"a right to display a message," as all vehicle subsystems have
the right to display the messages based on the ordering of the
messages for display. Since the manufacturer installs both the
central computer and the subsystems, there is no concern about
a nefarious system that shouldn't have display rights, these are
all within the control of the manufacturer, thus no validation of
"a right to display a message " is ever taught or needed. Further,
29, 2015, correcting the rejection(s) issued by Examiner under
35 U.S.C. 112 in the Final Office Action mailed August 19,
2015. Examiner entered these amendments into the record via
an Advisory Action mailed November 18, 2015. Examiner
further notes, however, that the claims presented in
Appellants[’] Brief under the heading "V. CLAIMS
APPENDIX" are correct, and properly recite the claims
presented for this appeal.
Ans. 3.
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Applicant submits the claims recite two (actually three) distinct
validations, and the Examiner can't point to the same teaching
as being both validation of the entity and the parameter.
App. Br. 7 (emphasis added).
Appellants additionally argue:
[T]he combination of Park's mobile device with Menig and the
substitution of the mobile device for the "entities" of Menig
make no sense . . . [because] the "entities" are all vehicle
subsystems installed as part of the vehicle . . . [that] send
messages and warning indicators "for a variety of subsystems
and sensors onboard the vehicle." These messages could not
come from the mobile device of Park, because the mobile
device of Park would have no idea about the status and warning
conditions of "a variety of subsystems and sensors onboard the
vehicle."
App. Br. 8.
Appellants admit that, while Park is a portable entity, they further
contend it could not and would not "work to fulfill the rest of the limitations
if substituted for the request-sending entities of Menig (i.e., the electronic
subsystems). . . [such that] the combination simply makes no sense . . . and
fails to teach multiple limitations [because] the wireless device wouldn't
send the notifications taught by Menig." Id.
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). "In the patentability
context, claims are to be given their broadest reasonable interpretations . . .
limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
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We first note the Examiner finds (Final Act. 13) Menig (column 1,
lines 43—63 and column 3, lines 14—26) teaches or suggests a processor
configured to "receive notification content and parameters" by its teaching
of"displaying of warning message based on set ofpriority rules [which] is
validating [a] right)."
In response to Appellants' contentions, the Examiner finds "the
claimed 'entity' allows for a very broad yet reasonable interpretation; this
interpretation reasonably encompasses Menig's various vehicle subsystems."
Ans. 5. We note Appellants have not cited to a definition of "entity" in the
Specification that would preclude the Examiner's broader reading.6
The Examiner further finds the contested limitation of claim 1
does not recite 'validate the right of the entity to display a
notification', but rather, recites 'validate a right of the entity to
display a notification' — the former (hypothetical limitation)
requires validation of an entity before any notification can be
displayed at all, while the latter (limitation as actually claimed)
requires validation of any right of an entity to display a
notification.
Id. The Examiner also finds, and we agree, "Menig validates the order of
priority (which is a right) of each entity to display its respective notification"
(Ans. 5), and "notwithstanding Appellants['] argument stating 'the Examiner
6 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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can't point to the same teaching as being both validation of the entity and the
parameter'. . . Menig's teaching of a subsequent 'warning, caution, and
finally note/message', under a broad yet reasonable interpretation, is indeed a
'parameter' as recited in independent claim 1." Ans. 6.
We agree with the Examiner because Appellants' challenge to the
references individually is not convincing of error in the Examiner's position
because all of the features of the secondary reference need not be bodily
incorporated into the primary reference. Consideration should be given to
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
In the Reply Brief, Appellants attempt to clarify their arguments by
stating "Applicant was objecting to the characterization of the vehicle
subsystems of Menig as 'portable entities'. . . [because] the installed vehicle
subsystems of Menig are certainly not portable under any reasonable
interpretation of the word 'portable.' (Applicant realizes that they are
installed in a movable vehicle, but no skilled artisan would reasonably
characterize installed vehicle subsystems as 'portable')." Reply Br. 2.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. Keller, 642 F.2d at 425. Appellants have not challenged the
combinability of the teachings of Menig and Park, and we further note the
Examiner finds "Menig does not explicitly disclose wherein the entity is a
portable entity; wireless communication .... [But instead,] Park teaches
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Application 14/148,129
wherein the entity is a portable entity (Park, [0027]; [0045]); wireless
communication (Park, [0027]; [0043])." Final Act. 14.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 3, 5, 6, 8, 9, 11—13, 15, 16, 18, and 20, which fall therewith. See
Claim Grouping, supra.
§ 103(a) Rejections R2 and R3 of Claims 7, 10, 17, and 19
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejections R2 and R3 of claims 7, 10, 17, and 19 under
§103 (see App. Br. 9), we sustain the Examiner's rejections of these claims.
Arguments not made are waived.7
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
7 Appellants merely argue, "Lau, however, does not cure the noted
deficiencies of Menig/Park with respect to claims 1 and 11, and,
accordingly, claims 7 and 17 are allowable based at least on dependency
form [sic] allowable independent claims." App. Br. 9. Appellants present
no argument with respect to dependent claims 10 and 19 in Rejection R3.
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Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
through R3 of claims 1—3, 5—13, and 15—20 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—3, 5—13,
and 15—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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