Ex Parte HATTON

Patent Trial and Appeal Board

Sep 24, 2018

14682293 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/682,293 04/09/2015
28395 7590 09/26/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
David Anthony HATTON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83530898 3321
EXAMINER
NEGRON, DANIELL L
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ANTHONY HATTON
Appeal2018-003027
Application 14/682,293
Technology Center 2600
Before JOHN A. EV ANS, JOYCE CRAIG, and JASON M. REPKO,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-20. (Final Act. 4). We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 2
1 Appellant states the real party in interest is Ford Global Technologies,
LLC. Br. 1.
2 Rather than reiterate the arguments of the Appellant and the Examiner, we
refer to the Appeal Brief (filed August 2, 2017, "App. Br."), the Examiner's
Answer (mailed November 17, 2017, "Ans."), the Final Action (mailed
February 2, 2017, "Final Act."), and the Specification (filed April 9, 2015,
"Spec.") for their respective details.
Appeal2018-003027
Application 14/682,293
STATEMENT OF THE CASE
The claims relate to a vehicle system including wireless vehicle keys.
See Abstract.
INVENTION
An understanding of the invention can be derived from a reading of
Claims 1, 13, and 1 7, the independent claims, which are reproduced below:
1. A system comprising:
one or more vehicle processors programmed to:
wirelessly transmit vehicle key security codes to
afirst device comprising a processor, the first device
selected via a permanently installed vehicle-mounted
user interface for programming as a new vehicle key; and
delete a second wireless device comprising a
processor as an existing vehicle key in response to
selection of the second device from programmed key
devices displayed via the vehicle-mounted user interface.
13. A non-transitory computer readable medium
comprising instructions configured to cause at least one
processor coupled to a transceiver to:
receive a request via the transceiver for establishing
communication between the at least one processor and a vehicle
processor;
receive vehicle key security codes and a predefined user
identification from the vehicle processor based on the
established communication such that the at least one processor
is configured to command one or more vehicle functions
without the presence of a vehicle key fob; and
in response to the predefined user identification entered
at a user interface, transmit the one or more vehicle functions to
the vehicle processor.
17. A vehicle computing system comprising:
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Application 14/682,293
a processor communicating with a transceiver and a user
interface and programmed to:
transmit vehicle security codes and a predefined
user identification via the transceiver to configure a
mobile device comprising a processor as a key fob in
response to receiving a key fob program request via the
user interface, the mobile device selected via the user
interface from mobile devices detected by the processor
and transceiver.
Treharne
Namburu, et al.,
Hatton
References and Rejections
US 6,501,369 Bl Dec. 31, 2002
US 2010/0222939 Al Sept. 2, 2010
US 2014/0277837 Al Sept. 18, 2014
The claims stand rejected as follows:
1. Claims 1-12 stand rejected under 35 U.S.C. § 112(a), or pre-AIA first
paragraph, as failing to comply with the written description
requirement. Final Act. 3--4.
2. Claims 1-9 and 11-20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Treham and Namburu. Final Act. 4--8.
3. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable over
Treham, Namburu, and Hatton. Final Act. 8.
ANALYSIS
We have reviewed the rejections of claims 1-20 in light of
Appellant's arguments that the Examiner erred. We consider Appellant's
arguments seriatim, as they are presented in the Brief, pages 2-8.
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CLAIMS 1-12: WRITTEN DESCRIPTION.
Claim 1 recites, inter alia, "a permanently installed vehicle-mounted
user interface." The Examiner finds this recitation comprises "new matter"
because the specification as originally filed fails to disclose a system having
a user interface "permanently installed" within a vehicle. Final Act. 3--4.
Appellant contends the Specification provides abundant support for a
permanently installed vehicle mounted interface as recited in Claim 1.
Appellant argues the Specification discloses the claimed interface 4 as part
of the "vehicle-based computing system. Br. 4 (citing Spec., ,r 23).
Appellant further cites the Specification as disclosing: "[t]he vehicle
interface display 4 may be implemented as a message center on an
instrument cluster or as a touch screen monitor such that each device is
generally configured to present text, menu options, status or other such
inquiries to the driver in a visual format." Id. (quoting Spec., ,r 47).
Appellant argues a person of ordinary skill in the art would understand that
an instrument cluster is permanently installed in a vehicle. Id.
The Examiner finds an item "described as 'permanently installed'
implies that the item is in no way capable of being removed from location it
has been installed." Ans. 2.
Under the Examiner's construction, the interface would only be
"permanently installed" where it is capable of resisting destructive force.
We find this construction unreasonable. See Ex parte Miles, 2010-000959,
11/153,681 (BPAI Jan. 27, 2012) ("[u]nder the Examiner's interpretation,
because it is possible to remove anything using a blow torch, every means
of attaching or securing two parts is removable [i.e., not "permanently
installed."]. This interpretation is incorrect because it would effectively
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expunge the [term "permanently installed"] from the claim language.) See
Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
( denouncing claim constructions that render phrases in claims superfluous).
We find a person of ordinary skill in the art would understand the
term "permanently installed," in view of the Specification. Therefore, we
decline to sustain the written description rejection.
CLAIMS 1-12: OBVIOUSNESS OVER TREHARNE AND NAMBURU.
Claim 1 recites, inter alia, a "first device selected via a permanently
installed vehicle-mounted user interface for programming as a new vehicle
key."
The Examiner finds "Treharne as modified by Namburu fails to
explicitly disclose a vehicle-mounted user interface that is permanently
installed." Final Act. 4. But having explicitly found the claimed limitation
is not taught by the prior art, the Examiner finds the limitation is obvious.
Id. ("it would have been obvious to one having ordinary skill in the art at the
time of filing to permanently install an interface in order to obtain the
convenience of having frequent access to key programming capabilities.").
"The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not ... resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies" in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967); W.L. Gore Assoc., Inc. v.
Garlock, Inc., 721 F.3d 1540, 1553 (Fed. Cir. 1983) ("To imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest that knowledge,
is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher."). When the
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Board makes "core factual findings in a determination of patentability," it
"cannot simply reach conclusions based on its own understanding or
experience----or on its assessment of what would be basic knowledge or
common sense." In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001).
Instead, "the Board must point to some concrete evidence in the record in
support of these findings." Id.
In view of the foregoing, we decline to sustain the rejection of
independent claim 1, or of claims 2-12 3 dependent therefrom.
CLAIMS 13-16: OBVIOUSNESS OVER TREHARNE AND NAMBURU.
Independent Claim 13 does not contain recitations commensurate in
scope with the "permanently installed" limitation discussed above.
The Examiner finds Treharne discloses a non-transitory computer-
readable medium comprising instructions configured to receive a request via
a transceiver (38) to establish communication between the transceiver and a
vehicle processor (12). Final Act. 6 (citing Treharne, col. 3, 11. 20-38). The
Examiner further finds Treharne discloses receiving vehicle key security
codes and a predefined user identification from the vehicle processor based
on the established communication such that the at least one processor is
configured to command one or more vehicle functions and in response to the
predefined user identification entered at a user interface, transmit the one or
more vehicle functions to the vehicle processor. Final Act. 6-7 ( citing
Treherne, col. 3, 11. 52--60). The Examiner finds Treharne fails to disclose a
processor coupled to a transceiver, but finds Namburu completes Treharne
3 Claim 10 is additionally rejected over Hatton. However, Hatton is not
applied regarding the "permanently installed" limitation. See Final Act. 8.
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by disclosing a mobile device comprising a processor coupled to a
transceiver which is configured to be used as a key for a vehicle without a
manufacturer vehicle key present. Final Act. 7 ( citing Namburu, ,r,r 40 and
41).
Appellant contends the Examiner improperly maps the prior art
onto the claims. Appellant argues the Examiner finds Treharne teaches a
transceiver (38) and Namburu teaches a transceiver coupled to a processor.
Br. 7. Appellant contends such a mapping fails to meet the claims because
the proposed combination would result in Treharne' s key having both a
transceiver and a processor, but the claims require the transceiver-linked
processor to command vehicle functions without the presence of the key fob.
Br. 7. Appellant argues Treharne' s transceiver (3 8) is embedded in the key
such that if combined with the processor ofNamburu, transceiver (38) could
not command vehicle function, but without a key fob as claimed. Id.
The Examiner finds Appellant fails to cite prior art disclosure that the
presence of a key fob is required. Ans. 3. The Examiner finds Namburu
teaches that various devices, not limited to a key fob, are suitable for storing
an ID token. Id.
The Examiner finds Treharne teaches a transceiver (3 8) to establish
communication between the transceiver and a vehicle processor (12). Final
Act. 6 (citing Treharne, col. 3, 11. 20-38). Appellant correctly notes that
transceiver (38) is embedded in Traherne's key fob (36). Traharne teaches a
security code 42 is programmed into Transceiver (38) within key fob (36).
See Traharne, Figure 3. Where the transceiver is no longer associated with
the key fob, as suggested by the Examiner, the system of Traharne would no
longer be functional. "Such a change in a reference's 'principle of
operation' is unlikely to motivate a person of ordinary skill to pursue a
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combination with that reference." Plas-Pak Industries, Inc. v. Sulzer Mixpac
AG, 600 Fed. Appx. 755, 759 (2015) (citing In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012); In re Ratti, 270 F.2d 810). In view of the foregoing,
we decline to sustain the rejection of claims 13-16.
CLAIMS 17-20: OBVIOUSNESS OVER TREHARNE AND NAMBURU.
The Examiner finds "[r ]egarding claims 17-20, claims 17-20 have
limitations similar to those treated in the above rejections, and are met by the
references as discussed above." Final Act 8.
In view of the foregoing, we decline to sustain the rejection of claims
17-20.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § 103 is REVERSED.
REVERSED
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