Ex Parte Hering

Patent Trial and Appeal Board

May 4, 2016

12844566 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/844,566 07/27/2010
70422 7590 05/06/2016
INGRASSIA FISHER & LORENZ, P.C. (GM)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
FIRST NAMED INVENTOR
CARL J. HERING
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.
P005681-ALS (087.0013) 8307
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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@ifllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL J. HERING
Appeal2013-010233
Application 12/844,5661
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. Final Action 1 (Office Action Summary).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest is General Motors
LLC. Appeal Br. 2.
Appeal2013-010233
Application 12/844,566
ILLUSTRATIVE CLAIM
1. A system for alerting a driver to a condition of a
vehicle, the system comprising:
a telematics unit mounted to the vehicle and configured
to receive a fault notification from a subsystem on board the
vehicle when a fault in the subsystem is detected; and
a call center remotely located from the vehicle and
communicatively connected to the telematics unit,
wherein the telematics unit is configured to provide the
fault notification to the call center, and
wherein the call center is configured to:
initiate communication with the driver if the fault
falls within a first category of faults; and
set a trigger in the telematics unit to initiate contact
with the call center upon a next ignition actuation of the
vehicle if the fault falls within a second category of
faults.
CITED REFERENCES
The Examiner relies upon the following references:
Oesterling US 7,908,051 B2
Edwards et al. US 2011/0153148 Al
(hereinafter "Edwards")
REJECTION
Mar. 15, 2011
June 23, 2011
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Edwards and Oesterling. Final Action 2-9.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action at pages 2-3 and the Answer at pages 2-3 and 12-13, except where
noted, below (in regard to the Examiner's Final Action at page 7 and the
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Application 12/844,566
Answer at pages 14--17). Additional findings of fact may appear in the
Analysis below.
ANALYSIS
Claims 1--8
The Appellant asserts that neither Edwards nor Oesterling discloses
the existence of two different categories of faults or a system configured to
accommodate two different categories of faults. Appeal Br. 15-16, 18-19,
20. Even if true, these assertions fail to address the substance of any of the
Examiner's positions because they are not directed to specific limitations of
claim 1 and because the rejection is based upon the combination of Edwards
and Oesterling, rather than either reference standing alone. See In re Keller,
642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.") (citation omitted). Such assertions fail to
explain why the Examiner allegedly "erred as to each ground of rejection
contested by appellant." 37 C.F.R. § 41.37(c)(l)(iv).
The Appellant contends that the Examiner erroneously determined
that Edwards teaches claim 1 's limitation of a "call center configured to
... initiate communication with the driver if the fault falls within a first
category of faults." See Appeal Br. 16-17. According to the Appellant,
"[t]here is no indication" in Edwards that "sometimes the user receives the
communication from the call center and that sometimes the user does not."
Id. at 17. However, the Appellant is discussing features that do not appear in
the specific limitation at issue. Further, the Appellant has not shown that
Edwards fails to meet that limitation. Indeed, as the Examiner explains,
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Application 12/844,566
Edwards' call center initiates communication with the driver in regard to
"any diagnostic trouble codes." Answer 13 (citing Edwards i-f 33).
The Appellant contends that the Examiner erroneously determined
that Oesterling teaches claim 1 's limitation of a "call center configured
to ... set a trigger in the telematics unit to initiate contact with the call
center upon a next ignition actuation of the vehicle if the fault falls within a
second category of faults." See Appeal Br. 19-20. According to the
Appellant, support for the Examiner's position is "totally absent" because
Oesterling "has nothing to do with the detection of faults or with the
existence of two categories of faults." Id. at 20. However, the Appellant is
here discussing features that do not appear in the specific limitation at issue.
Further, the Appellant has not shown error in the Examiner's analysis (Final
Action 3; Answer 13), which correctly points out that Oesterling discloses
an "oil life" trigger for the telematics unit to contact the call center upon,
e.g., vehicle ignition (Oesterling, col. 13, 11. 40-63), thus satisfying the
identified claim limitation.
In view of the foregoing, the Appellant's arguments as to claim 1 are
unpersuasive, such that the Examiner's rejection of claim 1 is sustained.
Because the Appellant (Appeal Br. 21) presents no additional argument as to
claims 2-8, which depend from claim 1, the rejection of those claims is also
sustained.
Claims 9-14
Independent claim 9 is directed to a "system for alerting a driver to a
condition of a vehicle" and recites a "call center" that is configured to:
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Application 12/844,566
determine whether the fault indication has been provided
to the driver when the call center receives the fault notification
from the telematics unit,
initiate communication with the driver if the fault
indication has been provided to the driver, and
set a trigger in the telematics unit that will cause the
telematics unit to initiate contact with the call center upon a
next ignition actuation of the vehicle if the fault indication has
not been provided to the driver.
Appeal Br. 37, Claims App.
The Appellant contends that the cited Edwards and Oesterling
references do not teach a "call center" configured to determine whether a
fault indication has been provided to the driver and thus also cannot teach a
"call center" configured to take particular actions, as a consequence thereof.
Appeal Br. 22-26. Indeed, the portions of Edwards (Abstract, i-f 33) and
Oesterling (col. 13, 11. 40-63) cited by the Examiner (Answer 14--15) do not
disclose a call center configured to determine whether a fault indication has
been provided to the driver - let alone to take further actions based upon
that predicate - thus we disagree with the contrary findings of the
Examiner.
Accordingly, the Examiner's rejection of claim 9 is not sustained.
Because the same arguments apply to dependent claims 10-14, the rejection
of those claims is also not sustained.
Claims 15-20
Independent claim 15 is directed to a "method for alerting a driver to a
condition of a vehicle." Appeal Br. 38-39, Claims App.
Although drawn to a method, as opposed to a system, claim 15
involves essentially the same issues on appeal as claim 9. See Appeal Br.
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26-33. Accordingly, for the same or similar reasons set forth above in
regard to claim 9, the Appellant's argument (Appeal Br. 26-33) is
persuasive of error on the part of the Examiner (see Final Action 6-7;
Answer 7, 16-1 7) because Edwards and Oesterling do not teach
"determining whether the fault indication has been provided to the driver"
(Appeal Br. 38, Claims App.) and, therefore, cannot teach the steps
dependent upon such a predicate. We disagree with the contrary findings of
the Examiner. See Final Action 7, Answer 7, 16-17.
Accordingly, the Examiner's rejection of claim 15 is not sustained.
Because the same arguments apply to dependent claims 16-20, the rejection
of those claims is also not sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-8.
We REVERSE the Examiner's decision rejecting claims 9-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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