Ex Parte Horvitz et al

Patent Trial and Appeal Board

Jul 30, 2018

14269586 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/269,586
142810 7590
Newport IP, LLC
1400 112th Ave SE
Suite 100
Bellevue, WA 98004
FILING DATE FIRST NAMED INVENTOR
05/05/2014 Eric J. Horvitz
08/01/2018
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.
MS l-4267USC2 7088
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
eofficeaction@appcoll.com
scott@newportip.com
docketing@newportip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC J. HORVITZ, JONATHAN DAVID CANAN,
and GUR KIMCHI 1
Appeal2017-009998
Application 14/269,586
Technology Center 3600
Before: ANNETTE R. REIMERS, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 21--40. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Microsoft Technology Licensing, LLC is the applicant as provided under
3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal Br. 3.
Appeal2017-009998
Application 14/269,586
CLAIMED SUBJECT MATTER
The claims are directed to the sharing of sensed vehicle velocity and
location information for use in systems that provide traffic monitoring and
routing services. Spec. ,r 2. Claim 21, reproduced below with emphasis
added, is illustrative of the claimed subject matter:
21. A method comprising:
transmitting, by a device and to a plurality of vehicles
located in a same geographic region, a request to provide velocity
information;
receiving, by the device, a response to the request from a
vehicle of the plurality of vehicles, the response including the
velocity information; and
in response to receiving the response, transmitting, by the
device, a suppression signal to one or more other vehicles of the
plurality of vehicles, the suppression signal to cancel the request
and to indicate that further transmission of the velocity
information from the one or more other vehicles to the device
would be redundant information which has already been received
by the device.
Appeal Br. 35 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pender
Pearce
Nomura
Xu
US 8,170,911 Bl
US 2005/0099321 Al
US 2008/0228712 Al
US 2008/0275628 Al
2
May 1, 2012
May 12, 2005
Sept. 18, 2008
Nov. 6, 2008
Appeal2017-009998
Application 14/269,586
REJECTIONS
(I) Claims 21-25, 27-32, and 34--40 are rejected under 35 U.S.C. §
103(a) as unpatentable over Pearce, Nomura, and Xu. 2
(II) Claims 26 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pearce, Nomura, Xu, and Pender.
OPINION
Rejection (I)
The Examiner finds that Pearce teaches "transmitting, by a device and
to a plurality of vehicles (102a-102d), as illustrated in figure 1, located in a
same geographic region, i.e., same road going the same direction, as
mentioned at paragraph 19, a request to provide velocity information, i.e.,
location and speed." Final Act. 3 (emphasis added).
Appellants contend that information is exchanged in the system of
Pearce based on broadcasting, and Pearce does not disclose that vehicles
broadcast any information based on a request. Appeal Br. 12; see also
Pearce ,r 19. Specifically, Appellants state, "Pearce describes that a vehicle
receives a broadcast message without having to issue a request for a
broadcast message." Appeal Br. 12.
In reply, the Examiner finds "Pearce does not expressly teach the
details of the messages calling for the individual vehicle transceivers to
transmit the information to the base station." Ans. 8. However, the
2 The heading for this rejection lists claims 21--40 as being rejected over
Pearce, Nomura, and Xu. Final Act. 2. However, the body of this rejection
does not discuss claims 26 and 33, which are specifically addressed in the
rejection based on Pearce, Nomura, Xu, and Pender. See id. at 6-9.
3
Appeal2017-009998
Application 14/269,586
Examiner also finds that the base station in Pearce requires information from
individual vehicle transmitters to assemble traffic status updates, and the
base station later transmits information to the vehicles. Id. at 9. The
Examiner addresses Appellants' specific assertion that Pearce does not teach
making a "request" by determining that it would have been obvious to
modify Pearce to do so. Specifically, the Examiner states:
It would have been obvious to one of ordinary skill in the
art to have maintained the rules algorithm on which the
suppression rules are operated via the processor on the base
station rather than at the local vehicle processor (206) since it
has been held that a mere reversal of the essential working parts
of a device involves only routine skill in the art.
Id. at 8 ( citing In re Einstein, 8 USPQ 166, 167 (CCP A 1931) ( emphasis
added)). The Examiner finds that Appellants have described "no particular
criticality as to whether the base station triggers the individual devices to
transmit their data or the devices themselves trigger their own transmissions
of the data to the base station." Id. The Examiner further states:
it would have been obvious to have reversed the transmission
scheme of Pearce so that Pearce's base station transmits
messages poling or triggering the individual devices to transmit
their speed and direction data since Pearce's base station has to
have some means of aggregating the data from all of the
individual navigation devices so as to create the traffic
congestion data sent to all of the devices.
Id. at 16 (emphasis added). Thus, in the Answer, the Examiner proposes to
modify Pearce to provide a request as recited in claim 21.
Appellants contend that the Examiner's reasoning for the modification
proposed in the Answer is flawed because the modification to Pearce
requires extra steps to provide an effect that Pearce already provides with its
current system. See Reply Br. 6-9. In other words, Appellants assert that
4
Appeal2017-009998
Application 14/269,586
the Examiner's proposed modification is unhelpful to the functioning of the
system in Pearce. See id. In this regard, Appellants state that, under the
Examiner's proposed modification to Pearce:
a vehicle would receive a message, then have to send the message
to the base station, then wait for the base station to make a
staleness determination based on the rules algorithm that is no
longer local to the vehicle, and then wait for the base station to
provide a response, where the response from the base station is
allegedly the claimed "suppression signal".
Id. at 8-9.
Appellants have the better position. First, we agree with Appellants
that a preponderance of the evidence does not support the finding in the
Final Action that Pearce describes a request to provide velocity information.
See Final Act. 3; see also Pearce ,r 19. Second, we agree with Appellants
that the modification proposed in the Answer to provide this element in
Pearce (see Ans. 8-16) is not supported by adequate reasoning. As
Appellants point out, adding a request function to the base station in Pearce
is not merely a "reversal of parts" in a situation where no criticality is
involved. See Reply Br. 9. Rather, the Examiner's proposed modification
appears to add complexity to a system for no apparent reason other than to
meet a requirement of claim 21. Accordingly, we do not sustain the
Examiner's rejection of claim 21 and claims 22-25 and 27 depending
therefrom, as unpatentable over Pearce, Nomura, and Xu.
Independent claims 28 and 34 recite substantially the same limitations
discussed above regarding claim 21. See Appeal Br. 36-39 (Claims App.).
Accordingly, for the same reasons discussed above regarding claim 21, we
do not sustain the Examiner's rejection of claims 28 and 34 and associated
5
Appeal2017-009998
Application 14/269,586
dependent claims 29-32 and 35--40 depending therefrom, as unpatentable
over Pearce, Nomura, and Xu.
Re} ection (II)
The Examiner's use of Pender does not remedy the deficiency
discussed above regarding Rejection (I). See Final Act. 8-9. Accordingly,
we do not sustain the rejection of claims 26 and 33 as unpatentable over
Pearce, Nomura, Xu, and Pender.
DECISION
The Examiner's decision to reject claims 21--40 is reversed.
REVERSED
6