Ex Parte Hosey et al

Patent Trial and Appeal Board

May 22, 2018

14100363 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/100,363 12/09/2013
60770 7590 05/24/2018
General Motors Corporation
c/o REISING ETHINGTON P.C.
755 W. Big Beaver Road
Suite 1850
TROY, MI 48084
FIRST NAMED INVENTOR
Eric T. Hosey
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.
P026535-0ST-ALS 6530
EXAMINER
ORANGE, DAVID BENJAMIN
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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):
stevens@reising.com
USPTOmail@reising.com
USPTOmail@gmx.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC T. HOSEY, RUSSELL A. PATENAUDE, and
DAVID A. HOLT
Appeal2017-009798
Application 14/100,363 1
Technology Center 2600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-3 and 5-15, which constitute all of the claims pending in this
application. Claim 4 is canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ). We reverse
1 The application on appeal has a filing date of Dec. 9, 2013. Thus, the
Leahy-Smith Arnerica Invents Act (AIA) amendments to the U.S. Code
(§§ 102, 103) are applicable. See JV1anual of Patent Examining Procedure,
"J\1PEP" § 2159 .()2 (The amended sections '"apply to any patent application
that contains or contained at anv time a claim to a claimed invention that has . J .. ... ... .. . . .
an effective filing date that is on or after J\11arch 16, 2013.").
2 Appellants identify the real party in interest as General Motors LLC. App.
Br. 2.
Appeal2017-009798
Application 14/100,3 63
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"wireless communications and more particularly to directing wireless
cellular devices to call a public safety access point (PSAP)." Spec. i-f 1. 3
Claims 1 and 8 are illustrative and reproduced below (with the
disputed limitations emphasized in italics):
1. A method of connecting a vehicle telematics unit with a
public safety access point (PSAP), comprising the steps of:
(a) wirelessly calling a central facility using the vehicle
telematics unit;
(b) determining a reason to contact the PSAP during the
wireless call; and
( c) receiving a computer-readable command at the
vehicle telematics unit from the central facility that directs the
vehicle telematics unit to end the wireless call and locally place
an emergency call in response to step (b) and based on a
determination that it is not legally-permissible for the central
facility to connect the vehicle telematics unit to the PSAP.
8. A method of connecting a vehicle telematics unit with a
public safety access point (PSAP), comprising the steps of:
(a) receiving a wireless call for a telematics service
request at a central facility from the vehicle telematics unit;
(b) determining a location of the vehicle telematics unit;
3 Our Decision refers to the Final Action mailed Aug. 17, 2016 ("Final
Act."); Appellants' Appeal Brief filed Mar. 17, 2017 ("App. Br.") and Reply
Brief filed July 10, 2017 ("Reply Br."); the Examiner's Answer mailed May
9, 2017 ("Ans."); and, the original Specification filed Dec. 9, 2013
("Spec.").
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Application 14/100,3 63
( c) deciding at the central facility to transfer the wireless
call to a PSAP within a serviceable distance of the location of
the vehicle telematics unit;
( d) determining at the central facility that contact
information for the PSAP within the serviceable distance is not
available in a database, accessible by the central facility, that
includes the identity information for a plurality of PSAPs; and
( e) transmitting a computer-readable command from the
central facility instructing the vehicle telematics unit to end the
wireless call and place an emergency call through a cell tower.
App. Br. 15-16 (Claims App'x).
Rejections on Appeal4
Claims 1-3 and 5-15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cepuran et al. (US 2011/0287733 Al; published Nov. 24,
2011) ("Cepuran") and Applicant Admitted Prior Art ("AAP A"). 5
ANALYSIS
The dispositive issues6 raised by Appellants' arguments are whether
the combination of Cepuran and AAP A teaches or suggests
receiving a computer-readable command at the vehicle
telematics unit from the central facility that directs the vehicle
telematics unit to end the wireless call and locally place an
emergency call in response to step (b) and based on a
4 The Examiner withdrew the rejection of claims 1-3 and 5-15 under
35 U.S.C. § 112(b ). See Ans. 2.
5 Based on the disclosure in the Specification that "[ o Jr certain areas of the
world may not permit the telematics subscription service to contact the
PSAP on behalf of the vehicle occupant due to local laws and ordinances,"
the Examiner finds "the prior art is the local laws and ordinances," which are
the "work of another (e.g., a legislature)." See Ans. 4--5.
6 Although Appellants' arguments in the Briefs raise other issues, we do not
address them because our decision of these issues is dispositive.
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Appeal2017-009798
Application 14/100,3 63
determination that it is not legally-permissible for the central
facility to connect the vehicle telematics unit to the PSAP,
as recited in claim 1, and
transmitting a computer-readable command from the central
facility instructing the vehicle telematics unit to end the wireless
call and place an emergency call through a cell tower,
as recited in claim 8, and as similarly recited in claim 12.
Regarding the disputed "receiving" limitation of claim 1, the
Examiner finds that, as explained in the Final Rejection, Cepuran discloses
"all of the above claim except that the reason for the message is the legal
permissibility," for which the Examiner "relies on AAP A." Ans. 6. In the
Final Rejection, the Examiner relies on paragraph 81 of Cepuran, which
discloses that, if a call from the vehicle telematics unit 14 cannot be
connected, the processor 36 of the telematics unit will conclude it is in an
unsupported geographic area and notify the vehicle occupant of the same, in
which event the vehicle occupant has the discretion to make a direct call to
request emergency services. Final Act. 8 (citing Cepuran i-f 81 ). The
Examiner also finds "the distinction between the person placing the call and
the call being placed by the computer is a matter of automating a manual
activity" that "is a routine expedient and thus legally obvious." Id. (citing
MPEP § 2144.04). Regarding the disputed "transmitting" limitation of
claims 8 and 12, the Examiner makes the same or substantially the same
findings as with respect to the "receiving" limitation of claim 1. See Final
Act. 11-12, 15.
We are persuaded by Appellants' arguments that the Examiner erred.
In particular, Appellants argue, and we agree, that the actions described in
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Appeal2017-009798
Application 14/100,3 63
paragraph 81 of Cepuran "are carried out at the vehicle without any direction
or command from the central facility." App. Br. 8. Appellants also argue,
and we agree, that the Examiner "has not identified factual support in
Cepuran that discloses a vehicle telematics unit receiving a computer-
readable command from a central facility to end a wireless call between it
and the central facility and then locally place an emergency call in
response." Id. To the extent the Examiner finds the "receiving" limitation
of claim 1 is "obvious over Cepuran in view of AAPA" (see Ans. 6-7), we
agree with Appellants' argument that "the Examiner's obviousness assertion
requires too many mental jumps." Reply Br. 4. In that regard, we agree
with Appellants' argument that there is nothing about "the prohibiting laws
or ordinances" mentioned in the background section of the Specification
that would provide or suggest any reason to abandon Cepuran' s out of
service area notification by the vehicle to an occupant and instead
have a central facility send a computer-readable command that is
received by the vehicle instructing it to end a current call and locally
place an emergency call.
Id. Considering the "gaps" between the evidence relied on by the Examiner
and the disputed limitations, we conclude the Examiner's obviousness
determination is tainted by improper hindsight. See W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721F.2d1540, 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.")
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Thus, based on this record, we are persuaded the Examiner erred in
finding the combination of Cepuran and AAP A teaches or suggests the
"receiving" limitation of claim 1. For the same reasons, we are persuaded
by Appellants' arguments that the Examiner erred in finding the
combination of Cepuran and AAP A teaches or suggests the "transmitting"
limitation of claims 8 and 12. See App. Br. 12-13. Accordingly, we do not
sustain the Examiner's rejection of claims 1, 8, and 12, and dependent
claims 2, 3, 5-7, 9-11, and 13-15, under§ 103.
DECISION
We reverse the Examiner's decision rejecting claims 1-3 and 5-15 for
obviousness under 35 U.S.C. § 103.
REVERSED
6