Ex Parte Hosey et alDownload PDFPatent Trial and Appeal BoardMay 22, 201814100363 (P.T.A.B. May. 22, 2018) Copy Citation 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."). 2 Appeal2017-009798 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. 3 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 4 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.") 5 Appeal2017-009798 Application 14/100,3 63 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 Copy with citationCopy as parenthetical citation