Ex Parte Howell et alDownload PDFBoard of Patent Appeals and InterferencesJul 23, 201209968746 (B.P.A.I. Jul. 23, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/968,746 10/01/2001 Robert M. Howell VARI.07USU1 6944 27479 7590 07/23/2012 COCHRAN FREUND & YOUNG LLC 2026 CARIBOU DR SUITE 201 FORT COLLINS, CO 80525 EXAMINER EDOUARD, PATRICK NESTOR ART UNIT PAPER NUMBER 2617 MAIL DATE DELIVERY MODE 07/23/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT M. HOWELL and TIMOTHY J. STEVENSON ____________ Appeal 2010-009579 Application 09/968,746 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and JENNIFER S. BISK, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009579 Application 09/968,746 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-13 and 35-38. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention is a telematics system that generates alarm conditions and communicates tracking data from a remote unit to a base station. See generally Spec. 1-3. Claim 1 is illustrative: 1. A method of generating an alarm condition and communicating tracking data from a remote unit to a base station in a telematics system comprising: activating said remote unit by applying a power signal to said remote unit; arming said remote unit by generating an arming signal that is applied to a control unit located on said remote unit, said arming signal being a separate and different signal from said power signal that places said remote unit in both an activated and armed condition; generating an event signal whenever an event has been detected by an event sensor and said remote unit is armed; establishing a communication link between said remote unit and a base station in response to reception by said control unit of said event signal; transmitting location information from said remote unit to said base station in response to said event signal, said location information comprising at least one of the following: time-stamped latitude and longitude location data, and speed and direction data; determining at said base station if said remote unit has moved beyond a preprogrammed perimeter; generating an alarm condition whenever said remote unit has moved beyond said perimeter; and transmitting tracking data from said remote unit to said base station upon generation of said alarm condition. Appeal 2010-009579 Application 09/968,746 3 THE REJECTIONS 1. The Examiner rejected claims 1-13 under 35 U.S.C. § 103(a) as unpatentable over Flick (US 6,606,561 B2; Aug. 12, 2003 (prov. appl’n 60/222,777 filed Aug. 3, 2000)),1 Fingerhut (US 6,636,489 B1; Oct. 21, 2003 (filed Nov. 3, 1997)), and Peterson (US 5,920,270; July 6, 1999). Ans. 3-6.2 2. The Examiner rejected claims 35, 37, and 38 under 35 U.S.C. § 103(a) as unpatentable over Thornton (US 5,982,325; Nov. 9, 1999), Flick, Fingerhut, Norris (US 5,952,959; Sept. 14, 1999), and Peterson. Ans. 6-12. 3. The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as unpatentable over Thornton, Flick, Fingerhut, Norris, Peterson, and Suman (US 6,028,537; Feb. 22, 2000). Ans. 12-13. THE OBVIOUSNESS REJECTION OVER FLICK, FINGERHUT, AND PETERSON The Examiner finds that Flick’s method of generating an alarm condition and communicating tracking data from a remote unit to a base station has every recited feature of representative claim 1 except for (1) determining at the base station if the remote unit moved beyond a predetermined perimeter and, if so, generating an alarm condition, and (2) activating the remote unit by applying a power signal thereto. Ans. 3-6. The Examiner, however, cites Fingerhut and Peterson as teaching limitations 1 Although Flick refers to a number of provisional applications—only two of which predate Appellants’ effective filing date of November 29, 2000—we nonetheless refer solely to Flick’s ‘777 provisional application which is at issue in this appeal. 2 Throughout this opinion, we refer to the Appeal Brief filed July 9, 2007 and the Examiner’s Answer mailed July 21, 2009. Appeal 2010-009579 Application 09/968,746 4 (1) and (2), respectively, in concluding that the claim would have been obvious. Ans. 3-6, 14-17. Appellants argue that Flick is not a proper prior art reference since it was filed after the present application’s filing date, and Flick’s “incomplete” ‘777 provisional application cited by the Examiner does not disclose the relied-upon structure and functions in the corresponding patent— deficiencies that are said to be corroborated by a declaration from an “expert electrical engineer.” Br. 15-16. Appellants add that combining Flick and Fingerhut as the Examiner proposes would render Flick unsatisfactory for its intended purpose. Br. 13-14. Appellants also argue various limitations from other claims (Br. 14-16) summarized below. ISSUES (1) Has the Examiner erred in relying on Flick in rejecting the appealed claims under § 103? This issue turns on whether Flick qualifies as prior art, and, in particular, whether the relied-upon passages in Flick are supported by Flick’s corresponding ‘777 provisional application in accordance with 35 U.S.C. § 112, first paragraph. (2) Under § 103, is the Examiner’s reason to combine the teachings of Flick and Fingerhut supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? This issue turns on whether combining Flick and Fingerhut as the Examiner proposes would render Flick unsatisfactory for its intended purpose. (3) Under § 103, has the Examiner erred in rejecting claims 3-7 and 9- 13 by finding that Flick, Fingerhut, and Peterson collectively would have taught or suggested these claims’ limitations? Appeal 2010-009579 Application 09/968,746 5 ANALYSIS Claims 1, 2, and 8 We begin by addressing the key threshold question in dispute, namely whether certain subject matter relied upon by the Examiner in Flick qualifies as prior art. Flick’s patent was filed and issued after the present application’s effective filing date (November 29, 2000), but nonetheless refers to a number of provisional applications—two of which predate Appellants’ effective filing date. See Flick, front page (“Related U.S. Application Data”). The Examiner cites one of those applications as support for the relied-upon subject matter in the patent, namely the ‘777 provisional application. Ans. 19-21. Therefore, to constitute prior art, the relied-upon subject matter in Flick must be supported by Flick’s earlier-filed ‘777 provisional application in accordance with 35 U.S.C. § 112, first paragraph.3 See In re Giacomini, 612 F.3d 1380, 1383-85 (Fed. Cir. 2010); see also Ex parte Yamaguchi, 88 USPQ2d 1606, 1609 (BPAI 2008) (precedential); MPEP §§ 2136.03(III), 706.02(VI)(D).4 In the rejection, the Examiner cites a number of passages from Flick to support the Examiner’s findings regarding various limitations of claim 1. Ans. 4. The Examiner also specifies particular passages within the ‘777 3 Although Flick refers to another earlier-filed provisional application (60/205,178), that application is not at issue here. We therefore confine our discussion to the ‘777 provisional application. 4 See also Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1371 (Fed. Cir. 2011) (“Claims deserve the provisional application’s earlier filing date so long as that application contains adequate written description under 35 U.S.C. § 112. Consistent with 35 U.S.C. § 112 ¶ 1, the written description of the provisional application must enable one of ordinary skill in the art to practice the invention claimed in the non-provisional application.” (citations omitted)). Appeal 2010-009579 Application 09/968,746 6 provisional application that are said to support the Examiner’s findings in Flick. Ans. 20 (citing passages from pages 1-4, 7, 13, and 16 of the ‘777 provisional application). Appellants, however, argue that the ‘777 provisional application is “incomplete” based on a declaration from Donald Bartlett, an electrical engineer. Br. 15-16 (citing Decl. in Ev. App’x). Bartlett declares, among other things, that the ‘777 provisional application does not disclose (1) a hardware diagram or structure for achieving “desired functional results”; (2) how to connect the controller to a vehicle system to achieve the desired results; (3) how to connect the “DIP switch,” “main 5-pin plug,” or “installation Test button”; and (4) the significance of various colored wires, let alone how to connect them. Br. 15; Decl. 3-4. On this record, we find that Appellants have not persuasively rebutted the Examiner’s findings. First, the Bartlett declaration cites pages 7, 8, and 11 of the ‘777 provisional application in connection with several alleged deficiencies noted above—only one page of which corresponds to the Examiner’s citations from that application, namely page 7. Compare Decl. 3-4 (citing pages 7, 8, and 11 of the ‘777 provisional application) with Ans. 20 (citing pages 1-4, 7, 13, and 16 of that application). To be sure, the ‘777 provisional application does not have a circuit diagram detailing particular connections between components and various colored wires as Appellants indicate.5 But leaving aside the fact that some of Flick’s cited disclosure is the same as that in the ‘777 provisional 5 Nor does Flick’s patent for that matter, despite its similar disclosure. See, e.g., Flick, col. 13, ll. 20-32. Appeal 2010-009579 Application 09/968,746 7 application,6 the relied-upon disclosure in the ‘777 provisional application at least generally teaches arming the system via arming signals which reasonably supports the Examiner’s findings in this regard. Ans. 20 (citing page 7, lines 3-16 of the ‘777 provisional application).7 That Bartlett declares that he would be unable to construct a device based on the ‘777 provisional application (Decl. 4) does not persuasively demonstrate that the particular aspects relied upon by the Examiner in the provisional application to support the relied-upon features in Flick lack written description and enablement under § 112, first paragraph, which, for the latter requirement, can be met despite the need for experimentation. See In re Angstadt, 537 F.2d 498, 504 (CCPA 1976). The test is whether this experimentation is undue: a deficiency that has not been persuasively shown on this record, let alone showing that any experimentation would be required for the particular disclosed features on which the Examiner relies. On this record, we find that Appellants have not persuasively shown that the Examiner’s findings (Ans. 20) regarding the particular passages within the ‘777 provisional application that are said to support the Examiner’s findings in Flick are erroneous. See Yamaguchi, 88 USPQ2d at 1613 (noting that while the Examiner’s statement that both a cited patent and its underlying provisional application “clearly shows the same subject matter” was terse and conclusory, this factual finding nonetheless shifted the 6 Compare Flick, col. 11, l. 23 – col. 12, l. 18 and col. 16, ll. 25-60 (cited on Ans. 4) with pp. 2-4 and 16, respectively, of the ‘777 provisional application; compare also that application’s figures with Flick, Figs. 4-8 and col. 13, l. 20 – col. 15, l. 45 with pp. 7-13 of the ‘777 provisional application. 7 Compare Flick, col. 13, ll. 20-32 (same). Appeal 2010-009579 Application 09/968,746 8 burden to Appellants to show why such a factual finding was erroneous). Accordingly, the weight of the evidence on this record favors the Examiner’s position that Flick qualifies as prior art for the relied-upon features. Nor are we persuaded that combining Flick with Fingerhut as the Examiner proposes would render Flick unsatisfactory for its intended purpose as Appellants contend. Br. 13-14. According to Appellants, modifying Flick to send data periodically would defeat Flick’s purpose of immediately notifying a monitoring station upon receiving an alarm indication alert. Br. 14. But the Examiner cited Fingerhut merely to show that tracking a remote unit when it moves beyond a predetermined perimeter and generating an associated alarm condition is known in the art, and that providing such a geographically-based feature in Flick would have been obvious. Ans. 5, 14-17 (citing Fingerhut, col. 7, ll. 35-67). Even assuming, without deciding, that Fingerhut’s system only periodically sends tracking data—an assumption undercut by Fingerhut’s permissive language in this regard8—this periodic transmission is nonetheless irrelevant to the Examiner’s position which is not based on physically combining the references, but rather what the references’ collective teachings would have suggested to ordinarily skilled artisans. See Ans. 15-17. We see no error in this position, for “[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 8 See Fingerhut, col. 7, ll. 44-46 (noting that Fingerhut’s tracking device can be preprogrammed to initiate contact with the network at predetermined intervals, thus suggesting it need not be so programmed). Appeal 2010-009579 Application 09/968,746 9 --- F.3d ---, 2012 WL 2384056, at *5 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be physically combined, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole)). In short, enhancing Flick with geographically-based alarm activation as suggested by Fingerhut merely predictably uses prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We therefore find the Examiner’s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2 and 8 not separately argued. Claims 3-7 and 9-13 We likewise sustain the Examiner’s rejection of claims 3-7 and 9-13. We see no error in the Examiner’s reliance on Flick for at least suggesting the recited event detections and sensors. Ans. 6, 21-22 (citing Flick, col. 11, l. 23 – col. 12, l. 18). Although the Examiner incorrectly cites Flick as teaching snowplows and sanders in connection with event detections as Appellants indicate (Br. 16), the Examiner nonetheless acknowledges that this was an inadvertent mistake based on Thornton’s teachings—a reference that was not cited in this rejection. Ans. 22. We see no harmful error here, for as the Examiner indicates (id.), the rejection still correctly cites the relevant passages from Flick which provide the evidentiary basis for the Appeal 2010-009579 Application 09/968,746 10 Examiner’s position regarding the event detection and sensor limitations. Ans. 22. Appellants’ contention regarding claims 5, 9, and 11 (Br. 14-15) is likewise unavailing. First, claim 9 does not recite using a mercury switch as a sensor as Appellants allege (Br. 14), but rather a magnetic sensor. Nevertheless, we see no error in the Examiner’s position that using mercury switches as event sensors would have been obvious, particularly since such sensors are well known as evidenced by the Examiner. See Ans. 18 (citing Kelley (US 4,218,763; Aug. 19, 1980) as evidencing mercury switches as well-known event sensors responsive to Appellants’ demand for evidence in this regard). In short, enhancing the Flick/Fingerhut/Peterson system with mercury switches merely predictably uses prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. We are therefore not persuaded that the Examiner erred in rejecting claims 3-7 and 9-13. THE OBVIOUSNESS REJECTION OVER THORNTON, FLICK, FINGERHUT, NORRIS, AND PETERSON The Examiner finds that Thornton discloses every recited feature of representative claim 35 except for, among other things, (1) generating an arming signal to arm a mobile telematics transceiver; (2) generating an event signal at the transceiver whenever it detects a signal generated by an event sensor and the transceiver is armed and activated; and (3) opening a second transmission channel responsive to detecting the event signal. Ans. 6-10. Appeal 2010-009579 Application 09/968,746 11 The Examiner, however, cites Flick as teaching these features in concluding that the claim would have been obvious. Ans. 6-12, 22-24.9 Appellants argue that since Thornton—like Fingerhut—periodically transmits data to a base station, combining Thornton and Flick as the Examiner proposes would render Thornton unsatisfactory for its intended purpose. Br. 16-17. ISSUE Under § 103, is the Examiner’s reason to combine the teachings of Thornton and Flick supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? This issue turns on whether combining Thornton and Flick as the Examiner proposes would render Thornton unsatisfactory for its intended purpose. ANALYSIS We sustain the Examiner’s rejection of representative claim 35 since, as the Examiner indicates, the Examiner’s position is not based on physically combining the references, but rather what the references’ collective teachings would have suggested to skilled artisans. See Ans. 22- 24. We see no error in this position, for “[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 2012 WL 2384056 at *5. In short, enhancing Thornton with the teachings of Flick 9 Although the Examiner cites other references to cure other acknowledged deficiencies of Thornton in the rejection (Ans. 10-12), those aspects of the rejection have either been previously addressed in this opinion or are undisputed. Accordingly, we need not further discuss these aspects here. Appeal 2010-009579 Application 09/968,746 12 as the Examiner proposes (Ans. 6-10, 22-24) merely predictably uses prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. We therefore find the Examiner’s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. We are therefore not persuaded that the Examiner erred in rejecting representative claim 35, and claims 37 and 38 not separately argued. THE OBVIOUSNESS REJECTION OVER THORNTON, FLICK, FINGERHUT, NORRIS, PETERSON, AND SUMAN We sustain the Examiner’s obviousness rejection of claim 36. Ans. 12-13. Despite nominally arguing this claim separately, Appellants reiterate similar arguments made in connection with claim 35 and allege that Suman fails to cure those purported deficiencies. Br. 17. We are not persuaded by these arguments, however, for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 1-13 and 35-38 under § 103. ORDER The Examiner’s decision rejecting claims 1-13 and 35-38 is affirmed. Appeal 2010-009579 Application 09/968,746 13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED babc Copy with citationCopy as parenthetical citation