Ex Parte Howell et al

Board of Patent Appeals and Interferences

Jul 23, 2012

09968746 (B.P.A.I. Jul. 23, 2012)

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

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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.

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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.
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(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?
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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)).
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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.
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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).
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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).
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--- 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
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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.
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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.
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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.
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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

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