Ex Parte Huber et al

Patent Trial and Appeal Board

May 26, 2016

11618424 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111618,424 12/29/2006
23460 7590 05/31/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Chester A. Huber
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.
256041 5793
EXAMINER
NGUYEN, CHUONG P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHESTER A. HUBER, NEBOJSA NEDELJKOVIC,
RICHARD A. JOHNSON, and LAURENCE J. TRETY AK
Appeal2014-001083
Application 11/618,424
Technology Center 3600
Before JILL D. HILL, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chester A. Huber et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a): of claims
1 and 4--7 as unpatentable over Whitham (US 6,526,351 B2, iss. Feb. 25,
2003) and Kim (KR 2002/083749, pub. Nov. 4, 2002); of claim 8 as
unpatentable over Whitham, Kim, and Barton (US 6,446,002 B 1, iss. Sept.
3, 2002); of claims 9 and 10 as unpatentable over Whitham, Kim, and
DeLorme (US 5,802,492, iss. Sept. 1, 1998).2 We have jurisdiction under 35
U.S.C. § 6(b).
1 According to Appellants, the real party in interest is General Motors
Corporation. Appeal Br. 1.
2 Claims 2, 3, and 11-20 were canceled.
Appeal2014-001083
Application 11/618,424
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter. 3
1. A method of providing a packaged tour object to a
user of a telematics unit associated with a vehicle occupied by
the user, the method comprising:
(a) receiving from the telematics unit a request to
provide to the telematics unit a packaged tour object to a starting
point that is calculated based on GPS data, corresponding to a
current location of the vehicle, from the user's telematics unit
and a predetermined set of geographic points, each point having
thereat a feature of interest;
(b) presenting a plurality of tour packages to the user;
( c) receiving a user selection of one of the presented
plurality of tour packages;
( d) upon receiving a user selection of a tour package,
automatically linking a media object to each geographic point in
the tour object, such that each media object conveys information
regarding the specific feature of interest of the respective
geographic point, and wherein each media object is a multimedia
object including audio and visual information;
( e) calculating a route comprising directions usable to
travel sequentially from the starting point to each of the
predetermined set of geographic points in the selected tour
package;
( f) packaging the directions and information associated
with each media object associated with the selected package to
create the packaged tour object; and
(g) transmitting the packaged tour object to the
telematics unit whereupon the packaged tour object is provided
to the user.
3 Appeal Br. 8, Claims App. (emphasis and paragraph lettering added).
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Appeal2014-001083
Application 11/618,424
ANALYSIS
Obviousness of claims 1and4-7 over Whitham and Kim
Appellants argue claims 1 and 4--7 together in contesting the rejection
of these claims as obvious over Whitham and Kim. See Appeal Br. 5-10;
Reply Br. 4--7. We select claim 1 as the representative claim for this group,
and the remaining claims stand or fall with claim 1. See 3 7 C.F .R.
41.37(c)(l)(iv). We have considered Appellants' arguments raised in the
Appeal and Reply Briefs, but do not find them persuasive to demonstrate
error in the Examiner's rejection of claim 1 as being obvious over Whitham
and Kim.
In rejecting claim 1, the Examiner finds that Whitham discloses
"providing a packaged tour object to a user of a telematics unit associated
with a vehicle occupied by the user" that includes "receiving from the
telematics unit a request to provide to the telematics unit a packaged tour
object related to a predetermined set of geographic points" and also includes
steps (b }---( t) as recited by claim 1, but doesn't disclose the provided
packaged tour object having "a starting point that is calculated based on GPS
data, corresponding to a current location of the vehicle." See Final Act. 3--4.
See also Ans. 9. The Examiner looks to Kim for teaching steps (a) and (g),
reasoning that "[i]t would have been obvious ... to modify Whitham ... to
incorporate ... a starting point that is calculated based on GPS data,
corresponding to a current location of the vehicle as taught by Kim et al to
gain the advantages of friendly presenting and displaying the information of
a tour to the user," further explaining that" since it has been held that if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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Application 11/618,424
same way, using the technique is obvious unless its actual application is
beyond his or her skill." Final Act. 4--5.
Appellants take issue with the analysis and conclusions presented in
the Final Action, first contending that neither Whitham nor Kim teach steps
(a) and (g) of claim 1. See Appeal Br. 7. In particular, Appellants allege
that Kim does not describe steps (a) and (g) of claim 1 because "instead of a
telematics unit, Kim discloses only a 'portable device' that comprises a GPS
module." Id. at 8. Appellants also contend that "[t]he device of Kim, which
is designed to be used by a tourist traveling by foot or by public
transportation cannot read on the claimed telematics unit because the device
of Kim is not associated with a vehicle," and"[ w ]ithout a telematics unit,
Kim cannot teach transmitting the packaged tour object to the telematics
unit, as taught by Appellants' claim 1." Id.
In response, the Examiner explains that "Whitham discloses a portable
electronic system which can be used in an automobile (i.e. reads on claimed
telematics unit associated with a vehicle) ... while Kim discloses a portable
terminal (i.e. reads on the telematics unit) which detects its current position
from GPS and transmits its current position to a guidance of sightseeing
server." Ans. 10 (citing Whitham, Figs. 4, 5, 7; col. 2, 11. 31-35; col. 17, 11.
3-5). The Examiner continues by pointing out that
[t]he server receives/registers the portable device current
position, generates the route (i.e. reads on claimed packaged tour
object) based on the portable terminal current position to the
requested destination, and transmits such packaged tour object to
the portable terminal for guidance information (i.e. reads on the
claimed steps of receiving from the telematics unit a request to
provide to the telematics unit a packaged tour object related to a
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Appeal2014-001083
Application 11/618,424
starting point that is calculated based on GPS data and
transmitting the packaged tour object to the telematics unit).
Id. (citing Kim, Abstract; page 3; page 10-12; at least claims 1-3).
The Examiner then concludes that "one of ordinary skill in the art
would find it obvious to combine Whitham and Kim et al for requesting and
receiving a packaged tour based on the portable device current location
wherein the portable device is associated with a vehicle [because] the results
would be predictable." Id. at 10-11. We agree. "[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellants also contend that "Kim does not describe a packaged tour
object," arguing that "Appellants' claim 1 recites providing 'packaged tour
objects,' which are defined in Appellants' specification as objects including
media object links that link audio and visual information to geographic
points." Appeal Br. 8-9. However, as the Examiner points out,
"Appellant[ s are] attacking the prior art of Whitham and Kim et al
individually rather than viewing them as a whole." Ans. 10. The Examiner
explains in the Final Rejection that Whitham is relied upon because it
"discloses ... a method of providing a packaged tour." Final Act. 3. As the
Examiner further explains, "Kim discloses a portable terminal (i.e. reads on
the telematics unit) which detects its current position from GPS and
transmits its current position to a guidance of [a] sightseeing server." Ans.
10. Nonobviousness cannot be established by attacking references
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Application 11/618,424
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants further contend that because "Kim is directed to solving a
fundamentally different problem than the problem to which Appellants'
present invention is directed (i.e. enhancing the recreational uses of vehicles
and facilitating touring in vehicles)," that "there is no reason for one of
ordinary skill in the art to apply the methods described by Kim to solve the
problem addressed by [Appellants'] claimed invention." Appeal Br. 9.
Appellants also assert that the claimed invention "defines a system that
addresses the particular problem of minimizing time delays associated with
vehicular travel while enhancing the recreational use capabilities of a motor
vehicle by spontaneously providing occupants of a vehicle with an
interactive tour in real time based upon the current location of the vehicle
provided by a telematics unit's integrated GPS unit," which "enables vehicle
occupants to spontaneously embark on a tour and to have the tour presented
to them without leaving the vehicle." Id. at 10; see also Reply Br. 7.
However, Appellants' contentions amount to unsupported attorney
argument, and thus are entitled to little, if any, weight. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments and conclusions
unsupported by factual evidence carry no evidentiary weight). Furthermore,
the Examiner explains that "the reason one of ordinary skill in the art would
apply the methods described by Kim et al, in a combination with Whitham,
to solve the problem addressed by the claimed invention is clearly stated in
the rejection of claim 1 above and the results would be predictable." Ans.
11-12. We agree.
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Application 11/618,424
At page 5 of the Reply Brief~ Appellants also contend that "neither the
portable electronic system of Whitham nor the portable terminal of Kim is
associated with a vehicle." However, it is well established that "[a]n
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). See also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We find that the intended
use language does not structurally distinguish over the portable electronic
system of Whitham or the portable terminal of Kim, either of which could be
used in a vehicle.
Furthermore, Appellants have not pointed to any support in the
Specification for the phrase "associated with a vehicle" as recited in the
preamble to claim 1, or identified any other disclosure therein, that precludes
the Examiner from construing "associated with a vehicle" to include the
disclosure in Whitham of "a portable electronic system which can be used in
an automobile." Ans. 10 (citing Whitham, Fig. 4, 5, 7; col. 2, 11. 31-35; col.
17, 11. 3-5).4 Thus we agree with the Examiner that "one of ordinary skill in
the art would find it obvious to combine Whitham and Kim et al for
requesting and receiving a packaged tour based on the portable device
current location wherein the portable device is associated with a vehicle."
Id. at 10-11.
In the Reply Brief at page 7, Appellants argue for the first time that
"the Final Office Action takes the solution provided by Appellants' claimed
4 Whitham also discloses a telematics unit. See Whitham, col. 4, 11. 4--9
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Application 11/618,424
invention as the motivation for combining Whitham and Kim even though
neither reference even demonstrates an awareness of a problem that would
justify such combination." However, Appellants did not present this
argument in the Appeal Brief, and it is not responsive to an argument raised
in the Answer. Thus, Appellants did not set forth this argument in a timely
manner prior to filing of the Reply Brief to permit the Examiner an
opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2) (2014) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.").
For these reasons, we are not persuaded that the Examiner erred in
rejecting claims 1 and 4--7 under 354 U.S.C. § 103(a) over Whitham and
Kim.
Obviousness of claim 8 over Whitham, Kim, and Barton; and of
claims 9 and 10 over Whitham, Kim, and DeLorme
Appellants do not separately argue dependent claims 8-10. See
Appeal Br. 10-11. For the reasons set forth above, Appellants have not
demonstrated error in the rejection of claim 1. Accordingly, we likewise
sustain the rejection of claims 8-10.
DECISION
We AFFIRM the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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