Ex Parte Lenneman et al

Patent Trial and Appeal Board

Sep 30, 2014

11770927 (P.T.A.B. Sep. 30, 2014)

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.
11/770,927 06/29/2007 John K. Lenneman GP-309213-RD-JMC 7142
65798 7590 10/01/2014
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
KONG, SZE-HON
ART UNIT PAPER NUMBER
3661
MAIL DATE DELIVERY MODE
10/01/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN K. LENNEMAN, JOSEPH F. SZCZERBA,
ROY J. MATHIEU, WILLIAM C. BARLEY, and
THOMAS A. SEDER
____________

Appeal 2012-005899
Application 11/770,927
Technology Center 3600
____________

Before JAMES P. CALVE, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John K. Lenneman et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–22, which are all the
pending claims. Appeal Br. 3. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates generally to a vehicle route
determination system that provides route choices based on cost and, more
particularly, to a vehicle navigation system that provides one or more routes
to choose from based on fuel cost savings.” Spec. ¶ 1. Claims 1, 15, and 18
are independent. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.1
1. A vehicle navigation system comprising:
a plurality of data sources that provide information about
conditions along routes from a current vehicle position to a
destination; and
a cost predictor algorithm processor that receives the
information from the plurality of data sources, and provides one
or more routes for a vehicle operator to choose from that are
determined based on cost savings.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Becker US 2006/0129313 A1 June 15, 2006
Adam US 2007/0106465 A1 May 10, 2007
Geelen US 2008/0189033 A1 Aug. 7, 2008
Yun US 2008/0275639 A1 Nov. 6, 2008

1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the recently-issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.
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REJECTIONS
The following rejections are before us for review:
I. Claims 1–8 and 11–21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Geelen and Becker.
II. Claims 9 and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Geelen, Becker, and Yun.
III. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Geelen, Becker, and Adam.

ANALYSIS
Rejection I – Claims 1–8 and 11–21 as unpatentable
over Geelen and Becker
The Examiner found that Geelen discloses a vehicle navigation
system including all features as claimed, except that Geelen does not
specifically disclose “a driving condition data source that provides weather
conditions along one or more routes” as also claimed. Ans. 4–5 (citing
Geelen, Abstract; ¶¶ 4, 6, 9, 11–15, 21, 35–37, 49–52, 58–60, 62–63, 65;
Fig. 5). Next, the Examiner found that Becker discloses such a feature as
claimed. Ans. 5 (citing Becker, ¶¶ 4–5, 17, 27). The Examiner then
concluded that it would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the system of Geelen to
provide weather conditions, as taught by Becker, to provide desired routes of
travel for an operator to avoid hazardous road or weather conditions. Ans. 5.
With respect to the additional feature of a rare traffic event data
source, as recited in claims 11, 12, 19, and 20, the Examiner found that
Becker discloses such a feature as claimed. Ans. 6 (citing Becker, ¶ 22).
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The Examiner then concluded that it would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify the
system of Geelen to include rare traffic event information, as taught by
Becker, “to determine the most optimal route considering any scheduled
event along the routes.” Ans. 6.
Appellants’ principal argument is that Geelen should be removed as a
reference based on declarations that were submitted to the Examiner for
consideration in an attempt to “swear behind” the reference date of Geelen.
See App. Br. 7–12; Reply Br. 1–2. In particular, Appellants submitted a
Declaration under 37 C.F.R. § 1.131 of the named inventors, submitted
February 18, 2011 (Rule 131 Declaration) and a Declaration under 37 C.F.R.
§ 1.132 of Kathryn Marra, submitted July 14, 2011 (Rule 132 Declaration)
for consideration by the Examiner.2 The Rule 131 Declaration and the Rule
132 Declaration were submitted in an effort to show earlier conception of
the invention coupled with due diligence from a critical period prior to the
reference date of Geelen to the filing date of the subject application (i.e.,
constructive reduction to practice).
The Examiner determined, after consideration of the Rule 131
Declaration, that Appellants established earlier conception, but that
Appellants failed to establish a sufficient factual showing of diligence for the
entire critical period. Ans. 8–10; see also Final Action 2 (mailed April 26,
2011). In particular, the Examiner identified a gap of time between the
activities of Exhibit B (receipt of results from an outside firm patentability

2 We note that neither the Rule 131 Declaration nor the Rule 132
Declaration was submitted to the Board, despite each being extensively
relied upon by Appellants in the present appeal. Compare MPEP § 1205.02
(8th ed., rev. 9), with Appeal Br., Evidence App. (indicating “no evidence”).
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search on January 16, 2007) and Exhibit C (invention disclosure materials
sent to outside patent counsel for preparation of a patent application on
March 9, 2007) that was unaccounted for. Ans. 9; see also Final Action 2.
The entire critical period during which diligence is required must be
accounted for by either affirmative acts or acceptable excuses. See Rieser v.
Williams, 255 F.2d 419, 423 (CCPA 1958); Gould v. Schawlow, 363 F.2d
908, 919 (CCPA 1966). Regarding the identified gap of time, we note that
even a two-day period lacking activity has been held to be fatal by our
reviewing court. See In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983).
In response to the identified gap of time, Appellants submitted the
Rule 132 Declaration, which includes general statements about the typical
workload of the group that handled the instant application, but does not
include any facts specific to the instant application or the particular gap of
time identified by the Examiner.3 The Rule 132 Declaration also includes
the unsubstantiated conclusion that “[s]ix weeks would be considered a
reasonable and normal time to diligently handle review of a search, a
decision whether or not to proceed with filing, and transmission of the
invention to outside counsel for filing preparation.” Rule 132 Declaration 2.
The Examiner concluded, after consideration of the Rule 132
Declaration, that Appellants “only allege that the GM attorney had [a] heavy
workload and [a] very large docket.” Ans. 8. In other words, the statements
in the Rule 132 Declaration are not the type of specific facts required for a

3 We also note that the Declarant in the Rule 132 Declaration is not the
person identified as the attorney who handled the instant application, nor is
any factual basis provided establishing the Declarant’s familiarity with
specific facts regarding either affirmative acts or acceptable excuses with
respect to the instant application during the critical period.
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showing of diligence with respect to either affirmative acts or acceptable
excuses pertaining to the instant application. See Kendall v. Searles, 173
F.2d 986, 993 (CCPA 1949).
On the record before us, Appellants have not provided facts, including
the requisite affirmative acts or acceptable excuses pertaining to the instant
application, sufficient to establish diligence during the entire critical period,
including the gap of time identified by the Examiner.4 Thus, Appellants do
not apprise us of error in the Examiner’s determination of a lack of diligence
during the entire critical period, or the Examiner’s decision to not remove
Geelen as an applied reference.
With respect to claims 1–5, 7, 8, 11–14, 16, 17, and 19–21, Appellants
do not set forth any additional substantive arguments against the combined
teachings of Geelen and Becker as applied in the rejection of record, as
discussed supra. See Appeal Br. 7, 14. Thus, Appellants do not apprise us
of error in the Examiner’s rejection of those claims.
Regarding claims 6, 15, and 18, Appellants also argue that “Geelen
does not disclose using the different fuel prices along different potential
driving routes to determine a cost savings for one route over the others,”
asserting that “Geelen only describes using a nominal fuel price to show
what the cost of driving different routes would be.” Appeal Br. 13
(emphasis omitted); see also Appeal Br. 12–14; Reply Br. 2–3.

4 We further note that, in addition to the gap of time identified by the
Examiner, we also observe a gap of time between the activities of Exhibit E
(submission of the “final application,” following review and comment by the
inventors, “to GM’s patent counsel for filing” on May 14, 2007) and the
actual filing of the present application on June 29, 2007, that also appears to
be unaccounted by any requisite affirmative acts or acceptable excuses.
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We are not persuaded by Appellants’ argument because, as correctly
found by the Examiner, Geelen teaches a vehicle navigation system that
calculates fuel related parameters and returns related data to a user of the
device, where the related data may include “fuel cost of a particular
calculated route,” a “financial cost of fuel used by the vehicle” in traveling
along a calculated route, and/or an “optimal calculated route chosen from
many possible calculated routes” based on “relative fuel cost of each of the
calculated routes,” which can be calculated before completion of travel.
Ans. 11 (citing Geelen, Abstract; emphasis omitted). Based on these
supported findings, we agree with the Examiner that “[i]t is clear that the
pluralities of routes can be calculated in advance (before travel) using the
fuel cost data gathered.” Ans. 11.
Appellants do not provide any factual evidence or persuasive
technical reasoning why the “fuel cost” data gathered and calculated before
travel in Geelen would not teach the recited “information about fuel prices
along several routes” (claim 15) or “fuel prices along the routes” (claims 6
and 18) as claimed. See Appeal Br., Clms. App. Thus, Appellants do not
apprise us of error in the Examiner’s findings or determinations.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1–8 and 11–21 under 35 U.S.C. § 103(a) as being unpatentable over
Geelen and Becker.

Rejection II – Claims 9 and 22 as unpatentable
over Geelen, Becker, and Yun
With respect to the rejection of these claims, Appellants do not set
forth any additional substantive arguments separate from the arguments
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discussed supra, asserting only that the addition of Yun “does not overcome
the insufficiency of the rejection of the underlying independent claims.”
Appeal Br. 15–16. Appellants also submit that the Rule 131 Declaration and
the Rule 132 Declaration, discussed in detail supra, “also antedate Yun, thus
removing Yun as a reference.” Appeal Br. 16. For the same reasons
discussed supra with regard to the lack of removal of Geelen as a reference,
based on the record before us, Yun is likewise not removed as a reference.
Accordingly, for the same reasons, we likewise sustain the rejection of
claims 9 and 22 under 35 U.S.C. § 103(a) as being unpatentable over
Geelen, Becker, and Yun.

Rejection III – Claim 10 as unpatentable
over Geelen, Becker, and Adam
With respect to the rejection of this claim, Appellants do not set forth
any additional substantive arguments separate from the arguments discussed
supra, asserting only that “adding Adam’s disclosure of a system which
allows the definition of a desired time of arrival at a destination does not
overcome the insufficiency of the underlying independent claim rejection.”
Appeal Br. 16–17. Accordingly, for the same reasons, we likewise sustain
the rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable
over Geelen, Becker, and Adam.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–8 and 11–21
under 35 U.S.C. § 103(a) as being unpatentable over Geelen and Becker.
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We AFFIRM the Examiner’s decision rejecting claims 9 and 22 under
35 U.S.C. § 103(a) as being unpatentable over Geelen, Becker, and Yun.
We AFFIRM the Examiner’s decision rejecting claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Geelen, Becker, and Adam.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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