Ex Parte LeyerleDownload PDFPatent Trial and Appeal BoardDec 30, 201612341690 (P.T.A.B. Dec. 30, 2016) 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. 12/341,690 12/22/2008 James W. Leyerle P000754-OST-ALS 1360 60770 7590 12/30/2016 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER ALSOMIRI, MAJDI A ART UNIT PAPER NUMBER 3662 MAIL DATE DELIVERY MODE 12/30/2016 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 JAMES W. LEYERLE Appeal 2014-009146 Application 12/341,690 Technology Center 3600 Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and GORDON D. KINDER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James W. Leyerle (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1—6 and 8—20 as unpatentable over Bi (US 2006/0253235 Al; pub. Nov. 9, 2006), and Lowrey (US 7,228,211 Bl; iss. June 5, 2007). Claim 7 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2014-009146 Application 12/341,690 CLAIMED SUBJECT MATTER The claimed subject matter relates “to techniques for wirelessly sending messages from vehicles using the telematics system.” Spec. para. 1, Fig. 2. Claims 1, 8, and 14 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method of communicating messages from a vehicle telematics unit, comprising the steps of: (a) storing a user-provided contact along with one or more wireless numbers each of which is associated with a reportable vehicle condition at a vehicle; (b) monitoring a plurality of vehicle conditions; (c) detecting that one of the vehicle conditions has become a reportable vehicle condition; (d) matching the detected vehicle condition with the reportable vehicle condition associated with the one or more wireless numbers; and (e) sending a short-message service (SMS) message to the matching wireless number after the reportable vehicle condition associated with that contact is detected, wherein the SMS message includes information associated with the reportable vehicle condition. ANALYSIS The Examiner finds that Bi fails to disclose steps (a), (d), and (e) of claim 1. See Final Act. 2. The Examiner relies on Lowrey for these steps. Id. at 3. The Examiner concludes that it would have been obvious to modify Bi with the teachings of Lowrey “since doing so would have achieved the desirable result of better convenience and efficiency.” Id. Appellant contends that “[t]he Examiner has not identified a valid reason to combine Bi with Lowrey” and that the Examiner’s reasoning “is merely a general statement” that “lacks any basis in either Bi or Lowrey and 2 Appeal 2014-009146 Application 12/341,690 is not underpinned by the disclosures of these references.” See Appeal Br. 8; see also Reply Br. 3^4. At the outset, in the Answer, the Examiner merely recites case law and fails to address Appellant’s contention. See Ans. 3. In rejecting claims as being obvious over the prior art, the analysis should be made explicit. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). In this case, what is lacking is an articulated reason that is supported by a rational underpinning as to why one skilled in the art would have been prompted to combine Bi and Fowrey to arrive at the claimed subject matter. The Examiner fails to explain how or why combining the teachings of Bi and Fowrey would result in “better convenience and efficiency.” See Final Act. 3. The Examiner applies the same rationale for independent claims 8 and 14. See id. at 6, 9, respectively; see also Appeal Br. 8—9. Thus, the Examiner’s reason for combining Bi and Fowrey is deficient for claims 8 and 14 as well. Furthermore, we agree with Appellant that under the broadest reasonable interpretation consistent with Appellant’s Specification, “Fowrey’s inclusion of the modem’s telephone number with outgoing packets would not be reasonably viewed as teaching or suggesting the 3 Appeal 2014-009146 Application 12/341,690 elements” of claims 1 and 14.1 2Reply Br. 2—3. In particular, we agree with Appellant that “[t]he telephone number identified in Lowrey refers to the sender’s wireless modem and is not associated with a reportable [vehicle] condition” and none of the passages of Lowrey cited by the Examiner disclose one or more wireless numbers associated with a reportable vehicle condition, as called for in claims 1 and 14.2 See id. at 1—3; see also Appeal Br. 5—7, 10-11; id. at 13, 15, Claims App.; Final Act. 3, 9; Ans. 2, 4—5; Spec. para. 27; Lowrey, 7:10—15. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of claims 1—6 and 8—20 as unpatentable over Bi and 1 Appellant’s Specification describes that “[a]t block 220, each of at least some of the wireless telephone numbers are associated with at least one of a number of reportable vehicle conditions relating to the status of a vehicle. For instance, vehicles 12 periodically require different types of service, such as oil changes, transmission fluid changes, gearbox oil changes, coolant changes, light bulb changes, and other replacement service. ... In other words, a reportable vehicle condition or event may exist for which the vehicle 12 should be serviced, such as when engine oil should be changed or tire pressure should be increased. And certain types of service or reportable vehicle events may be associated with different wireless telephone numbers.” Spec. para. 27, Fig. 2 ; see also Reply Br. 2—3. 2 We note that unlike claims 1 and 14, independent claim 8 does not require one or more wireless numbers associated with a reportable vehicle condition. See Appeal Br. 13, Claims App. Appellant states that the portions of Lowrey relied on by the Examiner for claim 8 “are discussed [] with regard to claim 1 and that discussion is equally applicable [to claim 8] even though the language of claim 8 differs from that of claim 7.” Id. at 10 (emphasis added). Given that the language of claim 8 differs from that of claim 1, we are not apprised of how the Examiner’s assertion that Lowrey discloses the “determining” step of claim 8 is in error. See id. at 9-10; see also Final Act. 5—6; Ans. 4; In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). 4 Appeal 2014-009146 Application 12/341,690 Lowrey. DECISION We REVERSE the decision of the Examiner to reject claims 1—6 and 8—20 as unpatentable over Bi and Lowrey. REVERSED 5 Copy with citationCopy as parenthetical citation