Ex Parte Macfarlane

Board of Patent Appeals and Interferences

Nov 20, 2008

10171123 (B.P.A.I. Nov. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JANE F. MACFARLANE
____________

Appeal 2007-3721
Application 10/171,123
Technology Center 2600
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Decided: November 20, 2008
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Before MAHSHID D. SAADAT, JOHN A. JEFFERY,
and CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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STATEMENT OF CASE
Appellant’s claimed invention is a wireless key system that includes a
personalized key fob device for sending a voice command to a mobile
vehicle to perform a requested function (Spec. 1:7-10).
Independent claims 1, reproduced below, is representative of the
subject matter on appeal.
1. A wireless key system for a mobile vehicle, comprising:

a key fob including a controller, a microphone operably coupled to the
controller, and a memory operably coupled to the controller; and

a telematics unit operably coupled to a vehicle communication bus;
wherein verbal commands received through the microphone initiate
the controller to send a function message in accordance with
instructions stored in the memory to the telematics unit that activates a
function through the vehicle communication bus.

REFERENCES
Maes US 6,073,101 Jun. 6, 2000
Coon US 6,539,358 B1 Mar. 25, 2003
McCarthy US 6,693,517 B2 Feb. 17, 2004

Keiderling DE 19916308A1 Oct. 19, 2000

Claims 1-11, 13-18, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) based upon the teachings of Keiderling and McCarthy.
Claim 12 stands rejected under 35 U.S.C. § 103(a) based upon the
teachings of Keiderling, McCarthy, and Maes.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) based upon
the teachings of Keiderling, McCarthy, and Coon.
Appellant contends that claims 1-22 are not obvious over Keiderling
and McCarthy as there is no teaching or motivation to combine because
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Keiderling does not teach or suggest a telematics unit (App. Br. 12-13;
Reply Br. 10).1

ISSUE
Did the Examiner err in combining Keiderling and McCarthy
rejecting the claims under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
1. Appellant’s invention is directed to a key fob (220; Fig. 2)
having a controller (240; Fig. 2), a microphone (224; Fig. 2) and a memory
(242; Fig. 2) connected to the controller (cls. 1, 9; Abstract; Spec. 10:24-30).
A telematics unit (130; Figs. 1 and 2) is coupled to a vehicle communication
bus (146; Fig. 1). Verbal commands are received through the microphone to
initiate the controller to send a function message, in accordance with
instructions stored in the memory, to the telematics unit that activates a
function through the vehicle communication bus (cls. 1, 9; Spec. 12:1-17).
2. Keiderling teaches simplifying a parking process at different
sites having different requirements by using a key (9) or key fob, a display
arrangement (20), and methods for using the arrangements (p. 8, ll. 10-17).2
The key serves to lock and unlock a vehicle and also as an operating device
for a display arrangement located in or on the motor vehicle for monitoring
money, parking time, and parking data storage (p. 8, ll.17-22). The key
includes a display, a microprocessor having a timer and memory, control

1 Throughout this opinion we refer to the Appeal Brief mailed September
26, 2006.
2 Throughout this opinion we refer to the United States Patent and
Trademark Office April 2005 translation of Keiderling.
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devices, a signal emitter, and a microphone (p. 8, ll. 23-25). The memory in
the key is a transponder that is read and written by devices in or out of the
vehicle (p. 9, ll. 14-16). The device can wirelessly transmit information
concerning the status of individual vehicle components such as tire pressure
to the key transponder and have it displayed (p. 11, ll. 3-6).
3. In Keiderling, a driver can dictate a short message into a
microphone (17) on the key. The message is stored in a microprocessor (13)
memory (p. 24, ll. 6-9). The driver listens to the pre-recorded message by
playing it over the loud speaker 16 (p. 24, ll. 21-24).
4. McCarthy teaches a vehicle-based wireless communication
system having an interior rearview mirror assembly including a
telecommunication link from the vehicle to an external provider of
information or service (Abstract). The device provides compatibility and
interoperability for mobile devices such as mobile phones, personal digital
assistants (PDAs), and hand-held remote entry devices such as key fobs (col.
2, ll. 16-20). By way of an in-vehicle voice detection/recognition/generation
system, and by linking a PDA to the vehicle, a driver can hear data stored in
the PDA. Further, the in-vehicle voice detection/recognition/generation
system can receive spoken words from the driver and convert them to digital
data to communicate with the PDA (col. 9, ll. 1-33). An operator interfaces
with the system using the existing PDA, phone, or other mobile device
capable of composing or editing messages (col. 6, ll. 50-53).
5. Telematics is the combination of telecommunications and
computing. (1995-02-07) Copyright © 2008, Dictionary.com, LLC. All
rights reserved; http://dictionary.reference.com/browse/telematics.
That is, telematics is the blending of computers and wireless
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telecommunication technologies such as the Internet. It includes both
telecommunications and informatics.
http://searchnetworking.techtarget.com/home/0,289692,sid7,00.html; then
search “telematics.”

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
“[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 re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “To
facilitate review, this analysis should be made explicit.” KSR, 127 S. Ct. at
1741.
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

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ANALYSIS
Appellant addresses the Examiner’s rejection of claims 1-11, 13-18,
21, and 22 as obvious over Keiderling and McCarthy under 35 U.S.C.
§ 103(a).

Claims 1, 2-4, 6-11, 13, 14, 21, and 22
Appellant traverses the Examiner’s rejection of these claims by
providing arguments for independent claims 1, 9, and 21. We address this
rejection with respect to representative claim 1 as claims 9 and 21 contain
substantially the same limitations as claim 1.
The Examiner contends that Keiderling teaches a key fob for
operating vehicular functions and teaches all of the elements recited in
Appellant’s claim 1 except for a telematics unit coupled to a vehicle bus
(Ans. 4-5). The Examiner further contends that McCarthy teaches a vehicle
based wireless communication system between a key fob and an in-vehicle
telematics unit that receives voice commands (Ans. 5). Specifically, the
Examiner asserts Keiderling discloses “a key fob in communication with a
vehicular communication system for controlling vehicular functions,
whereas McCarthy discloses both vehicular functions and telematic
functions as being utilized to provide a more diverse remote keyless entry
(RKE) system” (Ans. 5). Further, Keiderling discloses “a verbal commands
[sic] into a key, which has a microphone” (Ans. 11). The Examiner argues
Keiderling also discloses a “telematic system within the vehicle in that
telematic information, such as automotive warning data from tire pressure”
is transmitted (Ans. 11) and concludes it would be obvious to one ordinarily
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skilled in the art at the time of the invention to incorporate the telematics
unit of McCarthy into the system Keiderling (Ans. 5). We do not agree.
Keiderling does not teach a telematics system as asserted by the
Examiner (Ans. 11). Keiderling does teach it is possible to use a wireless
system to inform a key transponder of, for example, tire pressure (FF 3).
This is merely internal to the vehicle in Keiderling and although wireless, it
is not a telematic system (FF 5) as it uses a transponder and IR for
communication of signals (FF 2). Thus, Keiderling performs display of a
motor vehicle function in a self contained system that uses IR to send
signals.
With respect to McCarthy, the Examiner cited McCarthy as teaching
two-way communication between a key fob and a telematics vehicular unit
(Ans. 11). However, McCarthy on its own is defective. McCarthy includes
a separate key fob and a PDA in addition to the telematics system (FF 4).
The key fob, communicates with the PDA, not the telematic system (FF 4).
Further, the two-way communication is between the telematics service
provider and a service provider such as a gas station, store, etc. (col. 8, ll.
43-54). There is no teaching in McCarthy of combining the key fob and
PDA so that the key fob can communicate directly with the telematic
system. Even if McCarthy did teach this, adding the telematic system as set
forth in McCarthy would add nothing to Keiderling. Thus, there is no
apparent reason or rational underpinning for one of ordinary skill in the art
to combine the elements in these references in the manner claimed. Thus,
the Examiner erred in rejecting independent claims 1, 9, and 21 over the
combination of Keiderling and McCarthy. For the same reasons, we reach
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the same conclusion with respect to dependent claims 2-4, 6-11, 13, 14, and
22.

Claims 5, 12, and 15-20
We will also not sustain the Examiner’s rejection of independent
claim 19 for similar reasons as the additional reference to Coon fails to cure
the above-noted deficiencies with respect to Keiderling and McCarthy
Furthermore, because claims 5, 12, and 15-18, and 20 depend directly or
indirectly from claims 1, 9, 19, or 21, and none of the remaining cited
references cure the deficiencies found in Keiderling or McCarthy, we find
error in the rejection of these claims over the combination of the cited
references.

CONCLUSION
The Examiner erred in rejecting claims 1-22 under 35 U.S.C § 103(a).

DECISION
The Examiner’s decision in rejecting claims 1-22 is reversed.

REVERSED

KIS

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