Ex Parte Mathur et al

Patent Trial and Appeal Board

May 17, 2016

12715771 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121715,771 03/02/2010
80748 7590 05/19/2016
Cantor Colburn LLP-General Motors
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Bhavna Mathur
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.
P00883 l-GMVE-CD 9423
EXAMINER
LOUIE, W AE LENNY
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
05/19/2016 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BHA VNA MATHUR, ANDREW W. GELLATLY,
CODY R. HANSEN, JOHN P. WEISS, MATTHEW M. HIGHSTROM, and
ROBERT D. SIMS
Appeal2014-004581
Application 12/715,771 1
Technology Center 3600
Before STEFAN STAICOVICI, AMANDAF. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mathur et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1 and 4--18 under 35 U.S.C.
§ 103(a) as unpatentable over Geelen (US 2007/0213092 Al, pub. Sept. 13,
2007)2. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is GM Global
Technology Operations, Inc. Appeal Br. 1 (filed July 29, 2013).
2 Claims 2 and 3 are cancelled. Appeal Br., Claims App.
Appeal2014-004581
Application 12/715,771
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants' invention relates to "controlling the delivery operation of
an infotainment system in an automobile" Spec. i-f 1.
Claims 1, 11, and 15 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An infotainment system for an automobile, the system
compnsmg:
a navigation system;
an entertainment system;
an audio output device; and
a control system coupled to the navigation system, the
entertainment system and the audio output device, the control system
controlling access by the navigation system and the entertainment
system to the audio output device, the control system including a
conversation recognizer that determines if a conversation is being
conducted, the control system varying operation of the audio output
device in the event a conversation is being conducted, wherein the
control system varies operation of the audio output device by delaying
a navigation prompt from being played on the audio output device
during at least a portion of the conversation.
ANALYSIS
Appellants have not presented arguments for the patentability of
claims 5-12, 15, and 16 apart from claim 1. See Appeal Br. 4--5. Therefore,
in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 5-12, 15, and 16 standing or falling with claim 1. In view of
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Application 12/715,771
Appellants' arguments, we will address the rejection of claims 4, 13, 14, 17,
and 18 separately.
Claims 1, 5-12, 15, and 16
The Examiner finds that Geelen discloses most of the limitations of
claim 1, but is silent as to "delaying a navigation prompt from being played
on the audio output device during at least a portion of the conversation." See
Final Act. 2-3 (transmitted Feb. 7, 2013). Nonetheless, the Examiner finds
that Geelen discloses that during a voice call, music is paused or volume is
reduced, and navigation instructions are replaced by simple non-distracting
notifications or are completely suppressed. Ans. 6 (transmitted Dec. 5,
2013) (citing Geelen i-fi-1 77-85). The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
at the time of invention to Geel en [to] utilize teaching of
pauses, reduced volumes, and beeps to implement with the
navigation instruction since these are known techniques found
in Geelen to improve audio output to obtain similar results of
increased safety.
Final Act. 3.
Appellants argue that it would not have been obvious to a person of
ordinary skill in the art to pause a navigation prompt during a call, as Geelen
discloses pausing music during a voice call "for the entire duration of the
call." See Appeal Br. 4. According to Appellants, because the prompt
"would be 'paused' (e.g., delayed) until the end of the call" the navigation
system would fail to provide directions in a timely manner and thus, would
fail to operate in its intended manner. See id.; see also Reply Br. 2.
We are not persuaded by Appellants' arguments because the
arguments are premised on a limited duration of the conversation, namely, a
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Application 12/715,771
conversation that ends before playing a navigation prompt. However, claim
1 does not limit the duration of the conversation, as Appellants urge. It is
well established that limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In
this case, claim 1 requires "delaying" the navigation prompt for "at least a
portion of the conversation." See Appeal Br., Claims App. Thus, claim 1
encompasses the situation when the navigation prompt is delayed for the
entire conversation. As Geelen discloses pausing music during a voice call,
the Examiner's modification of Geelen discloses delaying the navigation
prompt for "at least a portion of the conversation," that is, the entire
conversation, as called for by claim 1. We thus agree with the Examiner that
"suppression of the volume is clearly delaying the navigation prompt of the
passenger as to not interrupt the conversation." Ans. 6.
We further disagree with Appellants' argument that the Examiner's
modification of Geelen's navigation system would modify the system such
that it would fail to operate in its intended manner. Although we appreciate
that in the modified Geelen navigation system the navigation prompt is
delayed for the entire voice call, nonetheless, the predictable result is that
Geel en's modified navigation system would function as intended when the
conversation ends before a navigation prompt is played. See DePuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir.
2009) (noting that the "predictable result" discussed in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007), also means "that the combination would
have worked for its intended purpose").
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Application 12/715,771
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 5-12, 15, and 16 falling
with claim 1, as unpatentable over Geelen.
Claims 4, 13, 14, 17, and 18
Appellants argue that claims 4, 13, and 17 are patentable because
Geelen does not disclose a "teaching of delaying anything until a location-
based limit is reached." Appeal Br. 5. The Examiner provides no findings
that the modified system of Geelen discloses delaying a navigation prompt
until a "location-based limit" (as per claim 4) or a "navigation-based limit"
(as per claims 13 and 17) is reached. See Final Act. 3-5. Thus, the
Examiner has not made the initial factual findings required to demonstrate a
prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (the examiner has the initial duty of supplying the requisite
factual basis and may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions, or hindsight reconstruction to
supply deficiencies in the factual basis).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 4, 13, 14, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Geelen3.
3 We note that claims 14 and 18 are dependent from claims 13 and 1 7,
respectively.
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Application 12/715,771
SUMMARY
The Examiner's decision to reject claims 1 and 4--18 is affirmed as to
claims 1, 5-12, 15, and 16, and reversed as to claims 4, 13, 14, 17, and 18.
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-IN-PART
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