Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardMay 15, 201813362202 (P.T.A.B. May. 15, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/362,202 0113112012 28395 7590 05/17/2018 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Thomas Lee Miller 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. 83221667 6104 EXAMINER EVANS, GARRETT F ART UNIT PAPER NUMBER 3663 NOTIFICATION DATE DELIVERY MODE 05/1712018 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS LEE MILLER, BRIAN BENNIE, DAVID ANTHONY HATTON, and DORON M. ELLIOTT Appeal2017-007588 Application 13/3 62,202 1 Technology Center 3600 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Lee Miller et al. ("Appellants") seek review under 35 U.S.C. § 134 of the Examiner's decision, as set forth in the Final Office Action dated April 8, 2016 ("Final Act."), rejecting claims 1-14, 16-18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b ). 1 Appellants identify the real party in interest as Ford Global Technologies, LLC. Appeal Br. 3. Appeal2017-007588 Application 13/3 62,202 We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION. CLAIMED SUBJECT MATTER Claims 1, 10, and 18 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A vehicle system comprising: a transmitter; and a vehicle communication module including the transmitter configured to: receive first global positioning system (GPS) data indicative of a vehicle location; receive and process a first signal that indicates that a vehicle is in drive; and transmit the first GPS data to an occupant communication device (OCD) to disable at least one switch positioned on the OCD with the first GPS data in response to the first signal. Appeal Br. (Claims App. 1 ). EVIDENCE The Examiner relies upon the following evidence: Lachinski US 5,633,946 May 27, 1997 Forstall US 2009/0005070 Al Jan. 1, 2009 Sumcad US 2012/0172012 Al July 5, 2012 Why Use An External Bluetooth GPS Receiver With An Android Phone? September, 2010 (hereinafter "External GPS")2 2 Herein, we refer to this reference as "External GPS," as do Appellants and the Examiner. Appeal Br. 8; Final Act. 8. It appears that External GPS was 2 Appeal2017-007588 Application 13/3 62,202 REJECTIONS I. Claims 1-3, 5-13, 16-18, 20, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Forstall and Sumcad. II. Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Forstall, Sumcad, and Lachinski. III. Claims 5, 12, 20, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Forstall, Sumcad, and External GPS. ANALYSIS New Ground of Rejection Pursuant to 37 C.F.R. § 41.50(b), we enter a New Ground of Rejection against claims 1-14, 16, 17, and 21under35 U.S.C. § 112, first paragraph, for failure to comply with the enablement requirement. An enablement rejection can be based on scope of enablement or on total lack of enablement for any subject matter within the scope of the claims. In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999). The supporting disclosure must adequately apprise those skilled in the art, in light of the knowledge of those ordinary artisans, how to make and to use the claimed subject matter throughout the entire scope of the claim. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003), cert denied, 124 S.Ct. 2390 (U.S. May 24, 2004) ("[T]he applicant's specification must enable one obtained from the internet at http://androgeoid.com/2010/09/why-use-an- external-bluetooth-gps-receiver-with-an-android-phone/ (last accessed on May 16, 2013). See External GPS 1-5, bottom. We understand that the publication date of External GPS is September, 2010, based on the URL. 3 Appeal2017-007588 Application 13/3 62,202 of ordinary skill in the art to practice the full scope of the claimed invention. [citing In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)]."). Where a claim fails to recite a feature described in the specification as essential to the claimed invention, the claim does not comply with the enablement requirement. See In re Mayhew, 527 F.2d 1229, 1233 (CCPA 1976) (affirming the rejection of claims not limited to having a "special cooling apparatus, specially located," because the specification indicated the process would not work without the special cooling apparatus); MPEP § 2172.01. For the following reasons, we determine that claims 1-14, 16, 17, and 21 are not enabled for their full scope. Claim 1 recites "a vehicle communication module including the transmitter configured to ... transmit the first GPS data to an occupant communication device (OCD) to disable at least one switch positioned on the OCD with the first GPS data in response to the first signal." Appeal Br. (Claims App. 1) (emphasis added). Similarly, claim 10 recites that "the communication module being further configured ... to transmit the second GPS data, via the at least one transmitter, to the OCD to ... disable at least one switch positioned on the OCD with the second GPS data in response to the first signal." Id. at Appeal Br. (Claims App. 2) (emphasis added). Appellants' Specification describes that "[t]he OCD may include an application, which disables operation if the GPS coordinates indicate that the vehicle is moving (i.e., disables switches positioned on the OCD to prevent the driver from manually manipulating the OCD to minimize distractions)." Spec. i-f 10 (emphasis added). The Specification also describes that "[t]he APIM 16 is configured to provide Global Navigation Satellite System (GNSS) information to the OCD 12," and "[t]he OCD 12 4 Appeal2017-007588 Application 13/3 62,202 includes an application for disabling various operations (e.g., specific screens/actions) of the OCD 12 in response to the signal GNSS." Id. i-fi-f 19- 20 (emphasis added). In addition, the Specification describes that "the signal GNSS [contains] the GPS coordinate data as received on the signal GPS_DATA." Id. i-f 20. Conversely, the Specification does not describe that GPS data transmitted by a transmitter of a vehicle communication module can disable operations of an OCD unless the OCD receiving the transmitted GPS data has an application for disabling operations of the OCD. The Specification does not describe that such transmitted GPS data, by itself, is effective to disable at least one switch positioned on the OCD. Nor does the Specification describe any device other than an OCD that may have such an application to disable operations of an OCD in response to transmission of the signal GNSS. See Spec. passim. Thus, the OCD and the application for disabling its operations are essential elements of the invention, according to the Specification. Accordingly, a person of ordinary skill in the art would recognize from review of the disclosure that the claimed vehicle system further requires an OCD having an application configured to disable at least one switch positioned on the OCD with GPS data, in order for the system to be able to operate as recited. See also id. i123 ("The application on the OCD 12 may not allow the driver to perform the requested operation, particularly, ifthe vehicle is in a restricted state." (emphasis added)). However, claims 1 and 10 do not positively recite the OCD and additionally an application configured to disable the switch positioned on the OCD with the first GPS data transmitted to the OCD as elements of the vehicle system. Absent the 5 Appeal2017-007588 Application 13/3 62,202 vehicle system comprising an OCD that has such application configured to do what is required in claims 1 and 10, one of ordinary skill in the art would not be able to make or use the full scope of what is claimed. Appellants do not otherwise disclose how a switch on an OCD can be disabled in the absence of the OCD itself, much less absent hardware and/or software provided with the OCD that will perform the disabling action upon receipt of the first GPS data. Accordingly, claims 1 and 10, and claims 2-9, 11-14, 16, 17, and 21 depending therefrom, are not enabled by the disclosure. Rejection I Claims 1-3, 5-13, 16, 17, and 21 Appellants present separate argument for patentability of claim 1 and rely on the same argument for claim 10. Appeal Br. 4--8. We select claim 1 as representative, and claims 2, 3, 5-13, 16, 17, and 21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). As to claim 1, the Examiner finds that Forstall discloses a system comprising a communication module including a transmitter configured to receive GPS data indicative of a vehicle location and to transmit the GPS data to an OCD. Final Act. 2 (citing Forstall i-fi-172-73, 76); see also id. at 4. The Examiner finds that Sumcad discloses a vehicle system configured to transmit to an OCD, in response to a signal, an order to restrict operation of the OCD. Id. at 3 (citing Sumcad i1 61 ). The Examiner concludes that it would have been obvious to modify the system of Forstall to transmit GPS data in response to a signal, based on the teaching of Sumcad, "to better determine conditions in which the transmitted first GPS data is most useful to an OCD." Id. 6 Appeal2017-007588 Application 13/3 62,202 Appellants contend that the Examiner's proposed combination fails to teach a vehicle communication module configured to "transmit the first GPS data to an occupant communication device (OCD) to disable at least one switch positioned on the OCD with the first GPS data in response to the first signal," as recited in claim 1. Appeal Br. 4. Appellants contest the Examiner's position that the recitation "to disable at least one switch positioned on the OCD with the first GPS data" is merely an intended result and is not given patentable weight because nothing in the claimed module suggests that data is received from the vehicle communication module. Id. at 7; see also Reply Br. 1--4. In support of this contention, Appellants argue that the claimed vehicle communication module's transmission of GPS data has an effect on the OCD because the claimed vehicle communication module is configured to transmit GPS data to disable at least one switch positioned on the OCD and because the claim requires that GPS data is received at the OCD. Appeal Br. 7. These arguments are unpersuasive. Although claim 1 requires a vehicle communication module configured to transmit first GPS data to an OCD, claim 1 does not also require that the vehicle system comprises an OCD, and, especially, one configured to receive such first GPS data from the vehicle communication module. What happens after the transmission of first GPS data by the vehicle communication module has nothing to do with the positively-recited elements of the claim, which are only the vehicle communication module including the transmitter. As such, we agree with the Examiner that the recitation "to disable at least one switch positioned on the OCD with the first GPS data" is an intended result and, as such, should 7 Appeal2017-007588 Application 13/3 62,202 not be given patentable weight. Accordingly, Appellants' contentions are not commensurate with the scope of claim 1. Appellants also argue that even if Sumcad discloses disabling an OCD, Sumcad fails to disclose that the OCD receives GPS data from the telematics unit 14 in response to an indication that a vehicle is in drive in order to disable switches on the OCD, and fails to disclose that the telematics unit 14 transmits GPS data to an OCD in response to a first signal that indicates the vehicle is in drive. Appeal Br. 5---6. As discussed above, however, claim 1 does not require that the vehicle system comprises an OCD that is configured to receive GPS data from the vehicle communication module, and the recitation "to disable at least one switch positioned on the OCD with the first GPS data" is an intended result. As such, Appellants' contention that Sumcad fails to disclose that the OCD receives GPS data from the telematics unit 14 in response to an indication that a vehicle is in drive in order to disable switches on the OCD, is not commensurate with what is claimed. Appellants contend that the Examiner's motivation for combining Sumcad and Forstall is flawed because Forstall alone discloses the manner in which the GPS data is most useful to an OCD, and Sumcad fails to determine any conditions in which the GPS data is most useful to an OCD. Id. at 6. As such, Appellants contend, the Examiner's reason to combine the teachings of Sumcad and F orstall is based on improper hindsight reconstruction and an ordinary artisan would not be motivated to "better determine conditions" in which GPS data is most useful to an OCD, as asserted by the Examiner, because Sumcad fails to disclose that any GPS data is transmitted to an OCD. Id. at 6-7. 8 Appeal2017-007588 Application 13/3 62,202 Smncad discloses that "[ w ]hen a user is texting while also being engaged in another activity, such as when operating machinery, while driving a vehicle, and/or the like, the user's attention may be diverted from the other activity." Sumcad i-f 2. This disclosure provides a reason to restrict operation of an OCD when a vehicle is in drive. See also id. at i-f 61 ("In response to the signal ["upon detecting an in-vehicle trigger"], the processor 100 activates the application resident on the device 98, which initiates a program code associated with the application that is responsible for disabling a particular feature of the device 98 (such as a text message creation function and text message receiving function)."). The Examiner reasons that it would have been obvious to modify the system of Forstall to transmit GPS data in response to a signal, based on Sumcad's teachings. Thus, we also are not persuaded by Appellants' contentions that the Examiner failed to provide a rational basis for modifying the vehicle system of Forstall based on the teachings of Sumcad. Accordingly, we sustain the Examiner's decision rejecting claim 1 as being unpatentable over Forstall and Sumcad. Claims 2, 3, 5-13, 16, 17, and 21 fall with claim 1. Claims 18 and 2 0 The Examiner indicates that claim 18 is rejected for similar reasons as for claims 1 and 10. The Examiner construes [the limitation] "to disable at least one switch positioned on the OCD with the second GPS data to minimize driver distraction" in claim 18, [as an] intended result . .. [which is] not given patentable weight at least because nothing in the claimed module suggests any data is received from the vehicle communication module. In other words, the claim 9 Appeal2017-007588 Application 13/3 62,202 is directed to a module that transmits GPS data having no effect on an OCD. Id. at 3--4 (underlining omitted and emphasis added). We disagree with this construction of claim 18. In contrast to vehicle system claims 1 and 10, claim 18 recites a method. Claim 18 recites the step of "transmitting the second GPS data to the OCD to provide the location of the OCD instead of the first GPS data and to disable at least one switch positioned on the OCD with the second GPS data to minimize driver distraction." Claim 18 (Claims App. 3--4) (emphasis added). We construe this transmitting step to require the OCD to receive the second GPS data. Consequently, the Examiner has not established that the combination of Forstall and Sumcad meets all limitations recited in claim 18, as required by a proper construction of the transmitting step. Accordingly, we do not sustain the rejection of claim 18, and of claim 20 depending therefrom, as unpatentable over Forstall and Sumcad. Rejections II and III Claims 4, 5, 12, 14 and 21 Appellants rely solely on the dependency of claims 4, 5, 12, 14 and 21 from claim 1 or 10 for patentability. Appeal Br. 8-9. As we sustain the rejection of claims 1 and 10, we sustain the rejections of claims 4, 5, 12, 14 and 21 for the same reasons as those for claims 1 and 10. Claim 20 Claim 20 depends from claim 18 and recites "wherein transmitting the second GPS data to the OCD further comprises transmitting the second GPS data to the OCD to disable the internal GPS." Appeal Br. (Claims App. 4). The Examiner finds that External GPS discloses that when the internal GPS 10 Appeal2017-007588 Application 13/3 62,202 of an OCD is not utilized, power consumption of the OCD is reduced. Final Act. 8 (citing External GPS p. 2, item 4). The Examiner concludes that it would have been obvious to modify the method of Forstall and Sumcad by restricting operation of the internal GPS of the OCD, as taught by External GPS, to reduce power consumption of the GPS. Id. However, as discussed above for claim 18, the Examiner does not establish that the combination of Forstall and Sumcad discloses the recited "transmitting" step. The Examiner's application of External GPS does not cure the deficiencies ofForstall and Sumcad with respect to claim 18. Thus, we do not sustain the rejection of claim 20 as unpatentable over Forstall, Sumcad, and External GPS for the same reasons as for claim 18. DECISION We enter a new ground of rejection of claims 1-14, 16, 17, and 21 under 35 U.S.C. § 112, first paragraph, for failure to comply with the enablement requirement. We affirm the rejection of claims 1-3, 5-13, 16, 17, and 21, and reverse the rejection of claims 18 and 20, under 35 U.S.C. § 103(a) as unpatentable over Forstall and Sumcad. We affirm the rejection of claims 4 and 14 under 35 U.S.C. § 103(a) as unpatentable over Forstall, Sumcad, and Lachinski. We affirm the rejection of claims 5, 12, and 21, and reverse the rejection of claim 21, under 35 U.S.C. § 103(a) as unpatentable over Forstall, Sumcad, and External GPS. 11 Appeal2017-007588 Application 13/3 62,202 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50 (b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50 (b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. 12 Appeal2017-007588 Application 13/3 62,202 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; 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation