Ex Parte Oesterling et al

Patent Trial and Appeal Board

Sep 18, 2015

12164494 (P.T.A.B. Sep. 18, 2015)

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.
12/164,494 06/30/2008 Christopher L. Oesterling P005272-OST-ALS 1446
60770 7590 09/18/2015
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
FANG, PAKEE
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
09/18/2015 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 CHRISTOPHER L. OESTERLING and RICHARD F. HEINES
____________

Appeal 2013-007805
Application 12/164,4941
Technology Center 2600
____________

Before JOHN G. NEW, TERRENCE W. McMILLIN, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, and 16–18. Claims 4–15 and 19–21 are
withdrawn. Final Act. 2. Claim 2 is cancelled. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellants, the real party in interest is General Motors LLC.
App. Br. 2.

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Application 12/164,494

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STATEMENT OF THE CASE
Appellants’ invention relates to inhibiting transmission of location
information outside of a geographic region in which such transmission is
prohibited. Abstract. Claims 1 and 18 are exemplary of the matter on
appeal:
1. A method for inhibiting transmission of location information
by a telematics unit of a vehicle to a call center located in a
different geographic region, the method comprising:
identifying vehicle location;
determining a geo-political boundary that the vehicle is within
based on the vehicle location;
determining if the call center is within the geo-political
boundary; and
inhibiting the transmission of vehicle location information to
the call center if the call center is determined to be outside the geo-
political boundary, wherein the inhibiting step further comprises
determining whether transmission of location information outside of
the geo-political boundary is legally prohibited and, if so, inhibiting
the transmission of vehicle location information from the telematics
unit to the call center.

18. A method as set forth in claim 16, wherein the step of inhibiting
the transmission of the location information includes the step of
replacing the location information with data void of location
information.
App. Br. 10, 13 (Claims Appendix).

REJECTION
Claims 1, 3, and 16–18 stand rejected under 35 U.S.C. § 103(a) over
Oesterling et al. (US Pub. 2005/0096020 A1) in view of Ichimura et al. (US
Pub. 2003/0084119 A1). Ans. 3.
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ANALYSIS
The rejection of claims 1, 3, 16, and 17
Appellants argue the combination of Oesterling and Ichimura does not
teach the claim limitation “determining whether transmission of location
information outside of the geo-political boundary is legally prohibited and, if
so, inhibiting the transmission of vehicle location information from the
telematics unit to the call center.” App. Br. 5; Reply Br. 1–4. According to
Appellants, Oesterling “monitor[s] a vehicle’s current GPS location for a
match with a service center GPS location” and “[t]he boundary of such a
service center has no geo-political attribute and is unrelated to the legal
prohibition of transmissions.” Id. Appellants contend Ichimura’s
geographical regions “have no geo-political attributes and do not teach geo-
political boundaries” nor “determining whether its areas are affected by the
legality of transmitting location information.” Id. at 6.
The Examiner determines a “legally prohibited geo-political
boundary” is “just a region of territory that restricts transmission.” Ans. 3
(citing Spec. ¶¶ 24, 25; Fig.2, step 110). Regarding “legally prohibited,” the
Examiner determines: “Furthermore, if an area allows transmission of
wireless signals within the geographical limits, this can be reasonably
interpreted as an area includes legal wireless transmission; likewise, if an
area prohibits transmission of wireless signals within the geographical
limits, this can be reasonably interpreted as an area includes forbidding legal
wireless transmission.” Ans. 3.
With these interpretations, the Examiner finds Oesterling teaches a
call center located in a different geo-political boundary as different
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Application 12/164,494

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areas/regions include different geo-political boundaries. Final Act. 3 (citing
¶9; See also Figs. 1–5, ¶¶ 180, 190); Ans. 3–4. The Examiner finds
Ichimura’s teaches inhibiting transmission (disabling transmission) of
location information (position information) based on different geo-political
boundaries. Final Act. 4 (citing Figs. 8–14, ¶¶ 96–100); Ans. 4.
We agree with the Examiner’s claim interpretations and findings and
are not persuaded by Appellants’ arguments. The terms “geo-political” and
“legally prohibited” are not defined in the Specification and one of ordinary
skill in the art would not necessarily consider these terms to have the narrow
meanings now asserted by Appellants. Oesterlings’ vehicle location (and
Ichimura’s position location) is not limited to any specific location and
Appellants have not persuaded us the Examiner’s interpretations are
unreasonable. Regarding “legally prohibited,” we are not persuaded
Ichimura’s location information and inhibiting (disabling transmission) do
not meet the term “legally prohibited.” A claim in a patent application is
given the broadest reasonable interpretation consistent with the
Specification, as understood by one of ordinary skill in the art. In re Crish,
393 F.3d at 1256 (Fed. Cir. 2004). Great care should be taken to avoid
reading limitations of the Specification into the claims. E-Pass Techs., Inc.
v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
We are not persuaded by Appellants’ argument of error by the
Examiner finding the terms “call center” and “service center” are used
interchangeably in the art. App. Br. 7 (citing Final Act. 3). According to
Appellants, Oesterling distinguishes these terms, does not teach
“determining if the call center in within a boundary,” and the Examiner
provides no support for such “interchangeability.” App. Br. 7. Instead, we
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agree with the Examiner’s finding one of ordinary skill in the art would
obtain location information of the call center to improve tracking and “it is
common knowledge a service center can be next to the call center in the
same geographic location or a service center can incorporate a call center as
one.” Final Act. 3.
In view of the above, we sustain the rejection of claim 1. Independent
claim 16 recites the same limitation, is argued together with claim 1 and,
therefore, we sustain its rejection. Claims 3, 17, and 18 depend from claims
1 and 16, are not separately argued and, therefore, we sustain the rejection of
these claims.
The rejection of claim 18
We are persuaded of error by Appellants’ argument that the references
do not teach the limitation “the step of inhibiting the transmission of the
location information includes the step of replacing the location information
with data void of location information,” as recited in claim 18. App. Br. 8.
The Examiner finds Ichimura teaches if position information is not
transmittable, the location information will be void from transmitting, thus it
is obvious when position information is not transmittable, then any data
being transmitted will not contain location information. Ans. 5. According
to Appellants, “if location information is not available, Ichimura ends its
method and does nothing. As can be appreciated from Figure 8 of Ichimura,
after it is determined that no position information is transmittable (step 124),
the method ends.” App. Br. 8. See also Reply. Br. 4–5.
We agree with Appellants and, in view of the above, we do not sustain
the rejection of claim 18.
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DECISION
The Examiner’s decision rejecting claims 1, 3, 16, and 17 is affirmed.
The Examiner’s decision rejecting claim 18 is reversed.
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-IN-PART

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