Ex Parte Oesterling et al

Patent Trial and Appeal Board

Mar 8, 2016

11276896 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111276,896 03/17/2006
60770 7590 03/08/2016
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
FIRST NAMED INVENTOR
Christopher L Oesterling
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.
GP-307712-0ST-ALS 3938
EXAMINER
TAPP, AMELIA L
ART UNIT PAPER NUMBER
2144
MAILDATE DELIVERY MODE
03/08/2016 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 CHRISTOPHER OESTERLING and JEFFREY STEP AN
Appeal2014-004766
Application 11/276,896
Technology Center 2100
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
twice rejecting claims 1-18 and 20, all the claims pending in the application.
Claim 19 is canceled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The present invention relates generally to "vehicle navigation
systems," and specifically towards "vehicle navigation systems that allow a
vehicle occupant to record an annotation or other personalized information
Appeal2014-004766
Application 11/27 6,896
and correlate that information to the location where it was recorded." Spec.
iT 1.
Claim 1 is illustrative:
1. A method for capturing annotations provided by a
vehicle occupant and making them available for later playback,
comprising the steps:
(a) recording an annotation that pertains to a selected
location;
(b) generating a location tag that indicates the position of
the selected location with a vehicle navigation system;
( c) saving the annotation and the location tag, and;
( d) automatically playing back the annotation only if the
same vehicle navigation system determines that the selected location
is encountered again, wherein the method makes annotations available
for later playback without wirelessly exchanging the annotations
directly with other vehicles.
Appellants appeal the following rejections:
RI. Claims 1---6 and 8-12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Marmasse et al., ;;Location-Aware Information
Delivery with ComMotion," HUC 2000, LNCS 1927, pp. 157-171, 2000
copyright to Springer-Verlag Berlin Heidelberg ("ComMotion").
R2. Claims 7, 14--18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over ComMotion in view of Newell et al.
(U.S. Patent No. 6,895,238, May 17, 2005).
R3. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over ComMotion in view of Pace, II (U.S. Patent No.,
5,712,899, Jan. 27, 1998).
2
Appeal2014-004766
Application 11/27 6,896
Claim Groupings
Based on Appellants' arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 15, as set forth below. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
Rejection under§ 103(a) over ComMotion
Issue 1: Did the Examiner err in finding ComMotion teaches or
suggests "recording an annotation that pertains to a selected location" and
"automatically playing back the annotation only if the same vehicle
navigation system determines that the selected location is encountered
again," as set forth in claim 1?
Appellants contend "ComMotion plays an audio file when the user
selects it - not when a location is encountered ... But the recorded audio
message in CommMotion is not automatically played - based on location"
App. Br. 7; see also Reply Br. 2-3.
In response, the Examiner finds that "ComMotion teaches recording
an annotation for a location as an audio file, playing an auditory cue when
the user is in the relevant location, and providing a visual and speech
interface where the user can hear and scan the audio items from the to-do
list." Ans. 17. We agree with the Examiner.
For example, ComMotion, as cited by the Examiner, describes a "to-
do list is associated with each defined virtual location" and when "the user
is in the relevant location, he will hear an auditory cue ("psst") indicating
that he has items on the associated to-do list and the visual interface will be
displayed." ComMotion 164 (emphasis added). In other words,
3
Appeal2014-004766
Application 11/27 6,896
Comivfotion teaches creating a to-do list associated with a location and
automatically displaying the to-do list in a visual interface when in the
associated location.
Appellants' do not provide persuasive evidence that "recording an
annotation," as recited in claim 1, requires saving audio messages. See App.
Br. 7-8. Appellants' Specification describes the recorded annotations as
including "non-verbal electronic comments inputted by the vehicle
occupant" using "a graphical user interface (GUI) and some type of
electronic input device such as a touch-screen, keyboard, mouse, or a
connection for communicating with a laptop, PDA or cell phone." Spec. i-f
22. In other words, Appellants' Specification describes the recording of
annotations to include saving non-verbal comments that are entered through
a GUI using a touch-screen. Thus, we agree with the Examiner's finding
that ComMotion's creation of a do-to list associated with a location teaches
or suggests recording an annotation that pertains to a selected location, and
that ComMotion' s automatically displaying the to-do list in a visual
interface when in the association location teaches or suggests automatically
playing back the annotation when the location is encountered again, as
required by claim 1.
Furthermore, we note under the broadest reasonable interpretation the
claimed step of "automatically playing back the annotation" is contingent
upon "only if the same vehicle navigation system determines that the
selected location is encountered again" (see claim 1 ). If this condition is not
satisfied, the performance of "automatically playing back the annotation"
never needs to be carried out. Conditional steps employed in a method
claim need not be found in the prior art if, under the broadest scenario, the
4
Appeal2014-004766
Application 11/27 6,896
method need not invoke the steps. See Ex parte Katz, 2011 WL 514314, 4
(BPAI 2011) (citing Jn re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). Based on such interpretation, we note that although the
Examiner finds, and we agree, that ComMotion teaches the argued
limitation, the Examiner is not required to find the disclosure of a step that
depends on a conditional step that may never happen.
For at least these reasons, we are unpersuaded the Examiner erred.
Issue 2: Did the Examiner err in finding ComMotion teaches or
suggests the "predetermined proximity regarding the selected location is
affected by the speed at which the vehicle is being driven," as set forth in
claim 9?
Appellants contend "ComMotion is silent with regard to the speed of
vehicles having GPS-based vehicle navigation systems affecting the
predetermined proximity of the selected location" and ComMotion's
teachings are "unrelated to the speed at which the vehicle is driven." App.
Br. 10, Reply Br. 7. Appellants argue "ComMotion is silent with respect to
proximity of the GPS receiver as it relates to speed." Reply Br. 7 (emphasis
added).
In response, the Examiner finds that "ComMotion detects whether the
vehicle is moving or stationary, as well as detecting the GPS location
signals." Ans. 22. We agree with the Examiner.
For example, ComMotion describes "location-aware applications"
requiring "accuracy and reliability of available location," including both
using GPS signal data and analyzing the data "for stationary points."
ComMotion 160-62. In other words, ComMotion teaches location
5
Appeal2014-004766
Application 11/27 6,896
awareness by evaluating whether a vehicle is stationary and using its GPS
data. We note that a stationary vehicle is not moving, or moves at a speed of
zero, and a non-stationary moving vehicle moves at a speed above zero.
Thus, we agree with the Examiner's finding that ComMotion's analysis of
GPS data and whether a vehicle is stationary for location awareness teaches
or suggests the claimed predetermined proximity regarding the selected
location is affected by the speed at which the vehicle is being driven.
For at least these reasons, we do not find, and Appellants have not
established, the Examiner erred.
In view of the above discussion, since Appellant has not demonstrated
that the cited art fails to teach or suggest the argued limitations, the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1, as well as
the rejection of dependent claims 2---6 and 8-12, not separately argued (App.
Br. 10), is sustained.
Rejection under§ 103(a) over ComMotion and Newell
Issue: Did the Examiner err in finding the combination of
ComMotion and Newell teaches or suggests "using a microphone in the
vehicle to record a verbal annotation that pertains to a selected location" and
"automatically playing back the incorporated annotation over a speaker in
the vehicle when the GPS-based vehicle navigation system is executing the
automated route and determines that it is within a predetermined proximity
of the selected location along the automated route," as set forth in claim 15?
Appellants argue ComMotion' s "auditory cue is not recorded using a
microphone in a vehicle and is not incorporated into an automated route,"
6
Appeal2014-004766
Application 11/27 6,896
and Newell's provided user information "is not recorded as a verbal
annotation that pertains to a selected location using a microphone in the
vehicle." App. Br. 11-12; Reply. Br. 8-9. Appellants further contend
"ComMotion does not automatically play recorded verbal annotations and
neither does Newell." App. Br. 11.
In response, the Examiner finds ComMotion teaches "hardware for
performing the claimed steps using a microphone in the vehicle and a
speaker in the vehicle." Ans. 23-23. The Examiner further finds Newell
teaches "a vehicle navigation device having an automated route that
provides a predetermined route such as a tour and directions," a vehicle
navigation system that plays annotations, and "an entertainment console for
use in a vehicle navigation system, with GPS coordinates" using a speaker
and a microphone. Ans. 25. We agree with the Examiner.
Appellants' contentions fail to take into account what the collective
teachings of ComMotion and Newell would have suggested to one of
ordinary skill in the art and are therefore ineffective to rebut the Examiner's
prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) ("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." (citations omitted)). This reasoning is applicable here because
the Examiner used the combined teachings of ComMotion and Newell in the
rejection of claim 15.
7
Appeal2014-004766
Application 11/27 6,896
For example, Comivfotion, as cited by the Examiner, describes "both
speech and graphical user interfaces" (ComMotion 159). ComMotion
describes a "to-do list is associated with each defined virtual location" and
when "the user is in the relevant location, he will hear an auditory cue
("psst") indicating that he has items on the associated to-do list and the
visual interface will be displayed." ComMotion 164 (emphasis added).
ComMotion further describes "items can either be text, typed in using the
graphical interface, or recorded audio" that "can be recorded using either a
visual interface or through speech commands," and "recorded audio items ...
appear as a button in the list." Id.. Newell describes an entertainment
device as part of a system that obtains GPS coordinates, selects routes, and
includes a microphone that "allows for voice recognition commands to be
given and received by the multimedia device." Newell col. 3 11. 50-65, col.
4 11. 23-36, col. 5 11. 29--40.
In other words, ComMotion teaches creating a to-do list associated
with a location, by recording audio from the user, and automatically
displaying the to-do list and the button to play the recorded audio when in
the associated location, and Newell teaches providing for entertainment and
voice commands while on a route. Thus, we agree with the Examiner's
finding that ComMotion' s creation of a to-do list associated with a location
by recording audio from a user, with Newell's microphone-recorded voice
recognition commands, teaches or suggests the claimed using a microphone
in the vehicle to record a verbal annotation that pertains to a selected
location. We further agree with the Examiner's finding that ComMotion's
automatically displaying the to-do list and the button to play that audio when
in the associated location, with Newell's providing for entertainment and
8
Appeal2014-004766
Application 11/27 6,896
voice commands while on a route, teaches or suggests the claimed playing
back the incorporated annotation over a speaker in the vehicle when the
GPS-based vehicle navigation system is executing the automated route and
determines that it is within a predetermined proximity of the selected
location along the automated route.
Furthermore, even if we assume arguendo that neither ComMotion
nor Newell teaches or suggests automatically playing recorded verbal
annotations, we emphasize that a claimed invention is not patentable if it
merely automates a manual prior art process. Broadly providing an
automatic way to replace a manual activity accomplishing the same result is
not sufficient to distinguish an automated process over the prior art. In re
Venner, 262 F .2d 91, 95 (CCP A 1958). Here, automating playing back the
recorded annotation accomplishes the same result as providing a manual
button to play back the recorded annotation as taught in ComMotion.
In view of the above discussion, since Appellants have not
demonstrated that the cited art fails to teach or suggest the argued
limitations, the Examiner's 35 U.S.C. § 103(a) rejection of independent
claim 15, as well as the rejection of commensurate independent claim 20,
not separately argued (App. Br. 12-13), and dependent claims 7, 14, 16---18,
also not separately argued (App. Br. 12, 11 ), is sustained.
Rejection under§ 103(a) over ComMotion and Pace
Appellants have provided no separate arguments towards patentability
for claim 13 (App. Br. 13). Therefore, the Examiner's 35 U.S.C. § 103(a)
rejection of dependent claim 13 is sustained.
9
Appeal2014-004766
Application 11/27 6,896
DECISION
We affirm the Examiner's§ 103(a) rejections Rl-R3.
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
10