Ex Parte Pothul et al

Patent Trial and Appeal Board

Jun 17, 2016

12586590 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/586,590 0912412009
23405 7590 06/20/2016
HESLIN ROTHENBERG FARLEY & MESITI PC
5 COLUMBIA CIRCLE
ALBANY, NY 12203
Ronald J. Pothul
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.
3642.001 9903
EXAMINER
LIAO, HSINCHUN
ART UNIT PAPER NUMBER
2649
MAILDATE DELIVERY MODE
06/20/2016 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 RONALD J. POTHUL and JOSEPH N. POTHUL
Appeal2015-001807
Application 12/586,590
Technology Center 2600
Before JEAN R. HOMERE, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 4, 14, 17-21, and 24--41, which
represent all of the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
INVENTION
Appellants' invention is directed to using a cell phone to enable and
disable a vehicle. See Spec. i-f 1.
Appeal2015-001807
Application 12/586,590
Claim 18 is representative and is reproduced below:
18. A system for enabling and disabling a vehicle with a
cell phone capable of transmitting and receiving
communication signals, the vehicle being for transporting at
least a vehicle operator, the vehicle having an enabled mode for
permitting starting or motion of the vehicle and a disabled
mode for preventing starting or motion of the vehicle, the
system comprising:
a receiving receptacle secured within the vehicle and
configured for receiving the cell phone therewithin and such
that transmission of communication signals from the cell phone
are prevented whenever the cell phone is received within the
receiving receptacle; and
a vehicle enabling mechanism operably coupled to the
receiving receptacle and including a signal wire for
communication with an engine of the vehicle, the vehicle
enabling mechanism being configured such that placement of
the cell phone within the receiving receptacle activates the
enabled mode of the vehicle, and such that removal of the cell
phone from within the receiving receptacle activates the
disabled mode of the vehicle,
\'I/herein the receiving receptacle is a stand=alone retro= fit
structure configured to secure to the vehicle.
REJECTIONS
The Examiner rejected claims 4, 14, 17-20, 24--29, 31--41under35
U.S.C. § 103(a) as being unpatentable over John (US 7,277,007 B2; Oct. 2,
2007), Brown (US 2008/0268767 Al; Oct. 30, 2008), and McNay (US
61/208,496, provisional application of US 2010/0214083 Al; Aug. 26,
2010). Final Act. 2-7.
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Appeal2015-001807
Application 12/586,590
The Examiner rejected claims 21 and 30 under 35 U.S.C. § 103(a) as
being unpatentable over John, Brown, McNay, and Stoffels (US
2006/0130033 Al; June 15, 2006). Final Act. 7-8.
ISSUE
The dispositive issue presented by Appellants' contentions is:
Did the Examiner err in finding one skilled in the art would have
recognized the combination of John, Brown, and McNay teaches or suggests
"a receiving receptacle secured within the vehicle and configured for
receiving the cell phone therewithin and such that transmission of
communication signals from the cell phone are prevented whenever the cell
phone is received within the receiving receptacle," as recited in claim 18?
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to the Appellants'
arguments. We concur with Appellants' conclusion that the Examiner erred
in finding that the combination of John and Brown teaches or suggests a
"receiving receptacle" "such that transmission of communication signals
from the cell phone are prevented whenever the cell phone is received within
the receiving receptacle," as recited in independent claim 18, or "such that
placement of the cell phone within the receiving receptacle prohibits
transmission of communication signals from the cell phone," as recited in
independent claims 28 and 34.
Appellants argue that John and Brown fail to teach a receiving
receptacle configured for receiving a cell phone and configured such that
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Appeal2015-001807
Application 12/586,590
transmission of communication signals from the cell phone are prevented
"whenever" or "when" the cell phone is received within the receiving
receptacle, as recited in independent claim 18 and independent claims 28
and 34, respectively. Br. 8. In particular, Appellants argue that Brown
teaches producing interference with cell phone signals only when the vehicle
is moving above a defined threshold speed, and not "whenever the cell
phone is received within the receiving receptacle," as recited in claim 18.
Id. at 9.
The Examiner finds that Brown teaches that transmission of
communication signals from the cell phone are prevented inside an
automobile. Ans. 3 (citing Brown, Abstract, Fig. 1 ). The Examiner does not
directly respond to Appellants' arguments about Brown's teaching of
preventing communications in response to movement of a vehicle above a
defined threshold. The Examiner concludes that because John and Brown's
inventions can be applied to automobile-related cell phone applications, the
claim is taught or suggested by the combination of John and Brown. Ans. 3.
In the Final Rejection, the Examiner finds that "[i]t would have been
obvious to a person of ordinary skill in the art at the time of invention to use
Brown's apparatus in John's method for banning cell phone usage inside a
vehicle in order to comply with laws (Brown paragraph 0006)." Final Act.
3. However, the Examiner does not further explain why one of ordinary
skill in the art would be motivated to modify Brown or John in the manner
suggested or what laws would make such a modification obvious.
The Examiner also finds that because the cell phone is completely
enclosed inside John's receptacle, the receptacle shields the cell phone's
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Application 12/586,590
transmission signal and prevents the cell phone from transmitting to the
outside world. Ans. 4. We do not find such a teaching in the cited portions
of John. The Examiner also finds that "Brown's jamming antenna is located
in close proximity [to] John's receptacle," and therefore "Brown's jamming
antenna can further attenuate the transmission signal emitted by John's cell
phone." Ans. 4. However, this does not address Appellants' arguments that
Brown only discloses preventing transmission of signals "in response to
movement of the vehicle 8 above a defined threshold." Brown i-f 30.
We agree with Appellants that the Final Office Action and Answer fall
short of providing articulated reasoning with rational underpinning to
support a conclusion that the subject matter of independent claims 18, 28,
and 34 would have been obvious to one of ordinary skill in the art in view of
what John and Brown would have conveyed to a person of ordinary skill in
the art about preventing transmission of cell phone communication signals
whenever a cell phone is within a receiving receptacle. KSR, 550 U.S. at
418 ("[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.") (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
"[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does. This is so because inventions in most,
if not all, instances rely upon building blocks long since uncovered, and
claimed discoveries almost of necessity will be combinations of what, in
some sense, is already known." Id. at 418-19.
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Application 12/586,590
We agree with Appellants' argument that the Examiner has not shown
how John, Brown, or their combination teaches or suggests a "receiving
receptacle" "such that transmission of communication signals from the cell
phone are prevented whenever the cell phone is received within the
receiving receptacle," as recited in claim 18, or "such that placement of the
cell phone within the receiving receptacle prohibits transmission of
communication signals from the cell phone," as recited in claims 28 and 34.
Accordingly, we do not sustain the rejection of independent claims 18,
28, and 34, or dependent claims 4, 14, 17, 19-21, 24--27, 29-33, and 35--41.
DECISION
We reverse the rejections of claims 4, 14, 17-21, and 24--41.
REVERSED
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