Ex Parte Rutledge

Board of Patent Appeals and Interferences

Oct 28, 2008

10789534 (B.P.A.I. Oct. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK RUTLEDGE
____________

Appeal 2008-4193
Application 10/789,534
Technology Center 2600
____________

Decided: October 28, 2008
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and KARL D.
EASTHOM, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 3, 8, 10, 14, 16, 21, 23, and 27-38. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2008-4193
Application 10/789,534

STATEMENT OF THE CASE
Appellant invented a mobile alarm system comprising a central alarm
controller and a separate indicator component fixably located within a
passenger vehicle. The component communicates wirelessly with the
controller and performs an alarm indication function based on signals
received from the controller.1 Claim 8 is illustrative:
8. An alarm system fixably located within a passenger vehicle, the
system comprising:

an alarm controller fixably located within the passenger vehicle
operable to enable wireless data communications; and

an alarm component fixably located within the passenger vehicle
operable to enable wireless data communications with the alarm controller,
the alarm component including a processor operable to perform an audible
alarm indication function based upon signals received from the alarm
controller and also when a signal has not been received from the alarm
controller for a predetermined time interval.

The Examiner relies on the following prior art references to show
unpatentability:
Hwang US 5,739,749 Apr. 14, 1998
Camhi US 5,825,283 Oct. 20, 1998
Curatolo US 6,510,380 B1 Jan. 21, 2003
Khan US 6,789,928 B2 Sep. 14, 2004
(filed Nov. 13, 2001)
Appellant’s discussion of the admitted prior art in Paragraph 002 of the
Specification (“APA”).

1 See generally Spec. ¶¶ 004-09.
2
Appeal 2008-4193
Application 10/789,534

1. Claims 1, 3, 8, 10, 14, 16, 21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over APA, Khan, and Curatolo (Ans. 4-7).
2. Claims 27-34 and 38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over APA, Khan, Curatolo, and Camhi (Ans. 7-8).
3. Claims 35-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over APA, Khan, Curatolo, and Hwang (Ans. 8).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE REJECTION OVER APA, KHAN, AND CURATOLO
We first consider the Examiner’s obviousness rejection of claims 1, 3,
8, 10, 14, 16, 21, and 23 over APA, Khan, and Curatolo. Regarding
representative independent claim 8,3 Appellant argues that there is no
reasonable expectation of success in combining the cited references since the
signal in Curatolo is sent to the GPS system to obtain geographical location

2 Throughout this opinion, we refer to (1) the Appeal Brief filed Nov. 21,
2006; (2) the Examiner’s Answer mailed Dec. 11, 2007; and (3) the Reply
Brief filed Feb. 8, 2008.
3 Appellant argues independent claims 1, 8, 14, and 21 together as a group.
See App. Br. 6-13. In contrast to the Appeal Brief, Appellant argues claim 8
separately from the other independent claims in the Reply Brief (Reply Br.
5-11), but nonetheless indicates that these arguments apply to the other
independent claims (Reply Br. 11-12). Accordingly, we select claim 8 as
representative of this claim grouping. See 37 C.F.R. § 41.37(c)(1)(vii).
3
Appeal 2008-4193
Application 10/789,534

data, and not to perform an audible alarm indication function (App. Br. 7-8).
Appellant adds that Curatolo’s signalling units are small and can be worn or
attached to individuals. These types of signalling units, Appellant contends,
cannot be rationally considered to encompass the form of an engine control
module or vehicle horn as in Khan (App. Br. 8-9).
Appellant further argues that the cited references fail to provide a
proper motivation to combine their teachings. Although Appellant
acknowledges that Curatolo teaches that multiple signalling units can be
placed in a motor vehicle, Appellant nonetheless contends that Curatolo does
not teach or suggest combining the signalling units with a vehicular alarm
system or its components since, among other things, Curatolo is limited to
transmitting geographical location information (App. Br. 9-10). Appellant
adds that since the distance between Curatolo’s signalling units is a
necessary and critical factor in sending a signal to the GPS, these signalling
units cannot be fixably located within the same material asset, and yet retain
this signalling functionality based on their mutual separation. As such,
Appellant contends, Curatolo actually teaches away from fixably attaching
the signalling units (App. Br. 11; Reply Br. 10-11). Furthermore, Appellant
argues that Khan and Curatolo constitute non-analogous art (App. Br. 12).
The Examiner notes that Khan was cited merely to show that wireless
communication between vehicles was known and that ordinarily skilled
artisans could apply such a teaching to the APA system to provide a wireless
system (Ans. 9, 11). The Examiner adds that Curatolo was cited merely to
show that it is known to indicate an emergency situation responsive to an
absence of periodic signals between two signalling devices (Ans. 10, 12).
4
Appeal 2008-4193
Application 10/789,534

The Examiner further notes that Curatolo’s signalling devices can be placed
in various components of a material asset, including a vehicle (Ans. 11, 13).

ISSUE
The principal issue before us, then, is whether Appellant has shown
that the Examiner erred in combining the teachings of APA, Khan, and
Curatolo to arrive at the invention of representative claim 8. The issue turns
on whether the references are reasonably combinable and whether there
would have been a reasonable expectation of success for such a
combination. For the following reasons, we find that Appellant has not
shown such error.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
APA
1. The Specification notes that conventional mobile alarm systems
commonly employ (1) a central alarm controller, and (2) at least one
component that can be physically separate from the central alarm controller
(Spec. ¶ 002).
2. According to the Specification, automobile alarm systems typically
locate the central alarm system in a passenger compartment, and the alarm
indicator (e.g., a siren) in an engine compartment (Id.).
3. The Specification indicates that the central alarm controller
typically communicates with components (e.g., the alarm indicator) via one
5
Appeal 2008-4193
Application 10/789,534

or more wires (Id.). The Specification also states that such wire runs are
“difficult, tedious, or nearly impossible, to run.” (Id.).
Khan
4. Khan discloses a device for illuminating a vehicle wheel in
conjunction with a vehicle’s turn signals, hazard lights, alarm systems, etc.
(Khan, Abstract).
5. Khan’s device “provides additional warning lights that flash in
conjunction with an alarm signal from an electronic anti-theft alarm device”
(e.g., activating the vehicle’s horn, headlights, etc.). Integrating Khan’s
device with these alarm functions provides enhanced conspicuity and
warning in alarm situations (Khan, col. 6, ll. 33-39).
6. As shown in Figures 1 and 4, an array of lights 21 is mounted on
each wheel, and an electronic control module 50 regulates and directs
electrical power to the appropriate circuits within emitter body 20 to achieve
the desired wheel light function. Electrical power is delivered to the lights
via electrical wiring 60, carbon brushes 40, electrical tracks 31 on rotor 30,
and lead wires 61, 62 (Khan, col. 7, ll. 25-44, col. 8, ll. 59-63; col. 8, ll. 28-
36; Figs. 1, 4, and 5).
7. Khan’s electrical power distribution function is responsive to
signals from sensors 80-83 such that the appropriate wheel light functions
are concurrent with activation of the vehicle’s hazard lights, brake lights,
and theft alarm (Khan, col. 8, ll. 31-51; Fig. 4).
8. Khan indicates that a wireless connection (e.g., using RF
transmission technology) could be used in lieu of electrical wiring 60 to
control the lights on the emitter body (Khan, col. 8, ll. 54-58; col. 5, ll. 9-
23).
6
Appeal 2008-4193
Application 10/789,534

9. Khan notes that a non-physical connection/wireless transmission of
electrical power can be used in lieu of carbon brushes 40 (Khan, col. 9, ll. 1-
7).
Curatolo
10. Curatolo discloses a security and tracking system with two
signalling units 10, 20 in communicating proximity with each other. When
the two units are separated by more than a preselected distance, the location
of the signalling units is automatically transmitted to a monitoring station 30
(Curatolo, Abstract, col. 2, ll. 21-33; col. 6, ll. 13-24; Fig. 1).
11. To this end, the first signalling unit sends a periodic radio signal
to the second signalling unit. When the second signalling unit no longer
receives this periodic signal, each signalling unit obtains its location from
the GPS system and forwards this information to the monitoring station
(Curatolo, col. 3, ll. 5-16; col. 9, ll. 28-43; col. 10, ll. 9-30).
Camhi
12. Camhi discloses an apparatus for monitoring subjects (e.g.,
automobiles, persons, etc.) based on their location. The apparatus includes a
processor 12 and location determining means 14. Processor inputs may also
be coupled to other systems, equipment, or sensors to (1) monitor
operational variables or outputs of the coupled devices indicative of safety or
security concerns, and (2) actuate the coupled devices (Camhi, Abstract; col.
12, ll. 40-50; Fig. 1).
13. One such actuated coupled device is an alarm (Camhi, col. 16, ll.
33-40).
14. The processor is coupled to a display means 24 via display line 26
which can be a wireless link (Camhi, col. 13, ll. 10-12, 28-38; Fig. 1). The
7
Appeal 2008-4193
Application 10/789,534

display means can include audible indicators such as horns and buzzers
(Camhi, col. 13, ll. 28-33).
15. In one embodiment, the processor is connected to sensors 28 and
output devices 34 via an I/O signal interface 30 and respective I/O lines 32
(Camhi, col. 15, ll. 50-64; Fig. 2).
16. Camhi lists a variety of diverse vehicular functions and systems
that correspond to the systems, equipment, sensors 28, or output devices 34
that are coupled to the processor (Camhi, col. 16, l. 47 - col. 17, l. 27).
17. Should a monitored parameter fall outside its normal operational
value or other predefined value, then an appropriate indication via display
means 24 will be energized via display line 26 (Camhi, col. 17, ll. 29-35).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
8
Appeal 2008-4193
Application 10/789,534

devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. Such a showing requires some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. Id. at 1741 (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
We find no error in the Examiner’s combining the respective
teachings of the cited prior art to arrive at the claimed invention. As the
Examiner indicates, APA effectively discloses every recited feature except
for (1) the alarm controller’s wireless communication capability, and (2) the
alarm component operable to perform an audible alarm indication function
9
Appeal 2008-4193
Application 10/789,534

based on when a signal has not been received for a predetermined time
interval. We address these differences in turn.
First, we agree with the Examiner that providing a wireless
communication capability for the recited alarm controller in lieu of
communicating via wires would have been an obvious improvement in view
of the cited prior art in light of the knowledge of ordinarily skilled artisans.
As the Specification indicates, central alarm controllers in vehicles are
typically located in the passenger compartment, and the alarm indicator
(e.g., a siren) is located in the engine compartment (FF 2). And, as the
Specification explains, communication between these devices is typically via
one or more wires (FF 3). The Specification also states that such wire runs
are “difficult, tedious, or nearly impossible, to run.” (FF 3).
In our view, merely replacing these wired connections with a wireless
communication capability would have been tantamount to the predictable
use of prior art elements according to their established functions—an
obvious improvement. See KSR, 127 S. Ct. at 1740. Additionally, adapting
the conventional wire-based connectivity in vehicular alarm systems with a
wireless communication capability to gain the commonly understood
benefits of such an adaptation (i.e., no need for point-to-point wiring, ease of
installation, etc.) is commensurate with the adaptation of an old device using
newer technology found to be unpatentable in Leapfrog Enter., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (holding that
“adaptation of an old idea or invention…using newer technology that is
commonly available and understood in the art” (i.e., updating a children’s
toy with modern electronic components to gain the commonly understood
10
Appeal 2008-4193
Application 10/789,534

benefits of such adaptation) would have been obvious to ordinarily skilled
artisans).
In any event, we also find no error in the Examiner’s reliance on Khan
for teaching wireless communication between vehicular components and a
controller. Khan discloses a device for illuminating a vehicle wheel that
operates in conjunction with an existing vehicle alarm system to enhance the
warning and conspicuity in alarm situations (FF 4-5). As shown in Figures 1
and 4, an array of lights 21 is mounted on each wheel and receive electrical
power via electrical wiring 60, carbon brushes 40, electrical tracks 31 on
rotor 30, and lead wires 61, 62 (FF 6).
In Khan, an electronic control module 50 regulates and directs
electrical power to the appropriate circuits within the emitter body 20 to
achieve the desired wheel light function (Id.). Specifically, this electrical
power distribution function is responsive to signals from sensors 80-83 such
that the appropriate wheel light functions are concurrent with activation of
the vehicle’s hazard lights, brake lights, and theft alarm (FF 7).
Notably, Khan indicates that a wireless connection (e.g., using RF
transmission technology) could be used in lieu of electrical wiring 60 to
control the lights on the emitter body (FF 8). Likewise, Khan notes that a
non-physical connection/wireless transmission of electrical power can be
used in lieu of carbon brushes 40 (FF 9).
Based on these teachings, we find no error in the Examiner’s position
that wireless communications could be used in lieu of the conventional
wired connection in the conventional vehicular alarm system. Significantly,
Khan not only teaches that the electrical wiring disposed between the control
module and the brushes could be replaced with a wireless connection, but
11
Appeal 2008-4193
Application 10/789,534

also the carbon brushes themselves could be replaced with wireless
functionality for electrical power transfer. Ordinarily skilled artisans, in our
view, would therefore have ample reason to utilize wireless transmission in
the admitted prior art alarm system in lieu of wires. We note that Khan is
reasonably combinable with APA since Khan also pertains to vehicle alarm
systems insofar as it provides an enhanced visual indication in conjunction
with an audible alarm (i.e., the horn) (FF 5).
Appellants’ arguments pertaining to Khan’s wireless power
transmission as being allegedly unsuitable for energizing an audible alarm
(Reply Br. 6-7) are unavailing. Not only do we find these arguments
speculative, they are not germane to the reason why the Examiner cited the
reference. Khan was cited merely to show that it is known in the art to
transmit signals wirelessly from a controller to an indicator in a vehicle in
conjunction with an alarm system (Ans. 9, 11). Although this transmission
is to visually indicate an alarm condition on the wheels when such a
condition is detected, this alarm condition—like the APA system—involves
an audible alarm (FF 5).
As such, we see no reason why Khan’s fundamental teaching of using
wireless transmission could not be applied to the APA audible alarm system,
particularly in view of the well-known advantages of wireless systems over
wired systems as noted above. In our view, Khan provides ample reason for
skilled artisans to wirelessly transmit signals between the vehicular alarm
controller and the associated component (i.e., an audible indicator) in the
APA system instead of using wires for such transmission.
While the Examiner’s reliance on Curatolo is a closer question, we
nonetheless find a sufficiently rational basis for combining its teachings with
12
Appeal 2008-4193
Application 10/789,534

APA and Khan. Curatolo discloses a security and tracking system with two
signalling units 10, 20 in communicating proximity with each other. When
the two units are separated by more than a preselected distance, the location
of the signalling units is automatically transmitted to a monitoring station 30
(FF 10). To this end, the first signalling unit sends a periodic radio signal to
the second signalling unit. When the second signalling unit no longer
receives this periodic signal, each signalling unit obtains its location from
the GPS system and forwards this information to the monitoring station (FF
11).
Based on this functionality, we find no error in the Examiner’s
position that Curatolo reasonably teaches indicating an alarm condition
when a signal has not been received for a predetermined interval. Although
Curatolo teaches that this alarm condition is based on a particular degree of
separation between the two signalling units, this separation is nonetheless
determined by the second signalling unit’s inability to receive a periodic
signal (i.e., for at least a time interval dictated by the periodicity of the
signal). As the distance between the signalling units gets larger, the
attenuation of the transmitted periodic signal likewise would increase. At
some point, this attenuation would result in the second signalling unit’s
inability to receive the signal, at least for a period. That Curatolo pertains to
a tracking system involving the transfer of location information does not
detract from the fact that the reference nonetheless teaches detecting an
emergency (alarm) condition based on the inability to receive a transmitted
periodic signal. That fundamental teaching is at least reasonably pertinent to
wireless alarm systems generally, including those in vehicles.
13
Appeal 2008-4193
Application 10/789,534

We recognize that representative claim 8 calls for the alarm controller
and alarm component to be fixably located within the vehicle. We further
recognize that Curatolo triggers the emergency condition based on the
physical separation of the signalling devices. Notwithstanding these
apparent contradictory physical characteristics, however, Curatolo does not
teach away from the recited feature.
In our view, skilled artisans would recognize that triggering an alarm
condition upon not receiving a signal for a predetermined time interval as
suggested in Curatolo would be a beneficial improvement to the APA/Khan
system—even if the alarm controller and components were fixedly mounted
in a vehicle. Triggering an alarm indication in this condition could indicate,
among other things, a malfunction or incorrect installation of the alarm
controller with respect to the associated component (e.g., spaced too far
apart from the component for effective wireless communication), or even its
unauthorized removal. In these situations, the detected degree of separation
of the devices could be a basis for triggering this alarm condition
notwithstanding the devices’ fixed location in the vehicle.
Thus, we find no error in the Examiner’s combining the teachings of
Curatolo with the vehicular alarm system of other prior art references to
arrive at the claimed invention. That Curatalo teaches placing the signalling
units in various components of a vehicle or in the vehicle itself (Curatolo,
col. 5, ll. 40-46), and involves the transmission of audio signals (Curatolo,
col. 5, ll. 49-53) only bolsters our conclusion.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 8. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 1, 14, and 21
14
Appeal 2008-4193
Application 10/789,534

which fall with claim 8. For the same reasons, we will also sustain the
Examiner’s rejection of claims 3, 10, 16, and 23 which were not separately
argued with particularity (App. Br. 13).

THE REJECTION OVER APA, KHAN, CURATOLO, AND CAMHI
We now consider the Examiner’s obviousness rejection of claims 27-
34 and 38 over APA, Khan, Curatolo, and Camhi. At the outset, we note
that Appellant argued claims 27-34 and 38 together as a group in the Appeal
Brief (App. Br. 13-15). Notably, Appellant’s arguments in the Appeal Brief
were limited to the following principal arguments: (1) there is no motivation
or suggestion to combine the teachings of Camhi with the other cited prior
art since Camhi discloses a tracking or monitoring device, not an alarm
system or component as claimed, and (2) Camhi teaches away from
combining with Khan to provide an audible alarm indication function (Id.).
But in the Reply Brief, Appellant makes several new arguments that
were not raised in the Appeal Brief, namely that (1) the detector in Camhi is
not connected to the means for performing an alarm indication function, and
(2) Camhi’s apparatus does not correspond to the means for performing an
audible alarm indication function as the term is interpreted under § 112,
sixth paragraph (Reply Br. 13). Also, for the first time in the Reply Brief,
Appellant separately argues the patentability of dependent claims 30, 33, and
38 (Reply Br. 14-18). These arguments were also not presented in the
Appeal Brief.
By not timely presenting these arguments in the Appeal Brief, they are
deemed waived. See Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d
978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
15
Appeal 2008-4193
Application 10/789,534

opening brief ... is waived.”) (citations and quotation marks omitted).4
While we recognize that the U.S. Supreme Court rendered the KSR opinion
after the Appeal Brief was filed, and the Reply Brief was intended to
“supplement” the Appeal Brief in view of this decision (Reply Br. 2), the
new arguments presented in the Reply Brief go well beyond merely
supplementing the Appeal Brief in light of the holding in KSR. In short, we
see no reason why these new arguments could not have been presented in the
Appeal Brief.
Accordingly, we address only those arguments presented in the
Appeal Brief pertaining to claims 27-34 and 38, and those arguments in the
Reply Brief to the extent they are commensurate with the arguments in the
Appeal Brief. Since Appellant argued these claims together as a group in
the Appeal Brief (App. Br. 13-15), we therefore select claim 27 as
representative of this grouping.
The issue before us, then, is whether Appellant has shown that the
Examiner erred in combining Camhi with the other cited prior art to arrive at
the invention of claim 27. The issue turns on whether there is a reason to
combine Camhi with the other cited prior art, and (2) whether Camhi teaches
away from such a combination. For the following reasons, we find that
Appellant has not shown such error.
First, while Camhi pertains to a location monitoring system, it also
operates in conjunction with—and indeed actuates—a vehicle alarm system

4 See also Ex Parte Scholl, No. 2007-3653 (BPAI Mar. 13, 2008)
(Informative), at 18-19, available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (last visited
Sept. 28, 2008) (same).
16
Appeal 2008-4193
Application 10/789,534

(FF 12-13). Further, given the comprehensive list of diverse vehicular
functions and parameters associated with the sensors 28 (FF 16), the
reference at least suggests that these sensors could detect one or more alarm
triggering devices based on these sensed vehicular parameters and
conditions. Although the connection between the sensors and the output
devices 34 is via I/O lines and the processor, the scope and breadth of the
claim language does not preclude such an indirect connection.
Additionally, when a monitored parameter is deemed abnormal,
Camhi’s system indicates this condition via display means 24 (FF 17). This
display means can have audible indication functions that include horns and
buzzers (FF 14). Notably, the connection (i.e., the display line 26) between
the display means and the I/O signal interface of the processor can be a
wireless connection (Id.).
Based on these collective teachings, we find no error in the
Examiner’s reliance on Camhi considered in conjunction with the other cited
prior art to arrive at the invention of claim 27. In our view, the Examiner’s
combination of references is based on articulated reasoning with at least
some rational underpinning to support the legal conclusion of obviousness.
While Camhi does discuss the drawbacks of automobile alarms generally
(Camhi, col. 1, l. 44 - col. 2, l. 16) as Appellant indicates (App. Br. 13-14),
we nonetheless find that the reference as a whole does not discredit or
discourage alarm functionality tantamount to teaching away from such
approaches.5 Rather, as noted above, Camhi provides a location-based

5 “A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
17
Appeal 2008-4193
Application 10/789,534

tracking functionality that can operate in conjunction with vehicle alarms.
As such, we see no error in combining the teachings of Camhi with the
alarm functionality of the other cited prior art.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 27. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 28-34 and 38
which fall with claim 27.

THE REJECTION OVER APA, KHAN, CURATOLO, AND HWANG
Likewise, we will sustain the Examiner's rejection of claims 35-37
under 35 U.S.C. § 103(a) as being unpatentable over the teachings of APA,
Khan, Curatolo, and Hwang. As with the previous rejection, Appellant
presented arguments pertaining to this rejection in the Reply Brief that were
not timely raised in the Appeal Brief. Specifically, Appellant in the Appeal
Brief did not separately argue the Examiner’s rejection of claims 35-37, but
merely referred to the previous arguments pertaining to the independent
claims (App. Br. 15). In the Reply Brief, however, Appellant presented
separate arguments for claims 35 and 36, respectively (Reply Br. 16-17). As
noted above, we see no reason why these arguments could not have been
raised in the Appeal Brief and are therefore deemed to be waived. See
Optivus, 469 F.3d at 989.

set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (citations and internal quotation marks omitted).

18
Appeal 2008-4193
Application 10/789,534

Turning to the rejection, we find that the Examiner has established at
least a prima facie case of obviousness for claims 35-37 that has not been
persuasively rebutted. Once the Examiner has satisfied the burden of
presenting a prima facie case of obviousness, the burden then shifts to
Appellant to present evidence and/or arguments that persuasively rebut the
Examiner's prima facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). In the Appeal Brief, apart from merely referring to previous
arguments, Appellant did not particularly point out errors in the Examiner’s
reasoning to persuasively rebut the Examiner's prima facie case of
obviousness for claims 35-37 based on the collective teachings of the cited
prior art. Therefore, for the above reasons, we will sustain the Examiner’s
rejection of those claims.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims 1,
3, 8, 10, 14, 16, 21, 23, and 27-38 over the collective teachings of the cited
prior art references under § 103.

DECISION
The Examiner’s decision rejecting claims 1, 3, 8, 10, 14, 16, 21, 23,
and 27-38 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

19
Appeal 2008-4193
Application 10/789,534

AFFIRMED

eld

DIRECTED ELECTRONICS, INC.
1 VIPER WAY
VISTA CA 92061
20