Ex Parte Schondorf et al

Patent Trial and Appeal Board

Dec 20, 2016

12563548 (P.T.A.B. Dec. 20, 2016)

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.
12/563,548 09/21/2009 Steven Yellin Schondorf 81197144 6613
28395 7590 12/22/2016
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER KISWANTO, NICHOLAS
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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 STEVEN YELLIN SCHONDORF, ROBERT BRUCE KLEVE,
JOHN ROBERT VAN WIEMEERSCH, DILIP B. PATEL,
BRIAN BENNIE, and GREGORY SWADLING
Appeal 2014-009202
Application 12/563,548
Technology Center 3600
Before JILL D. HILL, ERIC C. JESCHKE, and GORDON D. KINDER,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven Yellin Schondorf et al. (“Appellants”) seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated January 15, 2014 (“Final Act.”), rejecting claims 1—4,
7—14, and 16-20.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Ford Global Technologies, LLC as the real party
in interest. Br. 2.
Appeal 2014-009202
Application 12/563,548
BACKGROUND
The disclosed subject matter relates to “remotely monitoring a
condition of vehicle components or systems.” Spec. 1,11. 7—9. Claims 1, 14,
and 19 are independent. Claim 1 is reproduced below:
1. A computer-implemented method
comprising:
communicating from a cellular phone to a
cellular communication device arranged in
communication with a vehicle computing system
(VCS);
receiving a vehicle component identifier for
a component from the VCS, including a component
status;
determining a location for servicing or
purchasing the component;
based on the component status, generating
and displaying on the cellular phone a message
including a service or purchase location for, the
vehicle component.
REJECTIONS
1. Claims 1, 3, 4, 7—14, and 16—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Moskowitz (US 6,339,736 Bl, issued Jan. 15,
2002) and Nagy (US 2008/0082221 Al, published Apr. 3, 2008).
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Moskowitz, Nagy, and Spaur (US 5,732,074, issued Mar.
24, 1998).
2
Appeal 2014-009202
Application 12/563,548
DISCUSSION
Rejection 1 — The rejection of claims 1, 3, 4, 7—14,
and 16—20 under 35 U.S.C. § 103(a)
A. Claims 1,3,4, and 7—13
Claim 1 recites, inter alia, (1) “communicating from a cellular phone
to a cellular communication device arranged in communication with a
vehicle computing system (VCS)” and (2) “based on the component status,
generating and displaying on the cellular phone a message including a
service or purchase location for, the vehicle component.” Br., Claims App.
I.2 The Examiner relied on (1) column 3, lines 12 to 15 of Moskowitz as
well as element 170A in Figure 3 to address the “communicating” limitation
and (2) column 3, lines 19 to 33 and column 2, lines 33 to 35 of Moskowitz
to address the “generating and displaying” limitation. See Final Act. 2—3.
Referring to the information in the recited “message” in the
“generating and displaying” limitation, Appellants argue that
there is no reason why this information would be displayed on
the phone in communication with the vehicle computing device
(i.e., the customer’s phone), which would correspond to the
phone imported from Nagy on the basis that a phone is taught in
Moskowitz in col. 3, In. 7 (which is a customer’s phone).
Br. 4—5. Appellants also argue that “the phone disclosed in Moskowitz is a
phone provided as part of an in-vehicle system” and thus, “under the
Examiner’s proposed combination, the phone of Nagy imported into
Moskowitz would be a phone provided to the vehicle system, and thus, a
customer phone.” Id. at 5. According to Appellants, “under the proposed
2 We will refer to these two limitations, respectively, as the
“communicating” limitation and the “generating and displaying” limitation.
3
Appeal 2014-009202
Application 12/563,548
combination, the ‘cellular phone’ [in claim 1] belongs to the customer.” Id.
at 6.
The record here does not support the Examiner’s findings regarding
the “generating and displaying” limitation in light of the findings regarding
the “communicating” limitation. More specifically, these two limitations
require involvement by the same “cellular phone,” but the Examiner has not
identified a single cellular phone in the proposed combination that addresses
the requirements of both limitations. See Br., Claims App. 1 (referring to “a
cellular phone” in the “communicating” limitation and “the cellular phone”
in the “generating and displaying” limitation).
As the “cellular phone” in the “communicating” limitation, the
Examiner relies on telecom device 180A (which may be a cell phone), which
is connected to in-vehicle computing system 170A and which sends signal
200A to service center 300 in Moskowitz. See Moskowitz, Fig. 1; Final Act.
2—3 (citing Moskowitz, col. 3,11. 12—15, Fig. 3 (element 170A)); Ans. 2
(discussing Moskowitz, col. 4,11. 20—23 and telecom device 180A). In the
alternative, the Examiner discusses substituting handheld device 106 from
Nagy (which may be a cell phone) into the location of telecom device 180A
in Moskowitz. See Final Act. 3 (“However, Moskowitz does not explicitly
disclose a cellular phone. Nagy discloses a cellular phone used in
communication with a VCS [0028].”); see also Nagy, Fig. 1. Regardless,
the “cellular phone” relied on to address the “communicating” limitation
would be in the location of telecom device 180A of Moskowitz.
We turn now to the “cellular phone” in the “generating and
displaying” limitation. With certain findings, the Examiner relies on either
(1) a cellular phone substituted for the computer in remote service center
4
Appeal 2014-009202
Application 12/563,548
300 in Moskowitz (see Final Act. 3 (discussing Moskowitz, col. 3,11. 19-33
and stating that “replacing any or all of Moskowitz’[s] computers with
cellular phones is an obvious design choice” (emphasis added)); Ans. 3
(finding that “a display is inherent since there must be an interface to the
human dispatcher” (emphasis added)) or, seemingly, (2) a cellular phone in
mobile service unit 175 (see Final Act. 10 (stating that “the cell phone
defined in the claims may be the cell phone of the service technician, who
would find the address of the service location vital”); Ans. 3 (relying on
Nagy for “giv[ing] further reasons for displaying the location in paragraph
[0014]: ‘The solution will make real-time data access and commands
available to a range of interested parties including . . . tow truck operators
. . . and independent auto servicers.’”). With either possibility, however, the
record does not support the Examiner’s position because the “cellular
phone[s]” identified for the two limitations at issue are not the same
“cellular phone,” as required by claim 1.
With other findings addressing the “generating and displaying”
limitation, the Examiner relies on the same “cellular phone” as relied on for
the “communicating” limitation—i.e., one in the location of telecom device
180A of Moskowitz. See Ans. 4 (stating that “there are myriad reasons for
displaying on the customer’s phone the information generated at the dispatch
location, such as for confirmation that all the information is correct”
(emphasis added)). The Examiner does not, however, identify record
support for the finding that the prior art teaches the specific aspects required
by the “generating and displaying” limitation on a cellular phone at the
relied-upon location. To the extent the Examiner relies on modifying such a
device to provide those aspects (see Ans. 4), the Examiner has not provided
5
Appeal 2014-009202
Application 12/563,548
reasoning with rational underpinning for such a modification. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 3, 4, and 7—13, which depend from claim 1.
B. Claims 14 and 16—20
Independent claim 14 recites a “computer program product”
comprising, inter alia, (1) “instructions for receiving, at a cellular phone,
from a vehicle, over a telecommunications network, a vehicle component
identifier for a vehicle components [sic]” and (2) “instructions for generating
and displaying a message on the cellular phone including an identification
of, and a service or purchase location for, the one or more vehicle
components based on the status identifier.” Br., Claims App. 3.
Independent claim 19 recites a “cellular phone processor” configured to,
inter alia, (1) “receive from a vehicle a vehicle component identifier for a
vehicle component” and (2) “generate and display, on the cellular phone, a
message including an identification of, and a service or purchase location
for, the one or more vehicle components based on the status identifier.” Id.
at 3^4.3
Setting forth the findings for the “receiving” limitations, the Examiner
removed the phrase “at a cellular phone” from the limitation in claim 14, and
cited column 3, lines 7 to 10 and lines 41 to 58 of Moskowitz for both claims
3 We will refer to the first identified limitations in each of claims 14
and 19, collectively, as the “receiving” limitations. We will refer to the
second identified limitations in each of claims 14 and 19, collectively, as the
“message” limitations.
6
Appeal 2014-009202
Application 12/563,548
14 and 19. See Final Act. 6 (claim 14), 8 (claim 19). Setting forth the
findings for the “message” limitations, the Examiner removed the phrases
“on the cellular phone” from each limitation, and cited column 3, lines 19 to
33 and column 2, lines 33 to 35 of Moskowitz for both claims 14 and 19.
See id. For both claims, the Examiner stated that “replacing any or all of
Moskowitz’[s] computers with cellular phones is an obvious design choice.”
See id. at 7 (claim 14), 9 (claim 19). We understand the rejections as relying
on a cellular phone substituted for the computer in remote service center 300
in Moskowitz. See id. at 6—7 (claim 14), 8—9 (claim 19).
Appellants do not specifically argue the patentability of independent
claims 14 and 19 (or their dependent claims), but instead, argue independent
claim 1 and state that “[cjlaims 14 and 19 contain similar limitations and
thus should be allowable for at least similar reasons.” Br. 6. Below, we
address Appellants’ arguments in light of the rejections of claims 14 and 19.
First, Appellants argue that “the mere fact that cellular phones exist
and have displays does not mean that any information usable or suitable for
display on a PC is then obviously also usable and suitable for display on a
cellular phone as well.” Br. 4. We are not apprised of error based on this
argument. As noted by the Examiner, it “is a mere conclusory statement
with no evidence to support the allegation.” Ans. 2. Further, we agree with
the Examiner (id. at 2—3) that, with this argument, Appellants do not address
the full basis of the Examiner’s proposed modification. See Final Act. 6—7
(claim 14), 8—9 (claim 19). To the extent that this argument addresses the
“design choice” aspect of the rejections, Appellants have not asserted or
provided evidence of unexpected results or a difference in function based on
the proposed modification. See In re Kuhle, 526 F.2d 553, 555 (CCPA
7
Appeal 2014-009202
Application 12/563,548
1975) (finding that the use of the claimed feature “would be an obvious
matter of design choice” when it “solves no stated problem” and “presents
no novel or unexpected result” over the disclosed alternatives); see also In re
Rice, 341 F.2d 309, 314 (CCPA 1965) (stating that “Appellants have failed
to show that the change in the [aspects at issue as compared to the prior art]
result in a difference in function or give unexpected results”).
Second, Appellants set forth various arguments as to why, in the
context of Moskowitz, there would have been no need or reason to generate
and display the information in the recited “message[s]” on a cellular phone
in the location of telecom device 180A of Moskowitz. See Br. 4 (second and
third full paragraphs), 5 (arguing that “there is no reason why this
information would be displayed on the phone in communication with the
vehicle computing device (i.e., the customer’s phone)” and that, “[s]ince the
customer has no need to bring the vehicle to a location for service (according
to Moskowitz), there would be no need to display the service location on the
phone, which is part of the vehicle communication system (belonging to the
customer, according to both Moskowitz and Nagy)”).
We are not apprised of error in the rejections of claims 14 and 19
based on these arguments, however, because, as noted above, for the
“cellular phone” recited in these claims, the Examiner relied on a cellular
phone substituted for the computer in remote service center 300 in
Moskowitz. See Final Act. 6—7 (claim 14), 8—9 (claim 19).
Third, Appellants address the Examiner’s reliance on column 3, lines
19 to 33 of Moskowitz. See Br. 4 (bottom paragraph). Appellants argue that
“that portion of Moskowitz doesn’t teach display of any of the claimed
information either” and that “even if the information discussed in that
8
Appeal 2014-009202
Application 12/563,548
section were displayed on a computer (which is not the case in the
teachings), that information includes ‘scheduling services, ordering parts
and dispatching services.’” Id. According to Appellants, “[t]here is no
indication that any of this allegedly displayed information includes ‘a
service or purchase location for, the vehicle component.’” Id. (emphasis
omitted).
As to whether the passage at issue teaches display of information on a
computer, we agree with the Examiner that the passage inherently discloses
the display of information related to “schedul[ing] services, order[ing] parts,
and dispatching] service through the module service unit 175.” Moskowitz,
col. 3,11. 21-23 ;4 see Ans. 3 (finding that “a display is inherent since there
must be an interface to the human dispatcher”). Indeed, the passage at issue
discloses that remote service center 300 “is provided with a computer that
includes ... a service desk 302” and that “service desk 302 schedules
services, orders parts, and dispatches service through the mobile service unit
175.” Moskowitz, col. 3,11. 19-23.
As to the argument regarding the scope of the recited “service or
purchase location” for a vehicle component, we agree with the Examiner
that the term “service . . . location” would include the location of a vehicle
receiving service on a component, and we agree that the Moskowitz system
satisfies the “message” limitations under that construction. See Ans. 3
(stating that “at least the service location for the component is taught by
virtue of the service being dispatched to the vehicle location and any part of
the vehicle needing servicing inherently being a ‘component’”); Moskowitz,
4 We omit boldface from any quotation of Moskowitz.
9
Appeal 2014-009202
Application 12/563,548
col. 3,11. 19—33, col. 2,11. 33—35 (“Additionally, a location coordinate can be
sent to the service center to guide a service provider using a navigational
system to the parked vehicle.”). For the same reasons, we are also not
apprised of error based on the arguments that the recited “service or
purchase location” should be limited to the “location of the service station.”
Br. 5 (third paragraph). See Ans. 4 (stating that “displaying the location of
the service station is not within the bounds of the claimed invention”).
For these reasons, we sustain the rejections of claims 14 and 19.
Because Appellants do not separately argue claims 16—18, which depend
from claim 14, or claim 20, which depends from claim 19 (Br. 6), we also
sustain the rejection of claims 16—18 and 20.
Rejection 2 — The rejection of claim 2 under 35 U.S.C. § 103(a)
Claim 2 depends from claim 1. Br., Claims App. 1. The Examiner’s
added reliance on Spaur does not remedy the deficiencies in the combined
teachings of Moskowitz and Nagy (see supra Rejection 1 § A). Thus, for
the same reasons discussed above, we do not sustain the rejection of claim 2.
DECISION
We AFFIRM the decision to reject claims 14 and 16—20, and we
REVERSE the decision to reject claims 1—4 and 7—13.
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
10