Ex Parte Simon

Patent Trial and Appeal Board

Oct 17, 2012

10984001 (P.T.A.B. Oct. 17, 2012)

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.
10/984,001 11/08/2004 Anthony Luke Simon GP-305884 2068
60770 7590 10/18/2012
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
10/18/2012 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 ANTHONY LUKE SIMON
____________________

Appeal 2011-003532
Application 10/984,001
Technology Center 3600
____________________

Before: BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003532
Application 10/984,001

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
201. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method and system for telematics service.
Claim 2, reproduced below, is illustrative of the claimed subject matter:
2. A method of responding to a vehicle title transfer,
comprising the steps of:
first monitoring vehicle location over a first period of
time lasting weeks and, during the first period of time, detecting
recurrence of vehicle location information that is indicative of a
change in home location for the vehicle;
second monitoring for telematics service usage over a
second period of time and detecting a lack of telematics service
usage over that second period of time;
inferring vehicle title transfer in response to the detecting
steps, wherein the first monitoring, second monitoring and
inferring steps are performed autonomously by the vehicle; and
carrying out an action in response to the inferred vehicle
title transfer.

The Examiner has rejected claims 2, 4, 8, 10, 11 and 17-20 under 35
U.S.C. § 112, second paragraph, as being indefinite; claims 1, 3, 5, 8, 11, 12,
15 and 16 under 35 U.S.C. 103(a) as unpatentable over Hillman (US
6,140,956, iss. Oct. 31, 2000); claims 2, 4, 10, 13, 14 and 17-20 under 35
U.S.C. 103(a) as unpatentable over Hillman and Weber (US 7,042,338 B1,
iss. May 9, 2006); and claims 6, 7 and 9 under 35 U.S.C. 103(a) as
unpatentable over Hillman and PR Newswire, Sirius Satellite Radio, ATX

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 12, 2010) and Reply Brief (“Reply Br.,” filed November
15, 2010), and the Examiner’s Answer (“Ans.,” mailed September 13,
2010).
Appeal 2011-003532
Application 10/984,001

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Technologies Partner to Offer In-Vehicle E-Commerce and Telematics
Services, PR Newswire, 1 (2000) (hereafter “PR Newswire”).

OPINION
Indefiniteness Rejection
We are not persuaded the Examiner erred in asserting that a “method
of responding to a vehicle title transfer,” as recited in independent claim 22,
is indefinite because “no vehicle title transfer has taken place, rather only an
assumption of a vehicle title has taken place. These claims fail to meet the
scope of the preamble since at no point does a vehicle title transfer take
place” (Ans. 3-4, 28-30). The preamble unambiguously recites a “method of
responding to a vehicle title transfer.” However, the body of the claim only
recites an inference of a vehicle title transfer, which Appellant admits does
not require an actual vehicle title transfer (App. Br. 8-9; Reply Br. 2-4).
Accordingly, there is a disconnect between the preamble, which appears to
require an actual vehicle title transfer, and the body of the claim, which does
not. Thus, because one of ordinary skill would be unclear as to whether an
actual vehicle title transfer is required by the claim, we will sustain this
rejection.
For the purposes of the obviousness analysis, we will take a broadest
reasonable construction and construe independent claim 2 as not requiring
an actual vehicle title transfer.

2 We choose independent claim 2 as representative of claims 2, 4, 8, 10, 11
and 17-20. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003532
Application 10/984,001

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Obviousness Rejection of Independent Claim 1
We are not persuaded the Examiner erred in asserting that Hillman
renders obvious independent claim 13 (App. Br. 9-11; Reply Br. 4-5).
Appellant asserts that the Examiner has improperly ignored “inferring
vehicle title transfer,” as recited in independent claim 1, because Hillman
does not make any mention of vehicle title transfer. We agree with and
adopt the Examiner’s findings and rationale concerning this rejection, as set
forth on pages 30-33 of the Answer. The step of inferring is met when any
inference is made in response to the monitoring. The vehicle title transfer
itself is non-functional descriptive material because, as argued by Appellant
with respect to the previous rejection, no actual vehicle title transfer needs to
occur. Thus, replacing the vehicle title transfer with any other inference
would not alter how the claim functions. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms of patentability). Accordingly, any of the inferences disclosed in
Hillman that are a result of location monitoring, such as excessive distance
traveled and geographic boundary violations, are sufficient to satisfy the
inferring step (col. 2, ll. 14-21).

3 In view of Appellant’s claim grouping (App. Br. 9-11), we choose
independent claim 1 as representative of claims 1, 3, 5, 8, 11, 12, 15 and16
See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003532
Application 10/984,001

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Obviousness Rejection of Independent Claim 2
We are not persuaded the Examiner erred in asserting that a
combination of Hillman and Weber renders obvious independent claim 24
(App. Br. 11-12; Reply Br. 5-6). Appellant asserts that the Examiner has
improperly ignored “inferring vehicle title transfer,” as recited in
independent claim 2, because neither Hillman nor Weber mentions vehicle
title transfer. Our above analysis concerning the same aspect recited in
independent claim 1 is applicable here as well.
Appellant also asserts that Weber is non-analogous art, because
“Weber is directed to ‘safety and security devices intended for use by the
elderly, infirm, or physically challenged’” (App. Br. 12), while the claimed
invention is directed to vehicle telematics services. We agree with and adopt
the Examiner’s findings and rationale concerning this rejection, as set forth
on pages 33-34 of the Answer. Both Weber and the claimed invention are
directed to addressing problems associated with monitoring.

Obviousness Rejection of Dependent Claim 6
We are not persuaded the Examiner erred in asserting that a
combination of Hillman and PR Newswire renders obvious dependent claim
65 (App. Br. 13-14; Reply Br. 6-7). Hillman discloses a vehicle 10 (col. 1,
ll. 13-15; Fig. 2). PR Newswire discloses promoting goods and services on
Sirius Radio systems installed in cars (Abstract). Even if Hillman is

4 In view of Appellant’s claim grouping (App. Br. 11-12), we choose
independent claim 2 as representative of claims 2, 4, 10, 13, 14, and 17-20.
See 37 C.F.R. § 41.37(c)(1)(vii).
5 In view of Appellant’s claim grouping (App. Br. 13-14), we choose
dependent claim 6 as representative of claims 6, 7, and 9. See 37 C.F.R. §
41.37(c)(1)(vii).
Appeal 2011-003532
Application 10/984,001

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“directed to automobiles in which individuals who operate them become
lost, involved in accidents, and victims of crime” (App. Br. 13), as asserted
by Appellant, Hillman is still a vehicle, and so we are unpersuaded that one
of ordinary skill would not install Sirius Radio systems in cars so that the
vehicle owner could realize the benefits of the Sirius Radio systems.

DECISION
The Examiner’s rejection of claims 1-20 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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