Ex Parte Watkins et al

Patent Trial and Appeal Board

Mar 5, 2013

10601466 (P.T.A.B. Mar. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/601,466 06/23/2003 Gary A. Watkins GP-303344 (2760/103) 7594
60770 7590 05/15/2013
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
05/15/2013 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 GARY A. WATKINS, CHRISTOPHER L. OESTERLING,
DAVID W. ROCKETT, and STEVEN P. SCHWINKE
___________

Appeal 2011-000946
Application 10/601,466
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 Our decision will make reference to the Appellant’s Request for Rehearing
(filed May 6, 2013, hereinafter “Request”); the PTAB Decision (mailed Mar.
6, 2013, hereinafter “Decision”); and the Examiner’s Answer (mailed Jul 21,
2010, hereinafter “Ans.”).
Appeal 2011-000946
Application 10/601,466

2
STATEMENT OF THE CASE
Gary A. Watkins et al. (Appellants) filed a Request for Rehearing of
the Decision affirming the rejection of claims 1-19 under 35 U.S.C. § 103(a)
as being unpatentable over Vieweg and Messina and the rejection of claim
20 under 35 U.S.C. § 103(a) as being unpatentable over Vieweg, Messina,
and Ikeda.
In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes
certain points, in particular, that the Appellant believes the Board
misapprehended or overlooked in reaching its Decision.
The Appellant believes that the Board misapprehended or overlooked
points in affirming these rejections because the Board relied upon the
Examiner’s Analysis, which, according to the Appellants, “ignored” claim
1’s deactivating step. Request 1-3.
We have reviewed the Request in its entirety but do not find that the
Appellant has shown that the Board misapprehended or overlooked points in
affirming the rejection of claims 1-19 under 35 U.S.C. § 103(a) as being
unpatentable over Vieweg and Messina and the rejection of claim 20 under
35 U.S.C. § 103(a) as being unpatentable over Vieweg, Messina, and Ikeda.

DISCUSSION
We are not persuaded by the Appellant’s arguments on pages 1-3 of
the Request that we misapprehended or overlooked the Appellant’s
argument in reaching our Decision.
At issue is claim 1’s step of:
deactivating the vehicle telematics device at the
vehicle at the expiration of the subscription service
Appeal 2011-000946
Application 10/601,466

3
based on the subscription service data, wherein the
deactivating step comprises placing a
communication from the vehicle telematics device
and surrendering at least one identification number
previously assigned to the vehicle telematics
device.
App. Br. 17, Claims Appendix.

Contrary to the Appellant’s argument neither we nor the Examiner “ignored”
the limitation at issue. The Examiner provided a detailed analysis, upon
which we relied (Decision 6), as to how the limitation at issue was construed
and was taught by the combination of Vieweg and Messina. See Ans. 13-21.
We agreed with the Examiner, and continue to do so, that, when given the
broadest reasonable meaning in light of the Specification (In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004), the claimed
“deactivating” step does not preclude deactivating the telematics device by
sending a communication cancelling a data subscription service and failing
to replace a decryption key at the expiration of the subscription period, as
taught by the combination of the prior art. See Ans. 16-18.
We also agreed with the Examiner (Ans. 14 and 18), and continue to
do so, that “deactivating” does not requires that the vehicle telematics device
be entirely disable from receiving any communication, as disclosed in the
Specification. See Request 2-3. Limitations appearing in the specification
but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

Appeal 2011-000946
Application 10/601,466

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CONCLUSION
We have carefully considered the arguments that the Appellant has
set forth in the Request but, for the foregoing reasons, we do not find them
persuasive as to our affirmance of the rejection of claims 1-19 under 35
U.S.C. § 103(a) as being unpatentable over Vieweg and Messina and the
rejection of claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Vieweg, Messina, and Ikeda.
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).
DENIED

rvb