Oliver Lei et al.

Patent Trials and Appeals Board

Apr 30, 2020

15067837 - (D) (P.T.A.B. Apr. 30, 2020)

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.
15/067,837 03/11/2016 Oliver LEI 83618388 3010
28395 7590 04/30/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
HANIDU, GANIYU A
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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 OLIVER LEI and ALLEN R. MURRAY
Appeal 2018-007862
Application 15/067,837
Technology Center 2600
Before JOSEPH L. DIXON, KEVIN F. TURNER, and JOYCE CRAIG,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20.1 See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies Ford Global Technologies, LLC, as the
real party in interest. Appeal Br. 2.
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Application 15/067,837

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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for providing
portable telematics services. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A system comprising:

a processor configured to:

enable a vehicle modem to provide connectivity for
vehicle telematics services based on communication
provider account information wirelessly provided to the
processor from an electronic tag through a wireless receiver.

REFERENCE
The prior art relied upon by the Examiner is:

Name Reference Date
Banerjee et al.
(“Banerjee”) US 2003/0069784 A1 Apr. 10, 2003

Tengler et al.
(“Tengler”) US 2013/0265178 A1 Oct. 10, 2013

Santilli et al.
(“Santilli”) US 2016/0258775 A1 Sept. 8, 2016

REJECTIONS

Claims 1, 3, 5–11, 13, and 15–20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Tengler in view of Banerjee.
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Claims 2, 4, 12, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tengler and Banerjee and further in view of Santilli.
OPINION
35 U.S.C. § 103
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); see also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007); and Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 13 (1966). The question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; and (3) the level of skill in the art. Graham, 383 U.S. at 17; see
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415–16. The Court explained:
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, [section]
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
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similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.

Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
Consistent with KSR, the Federal Circuit recognized that “[a]n
obviousness determination is not the result of a rigid formula disassociated
from the consideration of the facts of a case. Indeed, the common sense of
those skilled in the art demonstrates why some combinations would have
been obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
416). The Federal Circuit relied in part on the fact that Leapfrog had
presented no evidence that the proposed modification was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162.
Similarly, the Federal Circuit found that adapting existing electronic
processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008)
(quoting KSR, 550 U.S. at 421).
With respect to independent claims 1, 11, and 19, Appellant does not
set forth separate arguments for patentability and generally contends that
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independent claims 11 and 19 recite similar limitations. Appeal Br. 6. As a
result, we select independent claim 1 as the representative claim for the
group and address Appellant’s arguments thereto. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant repeats the language of claim 1 and contends the claim
“essentially frame[s] out a portable telematics enablement system, the tag,
which is capable of being carried into a vehicle and to provide account
credentials to that vehicle, which then responsively, and using the
credentials, provides telematics services.” Appeal Br. 5. We disagree with
Appellant’s argument because the language of claim 1 does not set forth
each of these separate steps in the claimed “system.”
Appellant generally disagrees with the Examiner’s rejection without
specifically addressing the Examiner’s rationale to combine the teachings of
the Tengler and Banerjee references. Merely alleging that the references fail
to support an obviousness rejection is insufficient to persuade us of
Examiner error. Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693,
2009 WL 2477843, at *3–4 (BPAI Aug. 10, 2009) (informative), available
at
https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/fd0
9004693.pdf; see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellant further contends that “Tengler just essentially discusses
communication, and while the paragraphs 172-175 discuss connection to a
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wireless access point, there is nothing remotely related to a vehicle modem
‘providing connectivity based on account information.’” Appeal Br. 5.
Appellant further generally contends that the teachings of Banerjee do not
remedy the deficiency and do not teach “transmission of provider account
information via an electronic tag.” Appeal Br. 5. Appellant also contends
that
Banerjee is about billing a user for tolls and parking (see, e.g.,
Abstract) and the transmission and retrieval of account billing
information for charging a user for services ([0039]). There is
no teaching or suggestion of transmission or receipt of account
information that would allow a vehicle modem to provide
connectivity. At best, and only for the sake of argument, the
combination of references would teach connection to a wireless
access point (175 of Tengler) and charging the user [0039] of
Banerjee. There is nothing that would teach or suggest
provision of connectivity based on communication [to] provide
account information.
Appeal Br. 6; see also Reply Br. 2.
We disagree with Appellant’s argument and note that the Examiner
finds that the Tengler reference discloses in paragraph 172 that the “wireless
connection key may be a security code of the telematics unit 14 that is
generated during pairing (e.g., BLUET00TH® pairing) of the telematics unit
14 and the unit 302.” Ans. 13. We find that after the pairing of the mobile
device with a vehicle, an automatic connection is made based upon an
identification of the mobile device by the vehicle. Additionally, we note that
paragraphs 86 and 126 of the Tengler reference disclose authorization and
pairing of a mobile device with the telematics unit.
The Examiner further finds that the Banerjee reference teaches the use
of connectivity “for vehicle telematics services is based on communication
provider account information wirelessly provided to the processor from an
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electronic tag through a wireless receiver (reads as providing communication
connectivity links a user device (i.e. RFID device) [)] and a service provider
for a vehicle-based service billing system (i.e. account information) through
a Bluetooth device (wireless receiver) transmitting and receiving account
information data, [0025], [0037-0039].” Ans. 13–14.
We agree with the Examiner that the Tengler reference discloses the
use of an association or pairing of the user mobile device with a vehicle to
use systems and functionality within the vehicle. Final Act. 2–3; see also
Ans. 3. Additionally, the Examiner finds that the Banerjee reference teaches
and suggests the use of account information for billing for use of the vehicle
based equipment and use of the vehicle as it travels. Final Act. 3; see also
Ans. 3–4. Consequently, we agree with the Examiner that with the user
pairing a user mobile device with a telematics unit in a vehicle, and the well-
known association account information for use and billing, the user would
have been enabled to use the wireless modem 42 and other communication
elements within the telematics unit 14.
We further note that claim terms are to be given their broadest
reasonable interpretation, as understood by those of ordinary skill in the art
and taking into account whatever enlightenment may be had from the
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“In the
patentability context, claims are to be given their broadest reasonable
interpretations . . . limitations are not to be read into the claims from the
[S]pecification.”); see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Here, the language of representative
independent claim 1 merely sets forth broad limitations without specifically
defining those terms.
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We note that the language of independent claim 1 sets forth “a
processor configured to: enable a vehicle modem to provide connectivity for
vehicle telematics services based on communication provider account
information.” Consequently, all that is required is for the processor to
enable the vehicle modem to provide connectivity using a tag to provide the
account information.
We further note that paragraph 38 of the Tengler reference discloses
the telematics unit 14 contains a wireless modem 42 along with various
additional communication elements including “a short range wireless
communication network 48 (e.g., a BLUETOOTH® unit), a dual antenna
50, and a short range wireless antenna 51.”
Consequently, we find that the Tengler reference teaches and fairly
suggests the use of available communication functionality where one of the
functionalities would be the wireless modem 42 after the user mobile device
100 is paired with the telematics unit 14 (see paragraphs 86 and 172). With
the teaching of the Banerjee reference regarding billing so as to enable
appropriate use of available communication functionality, we agree with the
Examiner’s combination and conclusion of obviousness.
The Examiner further noted that Appellant’s process in claim 1 was
based on “account information,” however, Appellant did not further clarify
within the claim limitation what is meant by the term “account information”
or identify an express definition in the Specification for interpretation.
Therefore, the Examiner using the broadest reasonable interpretation (BRI)
for the term “account information,” found that the Banerjee reference
teaches and suggests use of “billing information” that was equated as the
claimed “account information.” Ans. 15.
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We agree with the Examiner, and we find Appellant’s general
arguments do not show error in the Examiner’s findings or conclusion of
obviousness. As a result, we find Appellant’s arguments to be unavailing to
show error in the Examiner’s factual findings or conclusion of obviousness.
With to independent claims 11 and 19, Appellant contends that the
claims are
even more specific about the account information being
provided to a modem and used to establish connectivity.
Again, Applicant stresses that nothing in Tengler or Banerjee
teaches or suggests portability of account information that
allows a modem to connect, let alone a device that wirelessly
transmits this information to a vehicle when the user moves the
device within proximity to a receiver.

Appeal Br. 6. Appellant further contends that “[s]ince the
concept of ‘portable’ telematics services is notably absent, the
Examiner has, at best and for the sake of argument only, provided a
combination resulting in many portable solutions for identifying
billing information.” Appeal Br. 6.
Appellant has provided no persuasive evidence on this record
establishing that these improvements would have been beyond the
level of skilled artisans. See KSR, 550 U.S. at 417 (“[I]f 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 devices in the
same way, using the technique is obvious unless its actual application
is beyond his or her skill.”); see also Muniauction, 532 F.3d at 1327;
and Leapfrog, 485 F.3d at 1162.
We disagree with Appellant’s general arguments and find the
Examiner has found the steps of the claimed method for wirelessly
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providing account information and providing in-vehicle telematics
connectivity through the modem, as recited in the language of
independent claims 11 and 19.
With respect to dependent claims 3, 5–10, 13, 15–18, and 20,
Appellant’s rely upon the arguments advanced with respect to
independent claims 1, 11, and 19. Appeal Br. 6. As a result, these
claims will fall with their respective independent claims.
With respect to dependent claims 2, 4, 12, and 14, Appellant
contends that the Santilli reference does not remedy the deficiencies in
the base combination and are allowable for those reasons. Appeal Br.
7. Because we found no error in the Examiner’s obviousness rejection
of representative independent claim 1, we similarly find Appellant’s
argument to be unpersuasive of error, and we sustain the obviousness
rejection of claims 2, 4, 12, and 14.
CONCLUSION
The Examiner’s obviousness rejections are affirmed.
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–11,
13, 15–20
103 Tengler, Banerjee 1, 3, 5–11,
13, 15–20

2, 4, 12, 14 103 Tengler, Banerjee,
Santilli
2, 4, 12, 14
Overall
Outcome:
1–20
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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