SEONG SANG INVESTMENTS LLC

Patent Trials and Appeals Board

Oct 6, 2020

2019003256 (P.T.A.B. Oct. 6, 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.
14/294,934 06/03/2014 Richard B. Himmelstein DHIM-USCN205370 9891
3624 7590 10/06/2020
Volpe Koenig
30 SOUTH 17TH STREET, 18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
APPIAH, CHARLES NANA
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
10/06/2020 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD B. HIMMELSTEIN
___________

Appeal 2019-003256
Application 14/294,934
Technology Center 2600
____________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 6, 8–10, 12, 14, and 16. We have jurisdiction
over the rejected claims under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Embodiments of Appellant’s invention relate to “a mobile
communication system which allows mobile vehicles to communicate with
neighboring vehicles and roadside communication networks.” Spec. ¶ 3.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Intellectual Ventures II LLC. See Appeal Br. 3.
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Exemplary Claim
1. (Rejected) A mobile computing device of a vehicle
comprising:
a transceiver configured to receive, over a cellular
data connection, a request for authorization to share
location information in a control instruction;
a processor configured to compare a security
access code in the control instruction to detect a security
level of a plurality of security levels to authorize sharing
of the location information;
the processor configured to receive an input to
accept the detected security level;
the transceiver configured to transmit the location
information to be displaced on a real-time map on an
audio-visual interface (AVI); and
a display configured to display the AVI with a
record having identifying information of other vehicles
and a function to communicate voice packets at the A VI
using internet protocol (IP) over the cellular data
connection.
Appeal Br. 27, Claims App.
Rejections
A. Claims 1, 2, 4, 6, 8–10, 12, 14, and 16 are rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
B. Claims 1, 2, 4, 6, 8–10, 12, 14, and 16 are rejected on the grounds
of nonstatutory double patenting, as being unpatentable over claim
all claims of US 7,885,685.
C. Claims 1, 4, 6, 8, 9, 12, 14, and 16 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Obradovich et al. (US
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Application 14/294,934

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2003/0163251 A1; published Aug. 28, 2003 (hereinafter
“Obradovich”)) Elliot (US 6,243,039 B1; issued June 5, 2001) and
further in view of Zhang (US 2013/0052990 A1; published Feb.
28, 2013).
D. Claims 2 and 10 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Obradovich and Elliot and Zhang and further in
view of Heinonen (US 6,078,806; issued June 20, 2000
(hereinafter “Heinonen”)).

Cross Reference to Related Applications
This appeal is for current Application No. 14/294,934 (hereinafter the
’934 child application):

This application is a continuation of U.S. Patent
Application Serial No. 14/053,237 filed October 14, 2013,
which is a continuation of U.S. Patent Application Serial No.
12/870,219 filed August 27, 2010, [hereinafter the ‘219 parent
application,] issued as U.S. Patent No. 8,565,734 on October 22,
2013, which is a continuation of U.S. Patent Application Serial
No. 12/841,433 filed July 22, 2010, issued as U.S. Patent No.
7,885,685 on February 8, 2011, which is a continuation of U.S.
Patent Application Serial No. 12/546,645 filed August 24, 2009,
issued as U.S. Patent No. 7,783,304 on August 24, 2010, which
is a continuation of U.S. Patent Application Serial No.
12/389,245 filed February 19, 2009, issued as U.S. Patent No.
7,599,715 on October 6, 2009, which is a continuation of U.S.
Patent Application Serial No. 12/018,588 filed January 23, 2008,
issued as U.S. Patent No. 7,536,189 on May 19, 2009, which is
a continuation of U.S. Patent Application Serial No. 11/524,858
filed September 20, 2006, issued as U.S. Patent No. 7,450,955
on November 11, 2008, which is a continuation of U.S. Patent
Application Serial No. 10/705,674 filed November 10, 2003,
issued as U.S. Patent No. 7,123,926 on October 17, 2006, which
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was a continuation of U.S. Patent Application Serial No.
09/659,074 filed September 11, 2000, issued as U.S. Patent No.
6,647,270 on November 11, 2003, which claims the benefit of
U.S. Provisional Application No. 60/153,424 filed September
10, 1999.

This application is related to U.S. Patent Application Serial No.
10/705,065 filed on November 10, 2003.

Spec. ¶¶ 1, 2. (emphasis added).

ANALYSIS
Rejection A under Non-Statutory Obviousness Type Double-Patenting
(OTDP)

Appellant advances no arguments regarding claims 1, 2, 4, 6, 8–10,
12, 14, and 16 as rejected by the Examiner under non-statutory OTDP
Rejection A. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, we pro forma sustain the Examiner’s
Rejection A of claims 1, 2, 4, 6, 8–10, 12, 14, and16 on the ground of non-
statutory OTDP.
Rejection B of Claims 1, 2, 4, 6, 8–10, 12, 14, and 16 under 35 U.S.C. § 112,
first paragraph
The Examiner determines that the ’934 child application (i.e., original
Specification) does not have sufficient written description support:
All independent claims including claim 1, contain limitations that
require a network device to receive/send/share an authorization
request to a mobile device to send/receive/share location information,
[hereinafter “location authorization limitations”]; a processor
configured to compare a security access code in the control instruction
to detect a security level of a plurality of security levels to authorize
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sharing of the location information; the processor configured to
receive an input to accept the detected security level, [hereinafter “the
security level limitation”].
Final Act. 8. (emphasis added).
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562–63;
Accord Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Ariad, 598 F.3d at 1351. In particular, the written description requirement
does not demand any particular form of disclosure “or that the specification
recite the claimed invention in haec verba.” Id. at 1352.
Appellant has identified written description support for each element
of claim 1 (and claim 9) in the U.S. Pre-Grant Publication 2014-0273946 of
the present application.” (hereinafter “’946 Pub”) on pages 5 through 22 of
the Appeal Brief. 2 In particular, the ’946 Pub describes:
Paragraph [0050] teaches that location of the vehicle is an
example of stored information on a vehicle. Location
information may be shared with others when, as explained in

2 Upon a cursory review, the paragraph numbers in the ’946 Pub and the
’934 child application are exactly same.
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paragraph [0071], the vehicletalk system receives a “packet
[that] includes a control communication ... microprocessor
compares the control instruction to the security level required
(step 616)” and, as explained in paragraph [0038], access to a
vehicle may be obtained based on the security instruction that
may allow “0--access to all functions of the vehicle
communication system 10 including the physical control of the
vehicle and all of the information stored within the memory 41.
1--access only to the physical control of the vehicle. 2--access
only to the information stored within the memory 41.. .. ”
A person of ordinary skill in the art at the time of filing
understands that paragraphs [0038], [0050], and [0071] together
support with levels 0 or 2 giving others access to “information
stored within the memory 41,” which may include location
information as disclosed in paragraph [0050], if requested.
Therefor, "a request for authorization to share location
information in a control instruction" as claimed is fully
supported.
. . . .
Paragraph [0039] states that the “security field 61 may
also include a security code, which permits authentication of the
entity sending the security instruction” and paragraph [0071]
states that the vehicletalk system receives a “packet [that]
includes a control communication ... microprocessor compares
the control instruction to the security level required (step 616).”
In the procedure given in figure 6 [of the Specification], a
control instruction of packet control communication is
performed if a security level is sufficient.
Reply Br. 4–6.
As noted above, the written description requirement does not demand
“that the specification recite the claimed invention in haec verba.” Ariad,
598 F.3d at 1352. For the same reasons as advanced by Appellant, we find
sufficient written description to demonstrate possession of the invention
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claimed in paragraphs 38, 39, 50, 71, and Figure 6 of the ’946 Pub (’934
child application).
Accordingly, we are constrained on this record to reverse the
Examiner’s Rejection B of claims 1, 2, 4, 6, 8-10, 12, 14, and 16, under pre-
AIA 35 U.S.C. § 112, first paragraph (written description).
Rejections C and D under § 103(a) of Claims 1, 2, 4, 6, 8–10, 12, 14, and 16
The Examiner cited the Zhang reference for disclosing the location
authorization limitations. Final Act. 10.
Appellant contends the obviousness rejections are improper because
Zhang is not available as prior art. Appeal. Br. 26; Reply Br. 7. The
dispositive issue presented by Appellant’s argument is whether the Zhang’s
patent application publication (US 2013/0052990 A1, filed August 29, 2011)
is available as prior art.
We note Appellant’s application ’934 child application on appeal has
a filing date of June 3, 2014, but as noted above, it has an effective filing
date of at least August 27, 2010, because it is a continuation of U.S. Patent
Application Serial No. 14/053,237 filed October 14, 2013, which is further a
continuation of U.S. Patent Application Serial No. 12/870,219, filed August
27, 2010 (’219 parent application),
In Table One below, we compare the description of the relevant
paragraphs (¶¶ 38, 50, 71) of the ’934 child application with corresponding
subject matter in the ’219 parent application that relate to the location
authorization limitations.

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TABLE ONE
‘934 child application ‘219 parent application
[0038] Since the vehicle
communication system 10 m
accordance with the present
invention permits control of a
vehicle and overall control of the
communication system 10 by law
enforcement authorities via a
“security instruction”, the system 10
has a plurality of security levels to
ensure that unauthorized individuals
will not use the system 10 for
subversive purposes. Optionally,
driver may override law
enforcement. System may ask for
permission for law enforcement to
control vehicle. The security field
61 is defined as follows: 0-access
to all functions of the vehicle
communication system 10 including
the physical control of the vehicle
and all of the information stored
within the memory 41. 1--access
only to the physical control of the
vehicle. 2--access only to the
information stored within the
memory 41. 3--access for
transmitting and receiving
communications. 4--access
only to receiving
communications.
[0034] Since the vehicle
communication system 10 in
accordance with the present
invention permits control of a
vehicle and overall control of the
communication system 10 by law
enforcement authorities via a
“security instruction”, the system 10
has a plurality of security levels to
ensure that unauthorized individuals
will not use the system 10 for
subversive purposes. Optionally,
driver may override law
enforcement. System may ask for
permission for law enforcement to
control vehicle. The security field 61
is defined as follows: 0--access to all
functions of the vehicle
communication system 10 including
the physical control of the vehicle
and all of the information stored
within the memory 41. 1--access
only to the physical control of the
vehicle. 2--access only to the
information stored within the
memory 41. 3--access for
transmitting and receiving
communications. 4--access only to
receiving communications.

[0050] The origination field 76
includes the location of the vehicle
when the vehicle was turned on.
The destination field 77 includes the
destination of the vehicle. This, of
[0046] The origination field 76
includes the location of the vehicle
when the vehicle was turned on. The
destination field 77 includes the
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‘934 child application ‘219 parent application
course, requires that the destination
be input into the mobile unit 16,
such as when a destination is input
into a navigation system. It should
be understood that the vehicletalk
operator may override certain fields
to ensure that this information is not
obtained by other vehicletalk
operators. For example, the
origination 76 and destination fields
77, which may include personal
information that the vehicletalk
operator does not desire other
vehicletalk operators to have
access to, may include null data
such that the sender's destination
and origination will be listed as "not
available" to the receiver. The
vehicle operator configures
their mobile unit 16 as desired to
specify which fields should be
transmitted with null data.
destination of the vehicle. This, of
course, requires that the destination
be input into the mobile unit 16, such
as when a destination is input into a
navigation system. It should be
understood that the vehicletalk
operator may override certain fields
to ensure that this information is not
obtained by other vehicletalk
operators. For example, the
origination 76 and destination fields
77, which may include personal
information that the vehicletalk
operator does not desire other
vehicletalk operators to have access
to, may include null data such that
the senders destination and
origination will be listed as "not
available" to the receiver. The
vehicle operator configures their
mobile unit 16 as desired to specify
which fields should be transmitted
with null data.
[0071] If it has been determined that
the packet includes a control
communication, the communication
is processed as such (step 614). The
microprocessor compares the
control instruction to the security
level required (step 616). This
includes reviewing the security
field, including the optional security
access code. If the security access
code is proper (i.e. authorized), the
security level is reviewed and the
microprocessor makes a
determination of whether the
[0067] If it has been determined that
the packet includes a control
communication, the communication
is processed as such (step 614). The
microprocessor compares the control
instruction to the security level
required (step 616). This includes
reviewing the security field,
including the optional security
access code. If the security access
code is proper (i.e. authorized), the
security level is reviewed and the
microprocessor makes a
determination of whether the
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‘934 child application ‘219 parent application
security level is sufficient (step
618). If so, the microprocessor
performs the control instruction
(step 620). If not, the
microprocessor generates a
transmission to the sender of the
control instruction that they are not
authorized to control the
particular mobile unit (step 622).
The microprocessor 40 also notifies
the particular vehicletalk operator
that a control attempt was made and
was unsuccessful. This will alert the
vehicletalk operator that someone
may be utilizing the system for
subversive purposes. Optionally, the
system may require the vehicle talk
operator to authorize their vehicle to
accept a control instruction, prior to
undertaking any control
instructions. Once the processing of
the packet is performed, the
microprocessor goes to the next
packet (step 624).
security level is sufficient (step 618).
If so, the microprocessor performs
the control instruction (step 620). If
not, the microprocessor generates a
transmission to the sender of the
control instruction that they are not
authorized to control the particular
mobile unit (step 622). The
microprocessor 40 also notifies the
particular vehicletalk operator that a
control attempt was made and was
unsuccessful. This will alert the
vehicletalk operator that someone
may be utilizing the system for
subversive purposes. Optionally, the
system may require the vehicle talk
operator to authorize their vehicle to
accept a control instruction, prior to
undertaking any control instructions.
Once the processing of the packet is
performed, the microprocessor goes
to the next packet (step 624).

Based upon our review, we find ¶¶ 38, 50, and 71 of the ’934 child
application correspond to ¶¶ 34, 46, and 67 in the ’219 parent application.
Accordingly, the claimed location authorization limitations are supported by
the ‘219 parent application.
We note that the Examiner has not proffered any objective evidence to
support any reason that Appellant might not be entitled to claim the benefit
of their own ’219 parent application.
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We emphasize that we are a Board of review. Because the Examiner
has not developed the record in this regard, we decline to do so here in the
first instance. See id. “The review authorized by 35 U.S.C. § 134 is not a
process whereby the examiner . . . invite[s] the [B]oard to examine the
application and resolve patentability in the first instance.” Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999).
Based upon our review of the record, we find the Examiner has not
provided sufficient evidence on appeal to show that Zhang is available as
prior art. Therefore, on this record, the Board can only rely upon the ’219
parent application filing date, which is August 27, 2010, this date occurring
before Zhang’s filing date of August 29, 2011.
Therefore, as further discussed above, we find the Examiner has not
shown Zhang is available as prior art.
The Examiner must provide prior art references as evidence in the
first instance to establish a prima facie case of obviousness. Without the
Zhang being properly established as available prior art, the Examiner’s
Rejections C and D under 35 U.S.C. § 103(a) fail due to insufficient
evidence. Therefore, on this record, we are persuaded the Examiner erred by
improperly relying upon Zhang as prior art.
Accordingly, we are constrained on this record to reverse the
Examiner’s Rejections C and D under 35 U.S.C. § 103(a), of all claims on
appeal, because each rejection improperly relies upon Zhang as prior art.

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CONCLUSION
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
1, 2, 4, 6, 8-10,
12, 14, 16
112, first
paragraph
Written
description
1, 2, 4, 6,
8-10, 12,
14, 16
1, 2, 4, 6, 8-10,
12, 14, 16
N/A Nonstatutory
Double Patenting
1, 2, 4, 6,
8-10, 12,
14, 16

1, 4, 6, 8, 9, 12,
14, 16
103 Obradovich,
Elliot, Zhang
1, 4, 6, 8,
9, 12, 14,
16
2, 10 103 Obradovich,
Elliot, Zhang,
Heinonen
2, 10
Overall
outcome
1,2, 4, 6,
8-10, 12,
14, 16