Sirius XM Connected Vehicle Services Inc.

Patent Trials and Appeals Board

Oct 9, 2020

15709082 - (D) (P.T.A.B. Oct. 9, 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.
15/709,082 09/19/2017 Tod Farrell 67466/02033 4679
31013 7590 10/09/2020
KRAMER LEVIN NAFTALIS & FRANKEL LLP
INTELLECTUAL PROPERTY DEPARTMENT
1177 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
EXAMINER
GONZALEZ, AMANCIO
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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):
dtorniali@kramerlevin.com
klpatent@kramerlevin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOD FARRELL and ALETHEA P. MCCASKEY
Appeal 2019-006192
Application 15/709,082
Technology Center 2600
Before JENNIFER S. BISK, JASON J. CHUNG, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–16. See Final Act. 1. We have

1 Throughout this Decision we have considered the Specification filed
September 19, 2017 (“Spec.”), the Final Rejection mailed October 11, 2018
(“Final Act.”), the Appeal Brief filed May 7, 2019 (“Appeal Br.”), the
Examiner’s Answer mailed June 20, 2019 (“Ans.”), and the Reply Brief
filed August 16, 2019 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Sirius XM
Connected Vehicle Services Inc. Appeal Br. 2.
Appeal 2019-006192
Application 15/709,082
2
jurisdiction under 35 U.S.C. § 6(b). A hearing was scheduled for August 27,
2020, but was subsequently waived by Patent Owner.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “providing driver usage information to a
third-party through a telematics system and methods for providing such
information.” Spec. ¶ 3. Claim 1, reproduced below, is the only
independent claim and is illustrative of the claimed subject matter:
1. A method for providing information to a third party about a
driver of a vehicle having a telematics system and a vehicle
identification number (VIN), the telematics system comprising a
positioning module, a telematics unit, a mobile device of the
driver having a unique identification (ID), and an integrated
communication device of the vehicle, which comprises:
automatically identifying the mobile device of the driver
with at least one of the integrated communication device and the
telematics unit;
generating data from the positioning module as the driver
operates the vehicle;
transmitting the generated data, the VIN, and the ID of the
mobile device of the driver outside the vehicle;
generating a driving behavior report from the transmitted
data, VIN, and ID; and
utilizing the driving behavior report to determine an
insurance premium to charge at least one of the driver and an
owner of the vehicle.
Appeal Br. 14 (Claims App’x.).
Appeal 2019-006192
Application 15/709,082
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Berkobin US 8,117,049 B2 Feb. 14, 2012
Przybylski US 2012/0142367 A1 June 7, 2012
Steinberg US 2014/0046701 A1 Feb. 13, 2014
Miao US 9,888,080 B2 Feb. 6, 2018
REJECTIONS3
Claims 1–7 and 10–16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Berkobin, Miao, and Steinberg. Final Act. 3–9.
Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Berkobin, Miao, Steinberg, and Przybylski. Final Act. 9–
10.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).

3 In the event of further prosecution, the Examiner may want to consider
whether these claims recite patentable-eligible subject matter under
35 U.S.C. § 101. In particular, we note that the MPEP states that claims
reciting “fundamental economic principles,” such as calculating insurance
policies, may be classified as abstract ideas under step 2A of the eligibility
test. MPEP § 2106.04(a)(2) 9th Ed. Rev. 10.2019 (June 2020). Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
Appeal 2019-006192
Application 15/709,082
4
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Claims 1–7 and 10–16
The Examiner rejects claims 1–7 and 10–16 as obvious over
Berkobin, Miao, and Steinberg. Final Act. 3–9. In particular, the Examiner
relies on Berkobin for many of the recited limitations of the challenged
claims. Id. at 3–5. The Examiner, however, finds that Berkobin does not
teach explicitly “automatically identifying the mobile device of the driver
with at least one of the integrated communication device and the telematics
unit” (“the automatically identifying limitation”). Id. at 5–6. The Examiner
relies on both Miao and Steinberg for teaching or suggesting portions of the
automatically identifying limitation. Id. at 6. First, the Examiner points to
Miao as teaching “association between a mobile communications device and
a telematics unit in a vehicle” by identifying the driver of the vehicle and
looking up the identity of a mobile device known to be used by the driver.
Id. at 6 (citing Miao, 13:41–51).
Second, the Examiner points to Steinberg as teaching gathering data
monitoring a driver’s performance from the driver’s mobile device. Ans. 4
(citing Steinberg ¶¶ 27, 41). The Examiner also explains that Steinberg
teaches “[v]erification of the vehicle associated with the mobile device could
be achieved by linking the mobile device 50 with sub-systems of the vehicle
using wired or wireless connections.” Id. at 4–5 (quoting Steinberg ¶ 32).
The Examiner also points out that Steinberg teaches automatically
identifying a driver. Final Act. 6 (citing Steinberg ¶ 39).
Appeal 2019-006192
Application 15/709,082
5
The Examiner explains that it would have been obvious to a person of
ordinary skill in the art to modify Berkobin in view of Miao and Steinberg to
“provid[e] means for correlating the use of a mobile device with an
individual while driving a vehicle” and “provid[e] means for making
insurance more affordable.” Final Act. 6–7 (citing Steinberg ¶ 8).
Appellant argues that “any teaching, suggestion, or incentive possibly
derived from the cited art is only present with an impermissible hindsight
judgment in view of the claimed invention.” Appeal Br. 8. First, according
to Appellant, “[b]ecause Steinberg does not identify a mobile device, it
cannot be used to support the conclusion that the combination of Berkobin,
Miao, and Steinberg suggest the features of claim 1 to one having ordinary
skill in the art.” Id. at 8–9; see also Reply Br. 3 (“[N]owhere does Steinberg
suggest ‘automatically identifying the mobile device.”). This argument is
not persuasive as Steinberg teaches gathering data from a driver’s mobile
device (Steinberg ¶ 27), and we find a person of ordinary skill in the art
would have understood that in order to gather this data, Steinberg must, at
some point, have identified the driver’s mobile device. Moreover, Steinberg
teaches verifying the mobile device using Bluetooth, which a person of
ordinary skill in the art would have understood can be done automatically.
Steinberg ¶ 32; Ans. 4–5. We do not agree with Appellant that this
paragraph teaches only identifying the vehicle (see Reply Br. 3), but instead
agree with the Examiner that a person of ordinary skill in the art would have
understood the connection between the vehicle and the mobile device to also
allow identifying the driver’s mobile device. In addition, Appellant
contends that Steinberg “requires the driver to manually enter the VIN
Appeal 2019-006192
Application 15/709,082
6
into their phone” (Appeal Br. 9 (citing Steinberg ¶ 324)), however, we agree
with the Examiner (Ans. 5) that in paragraphs 31 and 32 Steinberg
specifically teaches several methods for verifying a mobile device with a
vehicle only a subset of which would require manual entry of a VIN. Ans. 5
(citing ¶¶ 31–32). Thus, we agree with the Examiner that Steinberg at least
suggests automatically identifying the mobile device of the driver.
Second, Appellant contends that “Miao determines identity only
manually,” and therefore neither Berkobin nor Miao show the automatic
identification recited by the claims. Appeal Br. 10. This argument is not
persuasive because, as discussed above, the Examiner relies on both Miao
and Steinberg as teaching or suggesting the automatically identifying
limitation. Moreover, as explained above, we agree that Steinberg teaches
automatically identifying the driver’s mobile device. We agree with the
Examiner that the combination of Miao and Steinberg at least suggests the
automatically identifying limitation.
Finally, Appellant argues “there is no reason, whether set forth
specifically in Berkobin or inferred therefrom, as to why Berkobin would
ever desire to correlate the use of the mobile device with an individual while
driving the vehicle.” Appeal Br. 10. The Examiner does not, however,
point to Berkobin to show that a person of ordinary skill in the art would
have combined the teachings of the references, but instead points to
paragraph 8 of Steinberg (Final Act. 7), which states that insurance
companies monitoring devices installed in vehicles to examine driving data,
including speed and acceleration measurements, and linking insurance price

4 We assume that reference to Steinberg ¶ 32 here is a typo and is meant to
refer to Steinberg ¶ 31.
Appeal 2019-006192
Application 15/709,082
7
to that data to make it “more affordable, fair, and transparent to consumers”
(Steinberg ¶ 8). We find that this disclosure, in combination with the
knowledge that most drivers now have mobile devices including GPS data
(as taught by Steinberg), provides a reasonable rationale for why a person of
ordinary skill in the art would want to correlate the use of the driver’s
mobile device with that individual.
We, therefore, are not persuaded that the Examiner erred in rejecting
claims 1–7 and 10–16 as obvious over the combined teachings of Berkobin,
Miao, and Steinberg.
Claims 8 and 9
The Examiner rejects dependent claims 8 and 9 as obvious over
Berkobin, Miao, Steinberg, and Przybylski. Final Act. 9–10. In particular,
the Examiner turns to Przybylski to teach “wherein the integrated
communication device of the vehicle comprises a Bluetooth device having a
highest priority phone; and the mobile device of the driver is the highest
priority phone and automatically pairs with the Bluetooth device when in
communications range with the Bluetooth device.” Final Act. 10 (citing
Przybylski ¶ 27). According to the Examiner, a person of ordinary skill in
the art would have used this teaching to modify the
Berkobin/Miao/Steinberg system to “provid[e] a system that informs the
vehicle operator that one or more devices have been found and requests
which mobile device should be used.” Id.
Appellant argues that “there is no suggestion, let alone express
teaching, within any of Berkobin or Miao or Steinberg to change the
description of the inventions therein by adding the feature described in
paragraph 27 of Przybylski.” Appeal Br. 12. The Examiner, however, relies
Appeal 2019-006192
Application 15/709,082
8
on Przybylski for the rationale to combine. Final Act. 10. We agree that
Pryzbylski teaches the “presence of multiple mobile devices might occur
because, for example, there are other occupants with mobile devices in the
vehicle, or are other people nearby with mobile devices” so that it makes
sense to determine which device belongs to the vehicle driver by giving it
priority. Przybylski ¶ 27. We find this that this disclosure, in combination
with the knowledge that most occupants of a car now have mobile devices,
provides a reasonable rationale for why a person of ordinary skill in the art
would want to modify the Berkobin/Miao/Steinberg system to use priorities
for devices as described by Przybylski.
We, therefore, are not persuaded that the Examiner erred in rejecting
claims 8 and 9 as obvious over the combined teachings of Berkobin, Miao,
Steinberg, and Przybylski.
CONCLUSION
We affirm the Examiner’s rejections.
DECISION SUMMARY
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–7, 10–16 103 Berkobin, Miao,
Steinberg
1–7, 10–16
8, 9 103 Berkobin, Miao,
Steinberg,
Przybylski
8, 9
Overall
Outcome
1–16
Appeal 2019-006192
Application 15/709,082
9
TIME PERIOD FOR 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