TK Holdings Inc.

Patent Trials and Appeals Board

Dec 8, 2020

2019004945 (P.T.A.B. Dec. 8, 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.
14/636,811 03/03/2015 Jeffrey Scott BENNETT TKHDE-1113500 2519
27111 7590 12/08/2020
GORDON & REES LLP
101 WEST BROADWAY
SUITE 1600
SAN DIEGO, CA 92101
EXAMINER
TRUONG, NGUYEN H
ART UNIT PAPER NUMBER
2691
NOTIFICATION DATE DELIVERY MODE
12/08/2020 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):
ipdocket@gordonrees.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY SCOTT BENNETT, PHILLIP B. MAGUIRE,
and LEONARD STEVEN CECH
____________

Appeal 2019-004945
Application 14/636,811
Technology Center 2600
____________

Before JEREMY J. CURCURI, JUSTIN BUSCH, and AMEE A. SHAH,
Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 21–35, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“JOYSON SAFETY SYSTEMS ACQUISITION LLC.” Appeal Br. 1.
Appeal 2019-004945
Application 14/636,811

2
CLAIMED SUBJECT MATTER
The Appellant’s invention “relates to a system that includes detecting
and discriminating coded information transmitted in electromagnetic fields
for in-vehicle occupant classification sensor systems.” Spec. ¶ 2.
Specifically, the “system proposed herein may dependently associate the
physical presence of an occupant (e.g., vehicle seating location) with a
location of the electronic device (e.g., held in hand, in pocket, etc.)” and
“may allow one-way or two-way communication between a fixed network
and the electronic device, and through an occupant, in order to dependently
establish control/communication parameters of the device, as well as
software application activation, based on a specified position of the device.”
Id. ¶ 24.
Claims 21, 27, and 32 are the independent claims on appeal. Claim 21
is illustrative of the subject matter on appeal and is reproduced below (with
added lettered bracketing for reference):
21. A system for controlling the operation of a human machine
interface (HMI) device located in a vehicle, wherein the system
comprises:
[(a)] a first electrode positioned proximate to a driver of
the vehicle:
[(b)] a portable electronic device configured to be used for
communication by an occupant of the seat; and
[(c)] a signal generating device configured to provide a
first signal to the first electrode, wherein
[(d)] the electronic device is configured to detect the
first signal being transmitted by the electrode through the
driver and in response to detecting the first signal provide
a notification signal to the HMI device;
Appeal 2019-004945
Application 14/636,811

3
[(e)] the HMI device and the electronic device are
configured to establish a two way communications
connection after the electronic device has detected the first
signal;
[(f)] the HMI device is configured to operate in a
first mode when the driver contacts the electronic device;
and
[(g)] upon receipt of the notification signal the HMI
device is configured to display a message to the driver in
order to reduce driver distraction from a road.
Appeal Br. 14 (Claims App.).

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
FYKE et al. (“Fyke”) US 2012/0088446 A1 Apr. 12, 2012
TAN (“Tan”) US 2012/0109451 A1 May 3, 2012
White et al. (“White”) US 2013/0176100 A1 July 11, 2013
Brakensiek et al.
(“Brakensiek”)
US 2013/0244625 A1 Sept. 19, 2013
Chien US 2013/0274997 A1 Oct. 17, 2013

REJECTIONS
Claims 21, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brakensiek, White, and Tan.
Claims 22, 26, 30, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brakensiek, White, Tan, Fyke, and Chien.
Claims 23–25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brakensiek, White, Tan, and Chien.
Claims 29 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brakensiek, White, Tan, and Fyke.
Appeal 2019-004945
Application 14/636,811

4
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brakensiek and White.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brakensiek, White, and Fyke.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brakensiek, White, and Chien.

OPINION
Claims 21 and 23–25
The Appellant contends that the Examiner’s rejection of independent
claim 21 is in error because the combination of Brakensiek, White, and Tan
does not teach the claimed system requiring “the electronic device is
configured to detect the first signal being transmitted by the electrode
through the driver and in response to detecting the first signal provide a
notification signal to the HMI device, [and] . . . upon receipt of the
notification signal the HMI device is configured to display a message to the
driver in order to reduce driver distraction from the road,” as recited in
limitations (d) and (g) and because the Examiner’s reasoning is improper
and based on impermissible hindsight. Appeal Br. 5–8; Reply Br. 1–3. For
at least the reasons below, we are not persuaded of error in the Examiner’s
rejection.
The Examiner finds, in pertinent part, that Brakensiek teaches that
“the electronic device is configured to detect a location of the electronic
device relative to the HMI” (part of limitation (d)) in that Brakensiek’s
“apparatus 50 communicates with the vehicle’s IVI (In-vehicle Interface)
system to determine an operating condition including the device’s relative
Appeal 2019-004945
Application 14/636,811

5
position with respect to the IVI (e.g., a driver position or a passenger
position). Also, the operating condition may be obtained by manually
inputting by a user.” Final Act. 5–6 (emphasis omitted). The Examiner
further finds that Brakensiek teaches “upon receipt of the notification signal
the HMI device is configured to display a message to the driver” (part of
limitation (g)) in that Brakensiek teaches “upon determining the operating
condition (e.g., including the position of the mobile device in the vehicle),
the liability waiver is displayed on the display 115 of the IVI and the user
may be able to confirm the operating condition or make possible
corrections,” whereby “[t]he liability waiver may alert the user to the risks
involved with assessing and interacting with the requested application.” Id.
at 6 (emphasis omitted). The Examiner finds that Brakensiek teaches that “a
communication link is established between the mobile device and the IVI
after determining the operating condition so that a liability waiver is
presented on the display of the IVI” (id.), i.e., “sending a notification signal
to the HMI device” in response to a determination that the driver is using the
mobile device (Ans. 3). The Examiner then finds that Brakensiek does not
teach a first electrode, as recited in limitation (a), a signal generating device
configured to provide a signal to the electrode, as recited in limitation (c),
“wherein the electronic device is configured to detect the first signal being
transmitted by the electrode through the driver,” as recited in limitation (d),
and displaying a message in response to receiving a notification signal, as
recited in limitation (g). Id. (emphasis omitted).
The Examiner finds that White teaches the claimed first electrode and
signal generating device, as recited in limitations (a) and (c), and the
electronic device configured to detect the signal transmitted from the
Appeal 2019-004945
Application 14/636,811

6
electrode through the driver, as recited in (d). Id. at 6–7. The Examiner
determines that
it would have been obvious to one of ordinary skill in the art to
modify the system and the method of Brakensiek to include the
method of White of detecting whether a driver is possessing an
electronic device by detecting a signal 20 generated from an
electrode placed under the driver’s seat and transmitted through
the driver’s body to the electronic device. . . . Such a
modification is the result of simple substitution of one known
element for another producing a predictable result.
Id. at 7–8.
The Examiner relies on the combination of Brakensiek and White in
that White is used for the determination being based on transmitting and
detecting a signal using an electrode. In other words, the Examiner finds
that Brakensiek teaches displaying a message, i.e., a liability waiver, based
on a detection/determination that the driver is using a mobile device. White
teaches detecting that a driver is using a device based on an electrode
transmitting signals, a substitute for Brakensiek’s process of detecting by
proximity. Brakensiek, as modified by White’s process of detecting a
signal, teaches in response to detecting a signal, providing a notification
signal via a communication link to the HMI device that then displays a
message of a liability waiver. As such, the Appellant’s argument that
neither Brakensiek nor White teaches these limitations individually (see
Appeal Br. 6) is unpersuasive. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). “[O]ne cannot show non-obviousness by attacking references
individually were, as here, the rejections are based on combinations of
references.” Id. (citation omitted).
Brakensiek teaches “an apparatus that can determine the operating
condition of a device and a safety rating of an application executed by the
Appeal 2019-004945
Application 14/636,811

7
device based on the operating condition that is determined” and “may then
cause a liability waiver regarding use of the application to be presented to
the user for consideration and acceptance based on the safety rating that is
determined.” Brakensiek, Abstract. A device 100 with apparatus 50, such
as a cellular telephone, may determine the device’s location with respect to a
vehicle’s system. Id. ¶ 51 (“the apparatus 50 is embodied by a device 100
(e.g., a cellular telephone) operated by a user who is a passenger in a
vehicle, [and] the apparatus may determine the operating condition of the
device 100 by communicating with the vehicle’s IVI system 110 to obtain
information regarding the device’s proximity to the IVI system, the device’s
relative position with respect to the IVI (e.g., to the right of the IVI,
indicating use by a front seat passenger), geographic location of the vehicle,
current speed of the vehicle, and so on.”). “In some cases, the operating
condition may be received via direct input by the user, such as when the user
is asked to select a mode of operation (e.g., driving mode or non-driving
mode).” Id. When it is determined that the driver is using an application on
the phone that may conditionally be used based on the determined operating
conditions, the apparatus would present to the user a liability waiver on the
display of the phone. Id. ¶¶ 54–56. The content presented on the display of
the phone may be communicated to the IVI system for presentation on the
display of the IVI system instead of or in addition to being displayed on the
display of the phone. Id. ¶ 56. In other words, Brakensiek teaches using a
proximity method to determine whether the driver possesses the phone, and
if it is determined that the driver is using an application on the phone in a
certain operating condition, the phone could communicate to the IVI system
to present a waiver on the IVI system’s display.
Appeal 2019-004945
Application 14/636,811

8
White teaches a “system for controlling an electronic device
includ[ing] a sensor configured to detect occupancy of a person and a
sensing electrode that provides an encoded signal in response to the sensor,
the signal having a particular frequency and power.” White, Abstract.
“[S]ensing electrode 10 for a system 70 to control an electronic device 30
may be located in the driver’s seat 40 of a vehicle 50.” Id. ¶ 27. “The
sensor detects the occupancy of a person sitting in the driver’s seat 40” and
may transmit an encoded signal to a target that can redistribute charges, such
as by a human body. Id. “[W]hen sensing electrode 10 located in a driver’s
seat transmits encoded signal 20, the person sitting in the driver’s seat
redistributes the charges of signal 20” to an electronic device, such as a cell
phone, positioned proximately to the driver. Id. The device may respond to
that signal by disabling features such as texting or messaging. Id. Further,
“a signal transmitted by the electronic device may be used to display an icon
in the instrument panel that phone controls have been disabled.” Id.
¶¶ 13, 28.
We find reasonable the Examiner’s substitution because both
Brakensiek and White teach a method for detecting whether the driver is
possessing the electronic device, i.e., the “function” of “detect[ing] a
position of a mobile phone in a vehicle so as to determine who is operating
the mobile phone.” Brakensiek performs this function by “detect[ing] a
location of the electronic device relative to the HMI” and “communicat[ing]
with the vehicle’s IVI (In-vehicle Interface) system to determine an
operating condition including the device’s relative position with respect to
the IVI (e.g., a driver position or a passenger position),” such as “by
manual[] input[] by a user” (Final Act. 5–6), and White performs this
Appeal 2019-004945
Application 14/636,811

9
function by “detecting a signal 20 generated from an electrode placed under
the driver’s seat and transmitted through the driver’s body to the electronic
device” (id. at 7). The results of such substitution are reasonably
predictable, i.e., to detect whether the driver possesses a mobile device. See
KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”).
The Examiner thus establishes a prima facie case of obviousness as
the Examiner has provided articulated reasoning with rational underpinning
to support a legal conclusion of obviousness. See id. at 418. The Appellant
does not provide sufficient evidence or technical reasoning why the
Examiner’s reasons are in error. See In re Eli Lilly & Co., 902 F.2d 943, 945
(Fed. Cir. 1990). Rather, the Appellant simply argues that “a person of
ordinary skill in the art would not have been motivated to combine
Brakensiek with White at the time of the invention.” Appeal Br. 6; see also
Reply Br. 3. The Appellant’s argument amounts to an argument that the
Examiner’s reasoning is in error because the cited references do not
explicitly provide a motivation to arrive at the proposed combination.
However, there is no rigid requirement that the prior art explicitly disclose a
particular benefit. As our reviewing court has stated:
KSR expanded the sources of information for a properly flexible
obviousness inquiry to include market forces; design incentives;
the “interrelated teachings of multiple patents”; “any need or
problem known in the field of endeavor at the time of invention
and addressed by the patent”; and the background knowledge,
creativity, and common sense of the person of ordinary skill.
Appeal 2019-004945
Application 14/636,811

10
Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (citing KSR, 550 U.S. at 418–21). The Appellant fails to address why
the Examiner’s articulated reasoning is incorrect, is based on the Appellant’s
Specification, or is otherwise ineffective to support the conclusion of
obviousness. We note that the Appellant does not argue that the ways of
detecting of Brakensiek and White are not equivalents or that the
substitution of those ways would lead to an unpredictable result.
The Appellant’s further argument that the combination of Brakensiek,
White, and Tan does not teach the message displayed “in order to reduce
driver distraction from the road” (Appeal Br. 8) is also unpersuasive of error.
We note that this element is an intended use of the message displayed and
that the content of the message itself does not differentiate the claimed
subject matter from the prior art. Brakensiek’s liability waiver and Tan’s
message to use a hands-free device (Final Act. 8) are capable of being
displayed for the purpose of reducing distraction from the road, i.e., by
acknowledging the dangers of using the phone and suggesting a safer way of
doing so.
Therefore, we are not persuaded of error in the Examiner’s rejection
of independent claim 21, and we sustain the rejection. The Appellant does
not present separate arguments against the rejection of dependent claims
23–25 (see Appeal Br. 12), and thus, we also sustain that rejection.
Claims 27–29 and 31
The Appellant contends that the Examiner’s rejection of independent
claim 27 is in error for the same reasons the rejection of independent
claim 21 is in error. See Appeal Br. 10. We are not persuaded of error by
this argument for the reasons discussed above with reference to claim 21.
Appeal 2019-004945
Application 14/636,811

11
We are also not persuaded of Examiner error by the Appellant’s
argument that “Tan fails to disclose displaying a message requesting the
occupant to provide a voice command.” Id. The Examiner finds that Tan
teaches this limitation at Figure 5 and paragraphs 23 and 60. Final Act. 12.
Those portions of Tan disclose displaying a request to use a hands-free
operation (Tan, Fig. 5, ¶ 60) and a microphone disposed within the
instrument panel to receive from a user voice input such as for hands-free
telephone use (id. ¶ 23). As such, the evidence supports the Examiner’s
finding that Tan’s display of a message to use a hands-free operation which
requires using a microphone that receives voice input for hands-free use
teaches displaying a message requesting the user provide a voice command.
Therefore, we are not persuaded of error in the Examiner’s rejection
of independent claim 27, and we sustain the rejection. The Appellant does
not present separate arguments against the rejections of dependent claims 28,
29, and 31 (see Appeal Br. 12), and thus, we also sustain those rejections.
Claims 32–34
The Appellant contends that the Examiner’s rejection of independent
claim 32 is in error for the same reasons the rejection of independent
claim 21 is in error. See Appeal Br. 11. We are not persuaded of error by
this argument for the reasons discussed above with reference to claim 21.
We are also not persuaded of Examiner error by the Appellant’s
argument that “[n]either Brakensiek nor White discloses or would have
rendered obvious the features of claim 32” of
wherein “the electronic device is configured to detect the first
signal being transmitted by the electrode and in response to
detecting the first signal automatically establish a two way
communications connection with the HMI device; and the HMI
Appeal 2019-004945
Application 14/636,811

12
device is configured to operate in a restricted mode after
receiving a notification signal from the electronic device
indicating the first signal is being carried from the first electrode
to the electronic device via the driver in order to reduce driver
distraction from a road [emphasis added].
Id. Rather than distinctly pointing out the Examiner’s supposed errors, the
Appellant recites the claim language and summarily concludes that the
references do not meet the quoted claim language. The Appellant provides
no argument or technical reasoning to identify error in the Examiner’s
determination that these feature are taught by the combination of
Brakensiek’s teaching that “the HMI device is configured to operate in a
restricted mode after determining that a driver is using the mobile device in
order to reduce driver distraction from a road” (Final Act. 19 (emphasis
omitted) (citing Brakensiek Fig. 5, ¶ 51)) and White’s teaching that “the
electronic device is configured to operate in a restrict mode after receiving
the first signal from the first electrode” (id. at 19–20 (citing White ¶ 27)).
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Therefore, we are not persuaded of error in the Examiner’s rejection
of independent claim 32, and we sustain the rejection. The Appellant does
not present separate arguments against the rejections of dependent claims 33
and 34 (see Appeal Br. 12), and thus, we also sustain those rejections.
Claims 22, 26, 30, and 35
We are persuaded of error in the Examiner’s rejection of dependent
claims 22, 30, and 35 by the Appellant’s argument that “none of the prior art
Appeal 2019-004945
Application 14/636,811

13
discloses an occupant ‘carrying the second signal to the HMI device’” in that
“[t]here is no disclosure in either [the Fyke or Chien] reference of a system
that operates based on a signal to a second electrode being carried by an
occupant to the HMI device and an HMI device configured to function
based on receipt of that signal,” as required by these claims. Appeal
Br. 12–13.
The Examiner acknowledges that Brakensiek, White, and Tan do not
teach a second signal, the signal generating device “configured to provide a
second signal to the second electrode,” and the HMI device configured “to
only receive tactile commands from an occupant carrying the second signal
to the HMI device,” as required by claims 22, 30, and 35. Final Act. 13,
16–18, 21–23. The Examiner relies on Fyke for teaching the second
electrode and signal generating device configured to provide a second signal
to the second electrode, concluding that one of ordinary skill in the art would
“modify the system and the method of Brakensiek, White, and Tan to
include the method of Fyke of providing a second electrode under the
passenger’s seat to detect whether the passenger is possessing the mobile
phone . . . to accurately detect whether a passenger is possessing the mobile
device.” Id. at 13–14, 16–17, 21–22. The Examiner relies on Chien for
teaching the HMI device configured to only receive tactile commands from
an occupant carrying the second signal, concluding one of ordinary skill
would “modify the system and the method of Brakensiek, White, Tan, and
Fyke to include the method of Chien of allowing a non-driver to use tactile
commands . . . to enable the passenger to safely control the system.” Id.
at 14, 18, 23.
Appeal 2019-004945
Application 14/636,811

14
Fyke teaches that a “method and system are presented for restricting
the use of a portable electronic device by a driver who is operating a
vehicle.” Fyke, Abstract. A “signal from the vehicle device 80 is
transmitted across the surface of the skin of the driver 90 when the driver 90
is in close proximity with the vehicle device 80” through the use of a
receiver including a detection electrode, a controller, and a ground electrode.
Id. ¶ 48. “In some embodiments, the vehicle device 80 may have multiple
transmitters and/or transceivers located near every vehicle occupant,
including both the driver and passengers.” Id. ¶ 61. “Different restricted
modes will be sent to the portable electronic devices 100 of different
occupants,” such as driver and passenger modes. Id. “The passenger modes
will typically include minor restrictions, such as disabling any camera on the
portable electronic device 100.” Id.
Chien teaches “a method of controlling interaction between a mobile
electronic device and a[n] in-vehicle electronic system.” Chien, Abstract.
“[I]n response to the mobile electronic device attaching to the in-vehicle
electronic system, the operation for the driver role could be restricted in
several ways,” such as locking, deactivating input into, or interrupting the
interaction from the driver to the touch screen of the driver in-vehicle
system. Id. ¶ 27. “[I]f the mobile electronic device attaches to a non-driver
in-vehicle electronic system instead, the user is free to operate the touch
screen and bottoms of the non-driver in-vehicle electronic system.” Id.
In another exemplary embodiment, the mobile electronic device
would not restrict access by choosing not to access certain
programs or by blocking certain functions and notifications. But
instead, the in-vehicle electronic system would restrict the
transmission and reception of data with the mobile electronic
device if the role of in-vehicle electronic system is the driver in-
Appeal 2019-004945
Application 14/636,811

15
vehicle electronic system and the in-vehicle electronic system
would not restrict the transmission and reception of data with the
in-vehicle electronic system if the in-vehicle electronic system
were the passenger in-vehicle electronic system.
Id. ¶ 66.
We agree with the Appellant that Fyke does not teach configuring the
vehicle device, i.e., the HMI device (Appeal Br. 12–13); rather, Fyke teaches
configuring restrictions on the portable electronic device based on whether
the second signal is a passenger or driver. We also agree with the Appellant
that Chien teaches the passenger, i.e., second signal, configuring a second
vehicle system to receive tactile commands, not the one HMI device
claimed. See id. at 13. The Examiner does not adequately show how one of
ordinary skill in the art would combine the system of Brakensiek/White/Tan
with one HMI device as modified by Fyke’s system with a second signal and
Chien’s system of at least two HMI devices — one for the driver and one for
the passenger — such that the one HMI device would accept tactile input
only from the passenger, as required by the claims.
Therefore, we are persuaded of error in the Examiner’s rejection of
dependent claims 22, 30, and 35, and we do not sustain the rejection of these
claims and of claim 26, that depends from claim 22.

CONCLUSION
The Examiner’s decision to reject claims 21, 23–25, 27–29, and
31–34 under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s decision to reject claims 22, 26, 30, and 35 under
35 U.S.C. § 103(a) is reversed.

Appeal 2019-004945
Application 14/636,811

16
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 27, 28 103 Brakensiek, White,
Tan
21, 27, 28
22, 26, 30,
35
103 Brakensiek, White,
Tan, Fyke, Chien
22, 26, 30,
35
23–25 103 Brakensiek, White,
Tan, Chien
23–25
29, 31 103 Brakensiek, White,
Tan, Fyke
29, 31
32 103 Brakensiek, White, 32
33 103 Brakensiek, White,
Fyke
33
34 103 Brakensiek, White,
Chien
34
Overall
Outcome
21, 23–25,
27–29,
31–34
22, 26, 30,
35

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 IN PART