Ex Parte Banet et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201311526497 (P.T.A.B. Feb. 6, 2013) Copy Citation 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. 11/526,497 09/25/2006 Matthew Banet 0308816.0196 2832 39894 7590 02/06/2013 HUGHES TELEMATICS, INC. 2002 Summit Blvd Suite 1800 ATLANTA, GA 30319 EXAMINER ISSING, GREGORY C ART UNIT PAPER NUMBER 3646 MAIL DATE DELIVERY MODE 02/06/2013 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 MATTHEW BANET, LARKIN LOWREY, PAUL WASHICKO, and MICHAEL O’BRIEN ____________________ Appeal 2010-005372 Application 11/526,497 Technology Center 3600 ____________________ Before: JAMES P. CALVE, LYNNE H. BROWNE, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005372 Application 11/526,497 2 STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 57, 58, 61, 62, 75, 79, and 81 under 35 U.S.C. § 103(a) as being unpatentable over Kapolka (US 2004/0138790 A1; pub. Jul. 15, 2004), Webopedia definitions of chipset and ASIC (Webopedia, http://www.webopedia.com/TERM/A/ASIC.html, date unknown), and Lindenmeier (US 6,140,969; iss. Oct. 31, 2000)12. Claims 1-56, 59, 60, 63- 74, 76-78, and 80 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 61 and 79 are independent. Claim 61, reproduced below, is illustrative of the claimed subject matter: 61. A wireless appliance for monitoring a vehicle, comprising: (a) a microprocessor configured to select a vehicle- communication protocol of a host vehicle and communicate with the host vehicle through the vehicle-communication protocol; (b) a vehicle-communication circuit, in electrical communication with the microprocessor, 1 The Examiner previously cited Robinson (US 2004/0138790 A1; pub. Jul. 15, 2004) in combination with Kapolka, Webopedia, and Lindenmeier in the rejection of claims 57, 58, 61, 62, 75, 79, and 81 (See Final Office Action 6), but has subsequently removed Robinson from the rejection (See Ans. 3). 2 The Examiner previously rejected claims 57, 58, 61, 62, 75, 79, and 81 (mistakenly referencing claim 56 in place of claim 58) under 35 U.S.C. § 103(a) as being unpatentable over Sheth (US 6,405,106 B1; iss. Jun. 11, 2002), Robinson, Webopedia, and Lindenmeier (See Final Office Action 2), but has subsequently withdrawn this rejection (See Ans. 2-3). Appeal 2010-005372 Application 11/526,497 3 configured to collect diagnostic data from the host vehicle using the vehicle-communication protocol, wherein the vehicle-communication circuit is configured to support multiple different vehicle- communication protocols; (c) a satellite modem operating on a satellite network and configured to receive and transmit data collected by the vehicle-communication circuit; and (d) a single chipset that comprises the microprocessor and the satellite modem. OPINION Claims 61 and 79 are each directed to a wireless appliance for monitoring a vehicle and recite “a microprocessor configured to select a vehicle-communication protocol of a host vehicle and communicate with the host vehicle through the vehicle-communication protocol.” (emphasis added). The Examiner finds that the claimed microprocessor is taught by “(a) a processor 300 [in Kapolka] within the OBU that acts as the processing unit of the on-board unit and manages transmission and reception of information between a remote server 202 (Figure 2) and the vehicle 104 [0045].” Ans. 5. The Examiner reasons that “[s]ince the microprocessor controls and manages the data flow and the vehicle communication circuit comprises an interface selectable among a plurality of protocols, the microprocessor is clearly capable of providing the function of selecting a protocol to interface with the host vehicle data bus. Thus, the structure of the claimed apparatus does not distinguish over the prior art.” Ans. 8. Appellants argue that the Examiner “does not show where Kapolka discusses that OBU 105 selects from a plurality of vehicle communication protocols, and then communicates through the selected protocol.” Br. 19. Appeal 2010-005372 Application 11/526,497 4 Appellants explain that “controllers described in [0043] and [0048] [of Kapolka] communicate with each other and with a central controller via a vehicle bus according to a protocol” and that “a manufacturer specific controller is not the same as a protocol of a vehicle.” Br. 22. Based on the understanding of Kapolka outlined above, Appellants contend that “the references do not disclose ‘a microprocessor configured to select a vehicle- communication protocol of a host vehicle and communicate with the host vehicle through the vehicle-communication protocol.’” Br. 25. In response, the Examiner asserts that as set forth in [0048], the vehicle interface, which is coupled to the microprocessor controlling and managing the activities of the OBU, may include a plurality of application specific modules 312, one for each manufacturer specific controller 308/vehicle components within the vehicle. The plurality of possible interfaces include but are not limited to 11780, 11939, 11850, IS09141, and OBDII/CAN which substantially correspond to those envisioned in appellant’s Figure 2 (25a- 25f). In light of the function of the microprocessor for controlling and managing the activities of the OBU, the selection of the specific module 312 by the microprocessor is deemed to be taught therein. Ans. 9. We disagree. Paragraph [0048] of Kapolka describes “one or more application specific modules 312, such as one for each manufacturer specific controller 308 within the vehicle 104.” For example, in a Ford vehicle, the controllers 308 and modules 312 may use a J1850 PWM communication protocol. See Spec. 2. While the OBU 105 of Kapolka includes multiple modules 312 and can support various protocols, there is nothing to suggest that the protocol is selected by the processor 300 or that the OBU 105 (and processor 300) is capable of selecting the protocol. Instead, it seems at least equally likely Appeal 2010-005372 Application 11/526,497 5 that the protocol is predetermined based on a specific vehicle application and that the OBU 105 is programmed accordingly (e.g., OBU 105 for a Ford vehicle may be preprogrammed for a J1850 PWM protocol without any need for the processor 300 to select a protocol). Kapolka also discloses that wireless interface 302 may encapsulate protocol differences among various wireless network devices to provide a standard output to the processor 300. Para. [0044]; see also Para. [0048] (application specific modules 312 contain software code logic to handle interfacing between processor 300 and vehicle data bus 307). For these reasons, we are not convinced that the processor 300 selects or is capable of selecting the protocol as claimed. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Accordingly, we do not sustain the rejection of claims 61 and 79, and claims 57, 58, 62, 75, and 81 which depend from either claim 61 or 79. DECISION We REVERSE the Examiner’s decision to reject claims 57, 58, 61, 62, 75, 79, and 81. REVERSED Klh Copy with citationCopy as parenthetical citation