Ex Parte Bannick et al

Patent Trial and Appeal Board

Mar 17, 2016

12201913 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/201,913 08/29/2008
73811 7590 03/21/2016
Leydig, Voit & Mayer, Ltd,
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Robert C. Bannick
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
263786 1326
EXAMINER
TRAN,PAULP
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
03/21/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. BANNICK and MATT C. VIDETICH
Appeal2014-004905
Application 12/201,913
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004905
Application 12/201,913
l. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
A. INVENTION
According to Appellants, the claimed invention relates to "user-
defined satellite radio filtering in a satellite radio system including receiving,
at the satellite radio system, a user-defined filter specifying one or more
satellite channels to block and, when receiving satellite radio signals,
making the one or more satellite channels to block unavailable for listening
by the user." Spec. i-f 4.
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
~. A method of providing user-defined satellite radio
filtering in a satellite radio system of a vehicle comprising:
receiving at the satellite radio system a plurality of user-
defined filter files specifying one or more satellite channels to
block;
recording the plurality of user-defined filter files
specifying one or more satellite channels to block;
receiving an input designating one of the plurality ofuser-
defined filter files as an active user-defined filter file; and
when receiving satellite radio signals, making the one or
more satellite channels to block unavailable for listening for a
particular zone within the vehicle according to the active
user-defined filter file.
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Appeal2014-004905
Application 12/201,913
C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Rinds berg
Kwon
US 2003/0125033 Al
US 7,107,071 Bl
July 3, 2003
Sept. 12, 2006
Claims 1-5, 7-12, and 14 stand rejected under 35 U.S.C. 102(b) as
being anticipated by Rindsberg.
Claims 6 and 13 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Rinds berg and Kwon.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
Rindsberg discloses "when receiving satellite radio signals, making the one
or more satellite channels to block unavailable for listeningfor a particular
zone within the vehicle according to the active user-defined filter file"
(claim 1, emphasis added).
III. ANALYSIS
Appellants contend "Rindsberg simply does not describe channel-
blocking with respect to a particular zone within the vehicle. All of the
passages of Rinds berg relied upon by the Office Action describe blocking or
allowing channels with respect to the entire vehicle" (App. Br. 5, emphasis
omitted). Appellants further contend "[t]he Office Action cannot sidestep
these deficiencies of Rinds berg by utilizing an interpretation of claim 1 that
renders the 'particular zone within the vehicle' element of claim 1 entirely
meaningless. Such an interpretation of claim 1 is not reasonable" (Id.).
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Appeal2014-004905
Application 12/201,913
We have considered all evidence presented and all arguments actually
made by Appellants. However, we disagree with Appellants' contentions
regarding the Examiner's rejections of the claims.
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See 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 specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
Although Appellants contend "Rindsberg simply does not describe
channel-blocking with respect to a particular zone within the vehicle" (App.
Br. 5, emphasis omitted), we note claim 5 does not define a "particular
zone." Further, we note the portions of the Specification identified by
Appellants (App. Br. 2) do not define a "particular zone." In fact, we do not
find any mention of a "zone" in the identified portions of the Specification.
Although Appellants also contend "[a]ll of the passages of Rindsberg
relied upon by the Office Action describe blocking or allowing channels
with respect to the entire vehicle" (App. Br. 5, emphasis omitted),
Appellants appear to contend that a "particular zone" cannot be a zone
which covers the entire vehicle. However, nothing in the claim precludes a
"particular zone within the vehicle" from encompassing a zone covering the
entire vehicle that is blocked for listening. That is, since the Specification
gives only a non-limiting example of what the contested phrase may mean
by this limitation (Spec. i-f 5), given the broadest reasonable interpretation,
we conclude that a "particular zone" is sufficiently broad enough to
encompass a zone that covers the entire vehicle.
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Appeal2014-004905
Application 12/201,913
Furthermore, even assuming arguendo our reviewing court were to
interpret a "particular zone within a vehicle" as less than a zone covering the
entire vehicle, we conclude claim 1 's contested limitation "making the one
or more satellite channels to block unavailable for listening for a particular
zone" does not preclude "blocking or allowing channels with respect to the
entire vehicle" (App. Br. 5, emphasis omitted), as Appellants are contending.
That is, the claim does not require blocking/allowing channels for only a
particular zone, and thus, does not preclude blocking/ allowing channels for
the particular zone in addition to the other zones in the entire vehicle. In
other words, when the channels for the entire vehicle are blocked, the
blocked channels would be unavailable for listening for the particular zone
as well as the other zones in the entire vehicle.
We agree with the Examiner that the disputed limitation is not clearly
defined in the Appellants' Specification (Ans. 11). In particular, we do not
find the Examiner's interpretation of a "particular zone" as "the particular
zone within with [sic] the vehicle is located as the radio receiver within the
vehicle's location is detected," and/or as the zone within which "the vehicle
is located within a cell site of a communication system," as overly broad or
unreasonable (Ans. 10-11). That is, Appellants have not cited to a definition
of "a particular zone" within the vehicle in the Specification that would
preclude the Examiner's broader reading.
Furthermore, as the Examiner points out, the Specification does not
describe how the system is able to differentiate the rear-seat area from the
front-seat area. (Ans. 11). 1 We also note the Specification is silent as to
1 Regarding descriptions in the Specification that are not definitions or clear
and unambiguous disclaimers, our reviewing "court has repeatedly
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Appeal2014-004905
Application 12/201,913
how zones are determined and blocked in a vehicle. We also agree with the
Examiner that the Specification does not describe or specify support on how
the radio system determines different zones within the vehicle. (Final
Act. 3, Ans. 11).2 Thus, we agree with the Examiner's finding "[s]ince
Rindsberg['s] teaching discloses a similar system ... ; Rindsberg's
teachings ... therefore anticipate all limitations of claim 1" (Ans. 11)
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on Rindsberg to disclose the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting finding of anticipation.
Accordingly, we sustain the Examiner's anticipation rejection of
independent claim 1. As Appellants have not provided separate arguments
with respect to independent claim 8, or dependent claims 2-5, 7, 9-12,
and 14, we similarly sustain the Examiner's rejection of these claims under
35 U.S.C. § 102(b). We also sustain the Examiner's rejection, under 35
U.S.C. § 103(a), of claims 6 and 13, notseparately-argued.
IV. CONCLUSION AND DECISION
We affirm the Examiner's decision rejecting claims 1-14.
'cautioned against limiting the claimed invention to preferred embodiments
or specific examples in the specification."' Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)).
2 In the event of further prosecution of this application, we leave it to the
Examiner to consider whether this claim complies with the enablement
requirement pursuant to § 112, first paragraph.
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Appeal2014-004905
Application 12/201,913
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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