Ex Parte BasirDownload PDFPatent Trial and Appeal BoardMar 29, 201712701817 (P.T.A.B. Mar. 29, 2017) 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. 12/701,817 02/08/2010 Otman A. Basir 67182-005PUS3 1824 26096 7590 03/31/2017 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER DOAN, KIET M ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OTMAN A. BASIR Appeal 2017-000469 Application 12/701,817 Technology Center 2600 Before: DEBRA K. STEPHENS, KEVIN C. TROCK, and JESSICA C. KAISER, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 33—49. Claims 1—32 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-000469 Application 12/701,817 CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to a hands-free vehicle communication system which processes communications from a mobile device (Abstract). Claim 33, reproduced below, is representative of the claimed subject matter: 33. A method for providing communication in a vehicle including the steps of: a) determining that a mobile device is in a vehicle via a wireless connection to the mobile device, wherein the mobile device is a cell phone; b) identifying the mobile device via the wireless connection to the mobile device; c) identifying a user associated with the mobile device based upon the identification of the mobile device in said step b); and d) processing communication intended for the user based upon said step c). The prior art relied upon by the Examiner in rejecting the claims on appeal is: Claims 33, 46, and 50 are rejected under the judicially-created doctrine of non-statutory obviousness-type double patenting over claim 1 of US 7,689,253 B2. (Final Act. 3-5). REFERENCES Eiche Takahashi Yamato Gurbani US 2002/0137505 A1 Sept. 26, 2002 US 2004/0090308 A1 May 13, 2004 US 2004/0204161 A1 Oct. 14, 2004 US 2005/0037762 A1 Feb. 17, 2005 REJECTIONS 2 Appeal 2017-000469 Application 12/701,817 Claims 33—38 and 41—48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yamato and Gurbani (id. at 6—9) Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yamato, Gurbani, and Takahashi (id. at 9—11). Claim 49 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Yamato, Gurbani, and Eiche (id. at 11—12). ISSUE 1 35 U.S.C. § 103(a): Claims 33—49 Appellant contends the invention as recited in claims 33—49, is not obvious over Yamato and Gurbani (App. Br. 2^4; Reply Br. 1—4).1 The issues presented by the arguments are: Issue la: Did the Examiner improperly combine Yamato and Gurbani? Issue lb: Does the combination of Yamato and Gurbani teach, suggest, or otherwise render obvious “the communication is a telephone call,” as recited in claim 42 and similarly recited in claim 44? ANALYSIS We disagree with Appellant’s conclusions and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from 1 Rather than repeat the arguments here, we refer to the Appeal Brief and Reply Brief for the positions of Appellant and the Final Office Action and Answer for the positions of the Examiner. Only those arguments actually made by Appellant have been considered in this decision. Arguments that Appellant did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 3 Appeal 2017-000469 Application 12/701,817 which this appeal is taken (Final Act. 2—12); (2) the findings and reasons set forth by the Examiner in the Advisory Action (Adv. Act. 2); and (3) the findings and reasons set forth by the Examiner in the Answer in response to the Appeal Brief (Ans. 2—5). With respect to the claims argued by Appellant, we highlight and address specific findings and arguments for emphasis as follows. Issue la Appellant contends the Examiner improperly combined Yamato and Gurbani (App. Br. 2^4; Reply Br. 1 4). Specifically, Appellant argues “Yamato and Gurbani, although both for cell phones, are designed for nearly opposite situations” because “Yamato always uses the cell phone for communication” but Gurbani “reroute[s] a text message sent to a cell phone in the event that the cell phone is unavailable'1'’ (App. Br. 3; see Reply Br. 2— 4). Appellant further argues Yamato’s and Gurbani’s “inventions could be implemented on the same cell phone without the two inventions interacting” (App. Br. 4; Reply Br. 1). Additionally, Appellant argues “[tjhere is no reason to modify the inventions,” the Examiner’s “rationale is not clear,” and “Gurbani does not discuss” the Examiner’s stated motivation (App. Br. 4; Reply Br. 2). We are not persuaded. The Examiner finds, and we agree, Yamato teaches a hands-free vehicle communication system which connects to a user’s mobile telephone; when connected, the hands-free system processes telephone calls received by the user’s mobile telephone (Final Act. 6 (citing Yamato Tflf 7—9, 70-72, Fig. 1)). The Examiner further finds Gurbani teaches a message routing system for mobile telephones which identifies the 4 Appeal 2017-000469 Application 12/701,817 user and routes messages intended for the user’s mobile telephone to another device (Ans. 3 (citing Gurbani | 8, Abstract); Final Act. 7 (citing Gurbani 16, 18—20, 22—24)). Based on Gurbani’s teachings, the Examiner modifies Yamato’s hands-free communication system such that the user is identified for processing communications received by the user’s mobile telephone (Final Act. 2, 7; Ans. 4—5). Appellant’s argument that Gurbani “redirects] text messages . . . when the cell phone is not available” (App. Br. 3 (emphasis omitted); see Reply Br. 2 4) inappropriately requires the bodily incorporation of features in Gurbani on which the Examiner does not rely. The Examiner’s combination does not incorporate communication routing when the mobile telephone is unavailable (Ans. 4); instead, the Examiner relies on Gurbani’s teaching that messages are routed based on identified users, for Yamato’s hands-free system to identify users (Final Act. 7; Ans. 3). Furthermore, Appellant’s proffered combination of Yamato and Gurbani, which separately “implement[s] [Yamato and Gurbani] on the same cell phone” (Reply Br. 1; App. Br. 4), does not address the Examiner’s stated modification of Yamato based on Gurbani’s teaching. The Examiner has not nakedly placed Yamato’s system and Gurbani’s system on the same device; rather, the Examiner incorporates Gurbani teachings — identifying a user for communications routing — into Yamato’s hands-free system (Ans. 4—5; see Final Act. 7). Additionally, Appellant’s arguments that the Examiner’s motivation to combine is not clear or is without reason (App. Br. 4; Reply Br. 2) are unpersuasive. The Examiner has articulated reasoning for the combination, supported by rational underpinnings, i.e., “processing the [user’s] 5 Appeal 2017-000469 Application 12/701,817 communication” using a hands-free system “in order to provide . . . safe[], secure, [and] efficient] communication for the user of [the] mobile device when [the user] operat[es]/communicat[es] while driving” (Final Act. 3,7; Adv. Act. 2). Appellant’s arguments do not persuade us the combination is not fairly motivated by the desire to provide security, by identifying which user is using the system; to provide efficiency, by providing a convenient manner of user identification; and to provide safety, by relieving the user of the need to engage with the mobile device while driving. Furthermore, Appellant’s argument that Gurbani itself does not teach the Examiner’s stated motivation (Reply Br. 2), relies on a teaching, suggestion, or motivation standard, which is not required under KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Accordingly, we are not persuaded the combination of Yamato and Gurbani fails to teach, suggest, or otherwise render obvious the limitations as recited in independent claims 33 and 46 and dependent claims 34-41,43, 45, and 47 49, not separately argued. Therefore, we sustain the rejection of claims 33—41, 43, and 45—49 under 35 U.S.C. § 103(a) for obviousness over Yamato and Gurbani. Issue lb Appellant contends the Examiner erred in finding the combination of Yamato and Gurbani teaches, suggests, or otherwise renders obvious “the communication is a telephone call,” as recited in claim 42 and similarly recited in claim 44 (App. Br. 4; Reply Br. 4). Specifically, Appellant argues “Gurbani cannot handle a telephone call when the cell phone is off’ (App. 6 Appeal 2017-000469 Application 12/701,817 Br. 4). Further, Appellant argues Gurbani’s text message is not a telephone call as required by the claim (Reply Br. 4). We are not persuaded. The Examiner finds, and we agree, Yamato teaches a communication is a telephone call (Final Act. 8 (citing Yamato 1 69)). As discussed supra, we agree with the Examiner’s finding that Yamato processes mobile telephone calls using a vehicle’s hands-free communication system. Appellant’s arguments directed to Gurbani’s operation and text communications (App. Br. 4; Reply Br. 4) do not address the Examiner’s reliance on Yamato’s telephonic communication. Indeed, Yamato teaches “a hands-free conversation is started, that is, a conversation using the microphone 4 and speaker 5 of the hands-free unit 2” (Yamato 179). Furthermore, as discussed supra, Appellant’s arguments directed to Gurbani routing messages when Gurbani’s mobile telephone is unavailable inappropriately requires the bodily incorporation of Gurbani into Yamato. Accordingly, we are not persuaded the combination of Yamato and Gurbani fails to teach, suggest, or otherwise render obvious the limitations as recited in claim 42 and 44. Therefore, we sustain the rejection of claims 42 and 44 under 35 U.S.C. § 103(a) for obviousness over Yamato and Gurbani. ISSUE 2 Obviousness-Type Double Patenting: Claims 33, 46, and 50 Issue 2\ Did the Examiner err in rejecting claims 33, 46, and 50 on the ground of obviousness-type double patenting as being unpatentable over claim 1 of US 7,689,253 B2? 7 Appeal 2017-000469 Application 12/701,817 ANALYSIS Claims 33, 46, and 50 were rejected on the ground of nonstatutory obviousness-type double patenting over claim 1 of US 7,689,253 B2 (Final Act. 3—5). Appellant does not challenge the merits of the double patenting rejection (see App. Br. 2-4; see also Reply Br. 1—4); accordingly, we summarily sustain the Examiner’s rejection of claims 33, 46, and 50. DECISION The Examiner’s rejection of claims 33, 46, and 50 under the judicially-created doctrine of nonstatutory obviousness-type double patenting over claim 1 of US 7,689,253 B2 is affirmed. The Examiner’s rejection of claims 33—38 and 41—48 under 35 U.S.C. § 103(a) as being unpatentable over Yamato and Gurbani is affirmed. The Examiner’s rejection of claims 39 and 40 under 35 U.S.C. § 103(a) as being unpatentable over Yamato, Gurbani, and Takahashi is affirmed. The Examiner’s rejection of claims 49 under 35 U.S.C. § 103(a) as being unpatentable over Yamato, Gurbani, and Eiche is affirmed. 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)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation