Ex Parte Basir

Patent Trial and Appeal Board

Mar 29, 2017

12701817 (P.T.A.B. Mar. 29, 2017)

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
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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).
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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
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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]
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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.
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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?
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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
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