Ex Parte McCutchen et al

Patent Trial and Appeal Board

Dec 3, 2018

11618186 (P.T.A.B. Dec. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/618,186 12/29/2006
60770 7590 12/05/2018
General Motors Corporation
c/o REISING ETHINGTON P.C.
755 W. Big Beaver Road
Suite 1850
TROY, MI 48084
FIRST NAMED INVENTOR
Shane McCutchen
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.
GP-307979-0ST-ALS 5410
EXAMINER
KING, RODNEY P
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
12/05/2018 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):
stevens@reising.com
USPTOmail@reising.com
USPTOmail@gmx.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE MCCUTCHEN,
NEELIE A. KAPRAL,
CHRISTOPHER L. OESTERLING,
CHESTER A. HUBER,
JOHN J. CORREIA,
WALTER A. DORFSTATTER,
FAHD Z. LAGHRARI, and
STEVEN SAMOLINSKI
Appeal2018-002053 1
Application 11/618, 186
Technology Center 3600
Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1-25, 31, and 32. Final Act. 1 (Office
Action Summary). We have jurisdiction under 35 U.S.C. § 6(b ). For the
1 "The real party in interest is General Motors LLC by virtue of a chain of
title extending back to an original assignment from the inventors."
App. Br. 2. Based on this and the Application Data Sheet dated December
29, 2006, we understand "General Motors LLC" as the Appellant.
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Application 11/618, 186
reasons explained below, we find error in the Examiner's rejection of these
claims. Accordingly, we REVERSE the Examiner's rejection.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to techniques for wirelessly
collecting vehicle information and providing that information to the vehicle
owner or other authorized person." Spec. ,r 2. Method claims 1, 11, and 17
are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A method of providing vehicle information to an owner,
comprising the steps of:
establishing one or more owner-configurable triggers that
are used to initiate the construction of email messages in a first
vehicle system module connected via a vehicle communications
bus to an on-board diagnostics system module and one or more
other vehicle system modules;
monitoring for the occurrence of the trigger(s) and, in
response to determining that at least one of the trigger( s) has
occurred:
receiving vehicle data concerning one or more
vehicle conditions at an electronic message generating system
from a vehicle telematics unit connected to the vehicle
communications bus;
constructing a notification message in the form of
an email message that includes information concerning the one
or more vehicle conditions; and
sending the email message to the owner via an
electronic messaging system.
REFERENCES RELIED ON BY THE EXAMINER
Lowrey et al.
Cutlip
Ohi
Abeska et al.
US 2002/0173885 Al
US 2002/0194395 Al
US 2003/0014661 Al
US 2004/0054444 Al
2
Nov. 21, 2002
Dec. 19, 2002
Jan. 16,2003
Mar. 18, 2004
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Application 11/618, 186
Roberts et al. US 2004/0202001 Al
THE REJECTIONS ON APPEAL
Oct. 14, 2004
Claims 1-10, 31, and 32 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Lowrey and Cutlip.
Claims 11-16 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Abeska and Cutlip. 2
Claims 17-25 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Lowrey, Roberts, Ohi, and Cutlip.
ANALYSIS
The rejection of claims 1-10, 31, and 32
as unpatentable over Lowrey and Cutlip
The Examiner relies on the disclosure of Lowrey for teaching the step
of "establishing one or more triggers" but acknowledges that Lowrey "does
not disclose that the owner of the vehicle configures [the] triggers." Final
Act. 3, 4. The Examiner relies on Cutlip as disclosing this limitation and
explains that it would have been obvious to combine Lowrey and Cutlip so
as "to establish communication between parties." Final Act. 4. Appellant
admits that "Cutlip provides communication from an automated system to
one or more parties. But, so does Lowrey." App. Br. 9 (emphasis added);
see also Reply Br. 4--5. In other words, because Lowrey already establishes
sending an e-mail from a vehicle to an owner or elsewhere (see Lowrey ,r 5),
the Examiner's rationale of combining Lowrey with Cutlip so as to use the
teachings of Cutlip in order to "establish communication between parties" is
2 The Examiner fails to list claim 16, but the Examiner addresses claim 16
in the body of the rejection. See Final Act. 9. Hence we understand the
Examiner's omission to be inadvertent error.
3
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Application 11/618, 186
redundant. Appellant contends, "the Examiner's proffered rationale is
merely a conclusory assertion without any logical connection to why one
would modify Lowrey to operate based on owner-configurable triggers."
App. Br. 9.
The Examiner attempts further clarification stating "a particular
motivation in Cutlip includes e-mail outreach to customers, accomplished in
a timely manner and, preferably, as efficiently as possible [0003]." Ans. 4.
However, as indicated above, Lowrey already discloses sending alert
messages "that are emailed to a vehicle owner" or elsewhere (Lowrey ,r 5),
yet the Examiner does not explain how Lowrey's messaging system is
untimely and/or inefficient which might warrant combination with Cutlip for
improvement purposes. Instead, as expressed by the Examiner, the
Examiner's position is that such combination is deemed to be
reasonable because the modification of the teachings of
[Lowrey] to include the teachings of Cutlip include simply
applying the user input of an email messaging system teaching
of Cutlip [0028, claim 11] to the vehicle system as taught by
[Lowrey].
Ans. 4. Again, the basis for the Examiner's reliance on Cutlip (i.e.,
"applying the user input of an email messaging system") appears redundant
because Lowrey already discloses sending an owner an e-mail alert (see
supra), and for Lowrey's owner to be sent an e-mail, the owner's e-mail
address must first be supplied. In Cutlip, the matter of supplying the
recipient's e-mail address is simply more expressly disclosed in Paragraphs
28 and 33 thereof. 3
3 Paragraph 28 of Cutlip states that user defined function (UDP) "14 obtains
information about the e-mail message to generate, such as the recipient."
4
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Accordingly, the Examiner has not made clear, or otherwise provided
a rational underpinning, as to why one skilled in the art would look to
Cutlip, and/or combine the e-mail teachings of Cutlip with Lowrey, other
than, perhaps, as evidence that supplying an e-mail address is well-known in
the art. 4
Just recently, we have been informed that "[ e ]ven if the prior art
discloses the limitations ... , the prior art [nor the Examiner's reasoning in
this case] does not identify a reason why a POSIT A would have been
motivated to combine those limitations." Hamilton Beach Brands, Inc. v.
F'Real Foods, LLC, No. 2018-1274, 2018 WL 6005016, at *8 (Fed. Cir.
Nov. 16, 2018). Based on the above reasons provided by the Examiner as to
why Cutlip would have been combined with Lowrey, we are not persuaded
that these reasons supply sufficient articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
However, the Examiner also states, almost as an afterthought, that
"[ u ]ser input in an email messaging system is well known in the art, so
making such a modification is deemed as feasible for an ordinary skilled
artisan." Ans. 4. While there is truth to this statement (see above), it is not
clear how the Examiner is relying on this statement ( e.g., is it Official
Notice; is it another ground of rejection; is it expressed to bolster the
Paragraph 33 of Cutlip discusses the UDP passing "e-mail parameters, such
as address of the recipient."
4 We do not address whether supplying an email address amounts to an
"owner-configurable trigger" as required by the claims and whether such
supply is consistent with the terms "owner" and "trigger" as defined in
Appellant's Specification. See Spec. ,r 17.
5
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Application 11/618, 186
teachings of Lowrey, or Cutlip, or both?). In other words, it is not clear how
this statement is to be utilized (i.e., is it intended to be separately addressed
as an alternate rejection or is it intended to support the underlying basis of
the cited art?).
Thus, in summation and based solely on the record presented
regarding the teachings of Lowrey and Cutlip, we do not sustain the
Examiner's rejection of claims 1-10, 31, and 32.
The rejection of claims 11-16
as being unpatentable over Abeska and Cutlip
As above, the Examiner also states that the reason to combine Abeska
and Cutlip is "to establish communication between parties." Final Act. 8.
Appellant similarly asserts that "[t]he rejection of claim 11 does not provide
a valid rationale explaining why one of ordinary skill in the art would
modify the teachings of Abeska and combine them with Cutlip in a way that
would render claim 11 obvious."5 App. Br. 16. For reasons similar to those
already expressed, we are not persuaded the Examiner has provided the
requisite rational underpinning required to support the combination of
Abeska and Cutlip. Accordingly, and based solely on the record presented,
we do not sustain the Examiner's rejection of claims 11-16.
The rejection of claims 17-25
as unpatentable over Lowrey, Roberts, Ohi, and Cutlip
Here, the Examiner also states that the reason to combine these
references with Cutlip is "to establish communication between parties."
Final Act. 11. Again, Appellant contends that "[t]he rejection of
5 Abeska teaches that sending and receiving e-mail messages "using any
suitable messaging protocol ... is well known in the art." Abeska ,r 37.
6
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[independent] claim 17 does not provide a valid rationale." App. Br. 18.
For similar reasons, we are not persuaded the Examiner has provided the
requisite underpinning that is required to reach a conclusion of obviousness
based on the combination of Lowrey, Roberts, Ohi, and Cutlip.
Accordingly, and based on the record presented, we do not sustain the
Examiner's rejection of claims 17-25.
DECISION
The Examiner's rejections of claims 1-25, 31, and 32 are reversed.
REVERSED
7