Ex Parte SchaeferDownload PDFPatent Trial and Appeal BoardFeb 13, 201712845517 (P.T.A.B. Feb. 13, 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. 12/845,517 07/28/2010 MARK S. SCHAEFER P011244-ALS (087.0017) 1120 70422 7590 LKGlobal (GM) 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 02/15/2017 EXAMINER FABBRI, ANTHONY E ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 02/15/2017 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): docketing@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK S. SCHAEFER1 Appeal 2015-000570 Application 12/845,517 Technology Center 2400 Before DANIEL N. FISHMAN, KEVIN C. TROCK, and NABEEL U. KHAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, 7—12, 18—24, 27, and 28, all pending, rejected claims of the application. The sole rejection of claims 25, 26, and 29 was withdrawn (Ans. 2) and, thus, claims 25, 26, and 29 are not the subject of this appeal. We have jurisdiction over the pending, rejected claims under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellant identifies General Motors LLC as the real party in interest. App. Br. 1. Appeal 2015-000570 Application 12/845,517 THE INVENTION Appellant’s invention is directed generally to “methods and systems for facilitating communications between vehicles and service providers.” Spec. 11. Independent claim 1, reproduced below, is illustrative: 1. A method for facilitating communications between a vehicle having a first communication device with a first address and a service provider having a second communication device with a second address, the method comprising the steps of: obtaining the first address and the second address, along with additional vehicle information pertaining to the vehicle and additional service provider information pertaining to the service provider, via a remote server at a remote location that is remote to both the vehicle and the service provider; generating a set of pairing keys via the remote server using the first address and the second address, the set of pairing keys comprising: a first key for use by the vehicle in establishing communications with the service provider; and a second key for use by the service provider m establishing communications with the vehicle; providing the first key to the vehicle; providing the second key to the service provider; and facilitating information flow between the vehicle and the service provider via the remote server using the additional vehicle information and the additional service provider information. 2 Appeal 2015-000570 Application 12/845,517 THE REJECTIONS Claims 1, 8, 11, and 17—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Oesterling (US 2005/0136892 Al; June 23, 2005) and Arai (US 2003/0115460 Al; June 19, 2003). Final Act. 5—14. Claims 2, 7, 9, 10, 12, 21—24, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Oesterling, Arai, and Sampson (US 2004/0073621 Al; Apr. 15, 2004). Final Act. 17-25. ANALYSIS Only those arguments actually made by Appellant have been considered in this Decision. Arguments that Appellant did not make in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Initially we note that the Examiner’s Answer frequently modified the citations in the references relied upon as compared to the citation relied upon in the Final Office Action rejections. Appellant responded to such modified rejections in its Reply Brief. Thus, our analysis addresses the rejections as modified in the Examiner’s Answer and Appellant’s arguments as presented principally in the Reply Brief.2 Rejection over Oesterling and Arai In rejecting claim 1, the Examiner finds Oesterling teaches obtaining first and second addresses and additional information, as recited in claim 1 (Final Act. 5—6) and finds Arai, in combination with Oesterling, teaches 2 Although we considered all of Appellant’s arguments in both the Appeal Brief and the Reply Brief, we do not address Appellant’s arguments in the Appeal Brief that are mooted by the Examiner’s modifications to the rejections in the Answer. 3 Appeal 2015-000570 Application 12/845,517 generation of the first and second key and providing the keys to the vehicle and service provider, respectively {id. at 6—8). In the Answer, the Examiner identifies Oesterling’s service center 270 (also referred to as “call center” or “web portal”) as the claimed remote server. Ans. 2—3. The Examiner further clarifies that Oesterling teaches a first address as media access address 221 (“MAC address”) of telematics device 220 in vehicle 210 (Ans. 3 (citing Oesterling H 31, 32, 46, Fig. 2)) and teaches the additional vehicle information as the “vehicle data” {id. (citing Oesterling 120); see also 131). The Examiner further finds that the recited service provider is taught as wireless access point 250 (“WAP”), finds the recited second address reads on the service set identifier (“SSID”) of the WAP, and finds the recited additional service provider information taught as the wireless equivalent privacy key 252 (“WEP key”) associated with WAP 250. Ans. 3 (citing Oesterling || 32, 38). Further, although the Examiner finds Oesterling generally teaches the recited first key (Final Act. 6 (citing Oesterling || 3,38)) and second key {id. (citing Oesterling | 5)), the Examiner relies on Arai, in combination with Oesterling, to teach the recited first and second keys being generated by a remote server and provided to the vehicle and service provider from the remote server (Final Act. 6—8). Appellant argues “it would be inconsistent to consider the WEP key of Oesterling as both the ‘additional service provider information’ and the ‘service provider key’.” Reply Br. 2. Specifically, Appellant contends “if the service provider key is ‘obtained’ by the remote server, then the service provider would not be considered to have ‘generated’ the service provider 4 Appeal 2015-000570 Application 12/845,517 key as recited in Appellant’s independent Claims 1,11, and 18, and vice versa.” Id. at 2—3. We are unpersuaded by Appellant’s argument. Although the Examiner’s rejection finds keys are generally disclosed in Oesterling (Final Act. 6), the Examiner relies on Arai, not Oesterling, in the proposed combination for disclosing the recited first and second keys and generation {id. at 5—8). Thus, Appellant’s argument is not responsive to the Examiner’s rejection (as modified in the Answer). We find Appellant’s other arguments relating to the Examiner’s original rejection (App. Br. 5—6) are unpersuasive as mooted by the Examiner’s revisions to the rejection. In view of the above discussion, we are not persuaded the Examiner erred in rejecting independent claim 1. Independent claims 11 and 18 include similar recitations, are rejected for essentially the same reasons as claim 1 (Final Act. 8—11), and Appellant presents essentially the same arguments as for claim 1 (App. Br. 10-12, 14, 15). Thus, for the same reasons as claim 1, we are unpersuaded of Examiner error in the rejection of claims 11 and 18. Appellant does not separately argue the rejection of claims 8, 17, 19, and 20, dependent variously from claims 1 and 18. See App. Br. 6. Therefore, we sustain the rejection of claims 1, 8, 11, and 17— 20. Rejection over Oesterling, Arai, and Sampson Claim 9 Claim 8 depends from claim 1 and further recites, in part, “providing instructions to facilitate a flow of information.” Claim 9 depends from claim 8 and further recites “the step of providing instructions comprises the step of providing a sequence of queries from the remote server to the service 5 Appeal 2015-000570 Application 12/845,517 provider using the additional vehicle information for use in obtaining the information from the vehicle.” The Examiner finds Sampson, in combination with Oesterling and Arai, teaches this feature as pre-purchased tokens that the owner of a vehicle may use to buy services from a service provider. Ans. 7. Specifically, the Examiner finds, “The sequence of queries are demonstrated in these cited sections as part of the purchasing arrangement to procure the tokens for the service provider by paying the remote server via a sequence of queries and having the electronic tokens be possessed by the vehicle. (Sampson, Paragraphs [0217] and [0219].)” Id. at 7-8. Appellant argues the cited portions of Sampson fail to disclose any “sequence of queries” as claimed. Reply Br. 3. We agree with Appellant that the Examiner has erred. The Examiner’s cited portions of Sampson teach transactions to add prepaid services to a token and transactions to use the token for obtaining the prepaid services. Nothing in these teachings suggests a “sequence of queries” let alone such a series that uses the additional vehicle information as claimed. Thus, on the record before us, we do not sustain the rejection of claim 9. Claims 10 and 23 Claim 10 depends from claim 8 and further recites “wherein the step of providing instructions comprises the step of providing a description of goods or services offered by the service provider from the remote server to the vehicle using the additional service provider information.” As above for claim 9, the Examiner finds Sampson, in the proposed combination, teaches this feature as pre-purchased tokens that the owner of a vehicle may use to 6 Appeal 2015-000570 Application 12/845,517 buy services from a service provider (e.g., to enter a parking garage). Final Act. 19 (citing Sampson H 219, 246, 247, 254); see also Ans. 9. Appellant argues, Appellant respectfully asserts that the mere providing of services using a pre-approved payment system is not what is recited in Appellant’s Claim 10. Rather, Appellant’s Claim 10 specifically recites the providing of a description of goods or services offered by the service provider from the remote server to the vehicle using the additional service provider information (from Claim 1), which is not disclosed in Sampson. Reply Br. 4 (emphasis omitted). We agree with Appellant that the Examiner erred. Nothing in the cited teachings of Sampson suggests providing a description of goods and services as claimed. Thus, on the record before us, we do not sustain the rejection of claim 10. Claim 23 depends from claim 1, includes similar recitations to claim 10, was rejected for essentially the same reasons (Final Act. 21; Ans. 10—11), and Appellant presents essentially the same arguments (Reply Br. 5). Thus, for the same reasons as claim 10, we do not sustain the rejection of claim 23. Claims 21 and 27 Claim 21 depends from claim 1 and further recites “pairing the vehicle and the service provider via the remote server using the additional vehicle information and the additional service provider information.” Claim 27 depends from claim 11 and includes a similar limitation. The Examiner revises the rejection in the Answer and finds Oesterling discloses “[ojnce the vehicle has been given enough information to communicate with the service provider and the service provider has enough information to communicate 7 Appeal 2015-000570 Application 12/845,517 with the vehicle, communication can thus be established between them, and the two devices have thus been ‘paired’ for communication.” Ans. 9 (citing Oesterling || 37—39). Appellant argues Oesterling fails to disclose that the pairing of the vehicle and the service provider (WAP) is done by the remote server using the additional information as recited. Reply Br. 4—5. We are not persuaded by Appellant’s argument. Appellant’s Specification defines pairing, stating, “as used herein, two communication devices are typically considered to be ‘paired’ when an arrangement is established whereby the two communication devices communicate with each other and establish a connection.” Spec. 12. Oesterling paragraph 38 clearly discloses the vehicle and the WAP are “paired” as the user has defined the term and discloses that the service center (remote server) provides information to the vehicle and to the WAP to enable pairing between the vehicle and the WAP. Broadly but reasonably interpreted, the recited use of the additional vehicle information and additional service provider information, encompasses the information provided by Oesterling’s service center (remote server). In view of the above discussion, we sustain the rejection of claim 21 and, for the same reason, we sustain the rejection of claim 27. Claim 22 Claim 22 depends from claim 1 further reciting “wherein the additional vehicle information comprises a history of the vehicle.” The Examiner modifies the rejection in the Answer and finds Oesterling teaches this feature because updating the vehicles’ software from a previous version 8 Appeal 2015-000570 Application 12/845,517 to a newer version requires tracking which version needs to be sent to the vehicle “which is part of the history of the vehicle.” Ans. 10. Appellant argues “there is no disclosure in Oesterling that a software update comprises a history of the vehicle, nor that such a history of the vehicle is used in the context of the ‘additional vehicle information’ of Appellant’s Claim 1 (from which Claim 22 depends).” Reply Br. 5. We are persuaded by Appellant’s argument. The Examiner’s interpretation of “vehicle history” as reading on the software update feature of Oesterling is unreasonably broad. Thus, we do not sustain the Examiner’s rejection of claim 22. Claims 24 and 28 Claim 24 depends from claim 1 and further recites “wherein the first address corresponds to a mapping of a vehicle identifier of the vehicle and a telematics unit identifier of a telematics unit of the vehicle.” Claim 28 depends from claim 11 and provides a similar recitation to claim 24. The Examiner finds Sampson teaches this feature as using tokens for prepaid services for a vehicle to enter a parking lot or authorizing a user to enter a rental car. Final Act. 21—22 (citing Sampson H 219, 249, 250; Oesterling 113, 38); see also Final Act. 23; Ans. 11—12. Appellant argues the cited portions of Oesterling and Sampson fail to disclose the recited mapping of the first address. App. Br. 9, 13, 14; see also Reply Br. 6. We are persuaded by Appellant’s argument that the Examiner has erred. We discern no suggestion of the recited mapping of the first address 9 Appeal 2015-000570 Application 12/845,517 in the citations relied upon in the rejection. Thus, we do not sustain the rejection of claims 24 and, for the same reason, claim 28. Claims 2, 7, and 12 Appellant does not separately argue the rejection of dependent claims 2 and 7, dependent from claim 1, and 12 dependent from claim 11. Thus, for the same reasons as their respective base claims, we sustain the rejection of claims 2, 7, and 12. DECISION We affirm the Examiner’s decision rejecting claims 1,2, 7, 8, 11, 12, 18-21, and 27. We reverse the Examiner’s decision rejecting claims 9, 10, 22—24, and 28. 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-IN-PART 10 Copy with citationCopy as parenthetical citation