Ex Parte Sultan et alDownload PDFPatent Trial and Appeal BoardMay 2, 201612150872 (P.T.A.B. May. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/150,872 05/01/2008 89980 7590 05/04/2016 NSIPLAW P.O. Box 65745 Washington, DC 20035 FIRST NAMED INVENTOR Michel F. Sultan 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. 012055.0252 8763 EXAMINER BUGG, GEORGE A ART UNIT PAPER NUMBER 2682 NOTIFICATION DATE DELIVERY MODE 05/04/2016 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): pto@nsiplaw.com pto.nsip@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte MICHEL F. SULTAN, DALE L. PARTIN, and LACI J. JALICS Appeal2014-008539 Application 12/150,872 Technology Center 2600 Before ROBERT E. NAPPI, LARRY J. HUME, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-27, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Delphi Technologies, Inc. ("Delphi"), as the real party in interest. Br. 1. Samsung Electronics Co., Ltd. claims to have been assigned Delphi's interest in the application by virtue of an assignment recorded on June 30, 2014. Appeal2014-008539 Application 12/150,872 THE INVENTION The disclosed and claimed invention is directed to a remote monitoring, interrogation and control apparatus using a nomadic device. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for bi-directionally communicating signals between a wireless nomadic device and a wireless function control device integrated with a vehicle, the apparatus compnsmg: the nomadic device being a commercially available nomadic device having a unique cellular number or IP address with substantially unchanged original software and hardware operative to communicate with the function control device having a separate unique cellular number or IP address, said function control device operative to receive signals from said nomadic device and vehicle sensors/devices, to process said received signals, and to generate responsive output signals to said nomadic device and vehicle sensors/ devices as a function thereof, wherein communication between said nomadic device and said function control device may be initiated by either said nomadic device or said function control device. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Hatae et al. US 2002/0115423 Al Aug.22,2002 Ogawa et al. US 2003/0058486 Al Mar. 27, 2003 Nascimento US 2004/0145491 Al July 29, 2004 Ochi et al. US 2005/0143141 Al June 30, 2005 Tarle US 2006/0114250 Al June 1, 2006 Plante US 2007/0136078 Al June 14, 2007 Nagy US 2008/0015748 Al Jan. 17,2008 Tada et al. US 2010/0046451 Al Feb.25,2010 2 Appeal2014-008539 Application 12/150,872 Nicholas et al. 2 Arita GB 2 387 501 A Oct. 15, 2003 JP 2005-151384 June 9, 2005 REJECTIONS Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagy in view of the Nagy Other Embodiment ("NOE"). Final Act. 2-6. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagy in view of NOE and Hatae. Final Act. 6-7. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagy in view of NOE and Ochi. Final. Act. 7-8. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagy in view of NOE and Nascimento. Final Act. 8-10. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagy in view of NOE and Plante. Final Act. 10-11. Claims 13, 21, 22, 25, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nicholas in view of Arita. Final Act. 11-14. Claims 14--19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nicholas in view of Arita and Nagy. Final Act. 14--17. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nicholas in view or Arita and Ochi. Final Act. 17-18. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nicholas in view of Arita and Ogawa. Final Act. 18-19. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nicholas in view of Arita and Tada. Final Act. 19-20. 2 The Final Action, the Appeal Brief and the Answer refer to "Nicholas" as "Andrew." 3 Appeal2014-008539 Application 12/150,872 Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nicholas in view of Arita and Tarle. Final Act. 20-21. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. See 37 C.F.R. § 41.37(c)(l)(vii); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BP AI 2010) (precedential) ("Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue ... the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection."). We disagree with Appellants' arguments regarding claims 1- 27. Claims 1-12 Appellants argue Nagy does not teach or suggest a nomadic device that has "substantially unchanged original software and hardware" as recited in claim 1. Br. 14--15. Specifically, Appellants argue the Examiner finds "that Nagy teaches 'a dynamically configurable software application and an application programming interface coupled to the handheld device."' Br. 15 (quoting Final Act. 3). The Examiner finds Nagy teaches using "substantially unchanged original software and hardware operative to communicate with the function 4 Appeal2014-008539 Application 12/150,872 control device" as recited in claim 1. Final Act. 2-3. The Examiner further finds that neither the addition of applications and APis nor dynamic configuration of a device and a device with an application programming interface constitute a substantial change. Ans. 24. Appellants have not persuaded us that the Examiner erred. Instead, for the reasons set forth in the Final Action and the Answer, we agree with and adopt the Examiner's conclusions and findings. Appellants further assert that two additional limitations are not taught or suggested by Nagy. See Br. 15. The entirety of the argument is as follows: "Furthermore, the communication between the nomadic device and the wireless function control is 'bidirectional' and each element has a separate and unique cellular number or IP address. Nagy fails to disclose or suggest these limitations." Br. 15. However, Appellants have not identified any errors in the Examiners findings on those limitations. Instead, Appellants merely quote or summarize the claim language and make a naked assertion that the prior art does not teach the limitation. That is insufficient to raise an argument that that Examiner erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires "more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."); see also 37 C.F.R. § 41.37(c)(l)(vii) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); Ex Parte Belinne, Appeal 2009-004693, 2009 WL 2477843, at *4 (BP AI 2009) (informative) (Not considering argument when Appellants merely "restates elements of the claim language and simply argues that the 5 Appeal2014-008539 Application 12/150,872 elements are missing from the reference ... [without] present[ing] any arguments to explain why the Examiner's explicit fact finding is in error."). Because the Examiner has not identified any specific errors in the Examiner's findings, "the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection." Frye, 94 USPQ2d at 1075. Accordingly, we sustain the Examiner's rejection of claim 1 and the rejections of claims 2-7, which are not argued separately. With respect to dependent claims 8-12, Appellants merely contend that, because the additional references used in the rejections of these claims (Hatae, Ochi, Nascimento, and Plante) do not cure the deficiencies in claim 1, the Examiner failed to make a prima facie case of obviousness for these claims. Br. 15-17. Because we determine there are no deficiencies associated with claim 1 for the reasons discussed above, we sustain the rejections of these claims. Claims 13-2 7 Appellants argue that neither Nicholas nor Arita teach or disclose "substantially unchanged original software and hardware" as required by claim 13. However, as the Examiner correctly concluded (Ans. 26), claim 13 does not recite that limitation (Br. 26). Because Appellants' arguments are not commensurate with the scope of the claims, they are unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).3 3 Furthermore, we note that Appellants' arguments are directed to the Examiner's findings regarding Nagy. See App. Br. 18 ("The Examiner specifically notes on page 3 of the Office Action that Nagy teaches 'a dynamically configurable software application and an application 6 Appeal2014-008539 Application 12/150,872 Appellants further assert that two additional limitations are not taught or suggested by Nicholas and Arita. The entirety of the argument is as follows: "Furthermore, the communication between the nomadic device and the wireless function control is 'bi-directional' and each element has a separate and unique cellular number or IP address. [Nicholas] and Arita fail to disclose or suggest these limitations." Br. 18 (emphasis omitted). For the reasons discussed above for claim 1, that statement is insufficient to identify any alleged errors in the Examiner's findings. Accordingly, we sustain the Examiner's rejection of claim 13 and the rejections of claims 21, 22, 25, and 27, which are not argued separately. With respect to dependent claims 14--20, 23, 24, and 26, Appellants merely contend that, because the additional references used in the rejections of these claims (Nagy, Ochi, Ogawa, Tada, and Tarle) do not cure the deficiencies in claim 13, the Examiner failed to make a prima facie case of obviousness for these claims. Br. 19-21. Because we determine there are no deficiencies associated with claim 13 for the reasons discussed above, we sustain the rejections of these claims. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1-27. programming interface coupled to the handheld device."'). Because the argument is not directed to the references the Examiner relied on (Nicholas and Arita), and the specific findings related to those references (see Final Act 11-12), the argument would be insufficient to persuade us the Examiner erred even if it were a claim limitation. 7 Appeal2014-008539 Application 12/150,872 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 8 Copy with citationCopy as parenthetical citation