FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Dec 10, 2020

2019003920 (P.T.A.B. Dec. 10, 2020)

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.
13/644,779 10/04/2012 David Anthony Hatton 83227751 6305
28395 7590 12/10/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
LUI, DONNA V
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID ANTHONY HATTON
____________________

Appeal 2019-003920
Application 13/644,779
Technology Center 2600
____________________

Before ERIC S. FRAHM, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 17–19, which constitute all pending claims on appeal. Claims 1–16
and 20–24 have been canceled (see Appeal Brief, Claims Appendix, p.1).
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Ford Global Technologies, LLC
(Appeal Br. 1).
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DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention “generally relate[s] to
methods and apparatuses for vehicle enabled visual augmentation” (Spec.
¶ 1). This is done by using wearable visual aid products (e.g., eyeglasses) to
“provide avenues of information presentation to a driver” (Spec. ¶ 2; see
also Figs. 2A, 2B, 5). Sole independent claim 17 is illustrative of the
claimed subject matter:
17. A non-transitory computer-readable storage medium,
storing instructions, which, when executed by a vehicle
computing system, cause the system to perform a method
comprising:
preparing data received from a vehicle subsystem, the
prepared data including representations formatted to be
displayed on one or more eyeglasses;
monitoring a driver-activity level based on driver
interaction with a device communicating with the vehicle
computing system; and
[A] transmitting an amount of the prepared data from the
vehicle subsystem to the eyeglasses to display the data based on
the driver-activity such that as the driver-activity increases the
amount decreases.

Appeal Br., Claims Appendix p. 1 (bracketed lettering and emphasis added).
Notably, the same version of claim 17 of the instant application was the
subject of a prior decision on appeal (Appeal No. 2016-008332 mailed
March 8, 2017) (hereinafter, “Prior Decision”), in which the Board reversed
the Examiner’s obviousness rejection of claims 17–19 over the combination
of Repetto et al. (US 2005/046953 A1; published March 3, 2005)
(hereinafter, “Repetto”) and Talati (US 2013/0038437 A1; published Feb.
14, 2013 and filed Aug. 8, 2011). In the Board’s Prior Decision, the reversal
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of the rejection of claims 17–19 over the combination of Repetto and Talati
was based on a determination that, although Talati taught
presenting/displaying data to a driver based on the appropriateness due to
driver-activity level (see Prior Decision 6), Talati was silent as to
transmitting or not transmitting data to the eyeglasses based on any
determination of appropriateness (see generally Prior Decision 6–7). Upon
further prosecution of claim 17, the Examiner has newly applied Starner et
al. (US 9,230,501 B1; issued Jan. 5, 2016 and filed Dec. 28, 2012 based on
US Provisional Appl. No. 61/584,212 filed on Jan. 6, 2012) (hereinafter,
“Starner”) as teaching or suggesting transmitting the data from the vehicle
subsystem to the eyeglasses for display based on driver-activity level (see
claim 17, limitation A), in place of Talati.

REJECTION
The Examiner made the following rejection:
Claims 17–19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Starner and Repetto. Final Act. 3–6; Ans. 3–4.

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–5)
and the Reply Brief (Reply Br. 2),2 the following principal issue is presented
on appeal:

2 Appellant argues claims 18 and 19 on the same basis as claim 17 (see
Appeal Br. 4–5; Reply Br. 2). Based on Appellant’s arguments, we select
claim 17 as representative of claims 17–19.
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Did the Examiner err in rejecting claims 17–19 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Starner and Repetto
because the combination fails to teach or suggest controlling data
transmission from a vehicle subsystem to eyeglasses based on driver-activity
level, as set forth in representative claim 17?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 3–6) in light
of Appellant’s arguments (Appeal Br. 4–5; Reply Br. 2) that the Examiner
has erred, as well as the Examiner’s response to Appellant’s arguments in
the Appeal Brief (Ans. 3–4). With regard to representative claim 17, we
agree with and adopt as our own the Examiner’s findings of facts and
conclusions as set forth in the Final Rejection (Final Act. 3–5) and Answer
(Ans. 3–4). We provide the following explanation for emphasis only.
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123. In this light, we agree with the Examiner that the combined
teachings and suggestions of Starner and Repetto support the legal
conclusion of obviousness as to claim 17.
It is also well settled that, as part of the obviousness analysis, the prior
art must be viewed in the context of what was generally known in the art at
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the time of the invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013) (“[T]he [KSR] Court required an analysis that reads the
prior art in context, taking account of ‘demands known to the design
community,’ ‘the background knowledge possessed by a person having
ordinary skill in the art,’ and ‘the inferences and creative steps that a person
of ordinary skill in the art would employ.’” (quoting KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007))); In re Taylor Made Golf Company,
Inc., 589 F. App’x 967 (Fed. Cir. 2014) (the Board erred in failing to
consider the prior art in the context of the background knowledge that a
person of ordinary skill in the art would have had).
Art can legitimately serve to document the knowledge that skilled
artisans would bring to bear in reading the prior art identified as producing
obviousness. Randall, 733 F.3d at 1362–63. The Examiner finds (see Ans.
3–4), and we agree, that Starner teaches (i) limiting information displayed to
a user (see Ans. 3–4 citing Starner col. 10, ll. 30–48); as well as (ii) adjusting
the display based on identified driver activity (Starner col. 12, ll. 30–31), and
“adjust[ing] communication settings and/or internet settings in accordance
with an identified activity” (Starner col. 12, ll. 32–34) (emphasis added). We
are unpersuaded by Appellant’s arguments that (i) “the new combination has
exactly the same deficiency as the old combination” (see Appeal Br. 5); (ii)
“Starner is simply doing what Talati was doing, which is limiting display of
information, but never addresses limiting transmission of information as
claimed” (Reply Br. 2); and (iii) “the prior art references . . . all discuss
limiting display of information on a device and never once discuss limiting
transmission of information from the vehicle to the eyeglass device” (Reply
Br. 2). Rather, “[a] reference may be read for all that it teaches, including
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uses beyond its primary purpose.” See In re Mouttet, 686 F.3d 1322, 1331
(Fed. Cir. 2012); EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
(Fed. Cir. 1985) (“A reference must be considered for everything it teaches
by way of technology and is not limited to the particular invention it is
describing and attempting to protect.”).
Given that the common knowledge of communicating data wirelessly
between devices/computers, including the concepts of bandwidth, data
capacity, and transmission amount and reach, was known before Appellant’s
filing date, the Examiner did not err in determining that a person of ordinary
skill in the art looking at Starner would understand that adjusting
communication settings between the vehicle subsystem and the eyeglasses in
combination with controlling information amount based on driver activity so
as not to distract a driver as taught by Starner would include controlling the
amount of transmitted data based on driver activity level as claimed. As part
of the obviousness analysis, the prior art must be viewed in the context of
what was generally known in the art at the time of the invention. See
Randall, 733 F.3d at 1362 (“[T]he [KSR] Court required an analysis that
reads the prior art in context, taking account of ‘demands known to the
design community,’ ‘the background knowledge possessed by a person
having ordinary skill in the art,’ and ‘the inferences and creative steps that a
person of ordinary skill in the art would employ.’” (quoting KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007))); In re Taylor Made Golf Company,
Inc., 589 F. App’x 967 (Fed. Cir. 2014) (the Board erred in failing to
consider the prior art in the context of the background knowledge that a
person of ordinary skill in the art would have had). Here, one of ordinary
skill in the art of data communications would understand that Starner’s
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communication settings would include controlling transmission amount.
Further, Starner teaches the concept of controlling an amount of data based
on driver activity level (see Starner col. 9, ll. 40–57; col. 10, ll. 34–59; col.
12, ll. 30–31).
Appellant has not rebutted the Examiner’s findings regarding column
12 of Starner (see Ans. 3 citing Starner col. 12, ll. 28–36), with evidence or
argument (see generally Reply Br. 2). Therefore, Appellant has not shown
the Examiner erred in rejecting claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Starner and Repetto.
In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 17 and
claims 18 and 19 depending therefrom. We are not persuaded the Examiner
erred in rejecting claims 17–19. Accordingly, we sustain the Examiner’s
rejection of independent claim 17, as well as claims 18 and 19 grouped
therewith.
CONCLUSION
For the reasons explained above, we sustain the rejection of claims 1–
19 under 35 U.S.C. § 103 as being unpatentable over the combination of
Starner and Repetto.
In summary, we hold as follows:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
17–19 103(a) Starner, Repetto 17–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED