FORD GLOBAL TECHNOLOGIES, LLCDownload PDFPatent Trials and Appeals BoardDec 10, 20202019003920 (P.T.A.B. Dec. 10, 2020) 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. 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). Appeal 2019-003920 Application 13/644,779 2 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 Appeal 2019-003920 Application 13/644,779 3 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. Appeal 2019-003920 Application 13/644,779 4 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 Appeal 2019-003920 Application 13/644,779 5 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 Appeal 2019-003920 Application 13/644,779 6 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 Appeal 2019-003920 Application 13/644,779 7 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 Copy with citationCopy as parenthetical citation