Ford Global Technologies, LLC

Patent Trials and Appeals Board

Jul 2, 2021

2019006008 (P.T.A.B. Jul. 2, 2021)

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.
13/916,687 06/13/2013 Christopher Joseph Demeniuk 83375990 6085
28395 7590 07/02/2021
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
HEINLE, COURTNEY D
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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 CHRISTOPHER J. DEMENIUK
____________

Appeal 2019-0060081
Application 13/916,687
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHAEL L. WOODS, and
FREDERICK C. LANEY, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 10–16 and 18–20, which are all the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Board previously issued a Decision on May 2, 2017, in the Appeal
filed on August 11, 2014, in this application.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
Appeal 2019-006008
Application 13/916,687

2
CLAIMED SUBJECT MATTER
Claims 10 and 16 are independent. Claim 10, reproduced below,
illustrates the claimed subject matter on appeal.
10. A vehicle infotainment system comprising:
a processor configured to:
establish a wireless connection with a handheld computing
device identified as being associated with a driver;
wirelessly download an infotainment system configuration from
the handheld device, having been preconfigured offline using the
handheld device executing a configuration application associated with
the vehicle infotainment system, prior to connection; and
configure infotainment system settings in accordance with the
wirelessly downloaded configuration.
Appeal Br. 1 (Claims App.).

REJECTIONS ON APPEAL
Claims 16 and 18–20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 5.
Claims 10, 11, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cox (US 2009/0075624 A1, pub. Mar. 19, 2009)
and Divine (US 2013/0030645 A1, pub. Jan. 31, 2013). Final Act. 6.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cox, Divine, and Gautama (US 2012/0115446 A1, pub. May 10, 2012).
Final Act. 14.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cox, Divine, Schneider (US 2011/0166748 A1, pub. July 7, 2011), and
Chien (US 2013/0274997A1, pub. Oct. 17, 2013). Final Act. 15.
Appeal 2019-006008
Application 13/916,687

3
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox, Divine, and Schneider. Final Act. 17.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cox, Divine, and Chien. Final Act. 20.

ANALYSIS
Claims 16 and 18–20 under Written Description Requirement
Claim 16 recites the limitation “wirelessly downloading an
infotainment system configuration from the handheld wireless device,
having been preconfigured using only the handheld wireless device using an
offline vehicle configuration application, prior to connection.” Appeal Br.
(Claims App. 2) (emphasis added). The Examiner finds that the italicized
language “fails the written description requirement because there is no
description in the original specification of excluding the use of other devices
in conjunction with the handheld wireless device in preconfiguring the
vehicle infotainment system.” Final Act. 5. The Examiner determines that
the italicized language is a negative limitation, and, as such, must have basis
in the original disclosure. Id. The Examiner submits that “[t]he mere
absence of a positive recitation is not basis for an exclusion.” Id. at 6 (citing
MPEP ¶ 2173.05(i)) (emphasis omitted). Thus, the Examiner explains, “the
mere fact that the original specification does not disclose the use of, for
example, a PC in conjunction with the handheld in preconfiguring the
vehicle infotainment system, does not give written description support to a
limitation excluding the use of a PC.” Id.
In contrast, Appellant contends that the disclosure provides ample
support for the recitation of “using ‘only the handheld wireless device” in
Appeal 2019-006008
Application 13/916,687

4
claim 16, and thus, meets the written description requirement. Appeal Br. 2.
Appellant submits that original claims 1, 10, and 16 “stated that the
infotainment system configuration was ‘preconfigured on the handheld
device.’” Id. Appellant next references the Specification, stating
“‘Paragraphs 10–12 describe the infotainment system configuration having
been preconfigured offline on the driver handheld device[,]” paragraph 74
describes “developing a configuration ‘offline with a handheld device using
an application,’” and paragraph 75 describes “a configuration done ‘offline
with the use of the nomadic device application.’” Id. Appellant further
contends that the drawings provide additional support “by illustrating that
the offline configuration is performed using only the handheld wireless or
nomadic device.” Id. (citing “Fig. 3, 302, wireless handheld device with
app, for example”).
The test for sufficiency under the written description requirement of
35 U.S.C. § 112(a) “is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). To have “possession,” “the specification must . . . show that the
inventor actually invented the invention claimed.” Id.
We are not persuaded by Appellant’s contentions. First, the language
“preconfigured on the driver handheld device” in original claims 1, 10, and
16 does not state that the handheld wireless device “having been
preconfigured using only the handheld wireless device,” that is, using only
itself. We construe this claim language to not preclude the use of an
Appeal 2019-006008
Application 13/916,687

5
additional device, for example, in “preconfiguring” the handheld wireless
device. As for the Specification, paragraph 74 states:
Figure 3 is an illustrative example of configuring the
infotainment system offline and synchronizing the
configuration with the vehicle before a driving event. This
includes configuration of the infotainment system 300 when a
driver develops a favorable configuration offline with a
handheld device using an application, then pushes the
configuration to the VCS using a driver-only connection point.
The driver may configure specific features or function to
display when driving the vehicle by using an application on a
nomadic device offline and to later synchronize the
configuration to the VCS.
Spec. ¶ 74 (emphasis added). The italicized description does not indicate
clearly that “develop[ing] a favorable configuration” precludes using any
device in addition to using “an application on a nomadic device.” Likewise,
paragraph 75 does not provide such disclosure. As for the drawings, Figure
3 depicts step 302 with infotainment system 300 and a handheld device “+”
“APP.” This depiction and the corresponding description (see Spec. ¶ 75)
does not indicate that the handheld device has been “preconfigured” using
only itself with the “APP.”
We agree with Appellant that the Specification need not describe the
subject matter of a claim literally, or “in ipsis verbis,” to meet the written
description requirement. Appeal Br. 2; see, e.g., Cordis Corp. v. Medtronic
Ave., Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003). Nevertheless, we agree
with the Examiner that Appellant’s disclosure does not show possession of
the claimed subject matter. Ans. 3–7. The Specification provides no
description that “preconfiguring” the handheld wireless device excludes
using an additional device other than the handheld wireless device. That the
original claims and Specification do not expressly describe that
Appeal 2019-006008
Application 13/916,687

6
“preconfiguring” of the handheld wireless device uses another device in
addition to the handheld wireless device is insufficient to support the recited
negative limitation. As for the drawings, we agree with the Examiner that
although Figure 3 does not also show a PC, this absence is not a sufficient
basis to exclude a PC in the claims. Id. at 6.
Accordingly, we sustain the rejection of claims 16, 18, and 19 as
failing to comply with the written description requirement.

Claims 10, 11, 16, 18, and 19 as Unpatentable Over Cox and Divine
Claims 10 and 11
The Examiner finds that Cox discloses all limitations recited in claim
10 except “identifying the handheld device as being associated with the
driver.” Final Act. 8. The Examiner finds, however, that Cox discloses
configuring infotainment settings in accordance with a driver’s handheld
device. Id. (citing Cox ¶ 9). The Examiner relies on Divine as disclosing
the identifying limitation. Id. (citing Divine ¶ 33, Figs. 2–5). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify Cox’s vehicle infotainment system to include the limitation, as
taught by Divine, “to give the driver control over the infotainment system
that supersedes the control of the occupants.” Id.
Before addressing Appellant’s contentions, we note that claim 10 is
directed to a vehicle infotainment system comprising a single element, that
is, a processor, and recites that the processor is configured to perform the
following functions: “establish a wireless connection with a handheld
computing device identified as being associated with a driver,” “wirelessly
download an infotainment system configuration from the handheld device,”
Appeal 2019-006008
Application 13/916,687

7
and “configure infotainment system settings in accordance with the
wirelessly downloaded configuration.” Appeal Br. (Claims App. 1). The
limitation “having been preconfigured offline using the handheld device
executing a configuration application associated with the vehicle
infotainment system, prior to connection” describes the handheld computing
device, which is not recited as an element of the vehicle infotainment
system. Rather, the handheld computing device is recited as a source of the
“infotainment system configuration.” As such, it is not apparent how the
handheld computing device being “preconfigured offline” using itself “prior
to connection” to the processor positively limits the structure of the
processor, or, more generally, the vehicle infotainment system. Nonetheless,
as discussed below, we agree with the Examiner’s conclusion of
obviousness, which gives weight to the “having been preconfigured . . . the
vehicle infotainment system” language.
According to Appellant, the Examiner’s proposed combination fails to
disclose or suggest every feature recited in claim 10. Appeal Br. 3. First,
Appellant contends that Cox discloses a personal computer (PC) that
contains a configuration application, whereas, in contrast, Appellant
discloses “a stand-alone application on the handheld wireless device to
configure infotainment settings.” Id.
However, claim 10 recites “the handheld device executing a
configuration application.” Claim 10 does not recite any limitation that the
configuration application is on the handheld computing device only, that is,
this application is a “stand-alone application” provided on the handheld
computing device. Nor does claim 10 recite any language that limits the
Appeal 2019-006008
Application 13/916,687

8
handheld computing device to one that can configure the vehicle
infotainment system without the use of a PC.
Second, Appellant contends that “Cox is silent on preconfiguring
infotainment settings at the handheld device and configuring infotainment
system settings based on a connection with the handheld device.” Appeal
Br. 5. According to Appellant, “[t]he RVIAI is a portable digital player,
playing pre-recorded audio received from the radio receiver at the vehicle
Infotainment System. The Examiner states that Cox discloses configuration
of the infotainment settings, however, the configuration is for the RVIAI to
receive data from the vehicle Infotainment System.” Id. Thus, Appellant
contends that Cox teaches receiving data at the handheld device from the
vehicle system, not vice versa.
In response, the Examiner maintains that “Cox discloses
preconfiguring various infotainment settings offline using only the driver
handheld wireless device.” Ans. 9 (citing Cox ¶¶ 54–55). Particularly, the
Examiner finds that Cox discloses that “‘[s]oftware incorporated in the
RVIAI can provide a user interface using RVIAI controls so the user can set
preferences for media recording.’” Id. at 9–10 (citing Cox ¶ 58).
Additionally, the Examiner disagrees with Appellant that Cox is silent
as to “configuring infotainment system settings based on a connection with
the handheld device.” Ans. 10; Appeal Br. 5. The Examiner submits that
Cox discloses that the “[preconfigured infotainment] settings are transferred
to the vehicle infotainment system upon connection with the handheld
device.” Ans. 10 (citing Cox ¶ 54). In this regard, the Examiner points out
that Cox discloses:
Appeal 2019-006008
Application 13/916,687

9
The system can include a means of connecting the RVIAI and
Infotainment System (herein called the Vehicle/RVIAI Link)
for purposes of transferring data, digital media, and control
signals in both directions between the RVIAI and Infotainment
System based on the shared communications capabilities of the
RVIAI and Infotainment System (e.g. USB, DT, Bluetooth,
WiFi, UWB). The system can also include Software
incorporated in the Infotainment System that provides for
conveyance of digital media from the radio receiver to the
RVIAI and for receiving digital media from the RVIAI. The
system can also include Software incorporated in the RVIAI
that sends proper signals and controls to the Infotainment
System over the Vehicle/RVIAI Link to cause digital media from
the radio receiver to be sent from the Infotainment System to
the RVIAI.
See Cox ¶ 54 (emphasis added). Additionally, the Examiner finds that
Appellant’s Specification describes the term “infotainment settings” broadly
as including navigational and entertainment settings, such as disclosed by
Cox. Ans. 11 (citing Spec. ¶ 77).
Third, Appellant contends that, in Cox the application software is on a
PC, not on the handheld device (RVIAI). Appeal Br. 5. Appellant
acknowledges that the PC communicates data to the vehicle system via the
RVIAI, but contends that Cox does not disclose that the RVIAI includes the
claimed “vehicle configuration application.” Id. at 6. According to
Appellant, the application running on either the PC or RVIAI in Cox is not
an “offline vehicle configuration application.” Id.
We are unpersuaded. Appellant does not explain persuasively why
the software that Cox discloses can be incorporated in the RVIAI does not
correspond to the “configuration application associated with the vehicle
infotainment system,” as recited broadly in claim 10.
Appeal 2019-006008
Application 13/916,687

10
Fourth, Appellant contends that “Cox does not suggest or recognize
the problem of improving the passenger riding experience by enabling the
use of a handheld device for offline configuration of the vehicle
infotainment system settings.” Appeal Br. 6.
However, there is no requirement that Examiner must look only to the
problem Appellant asserts. Rather, “any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007). Appellant does not contest the
Examiner’s finding that Divine discloses identifying a device as a driver’s
device. Compare Appeal Br. 6, with Final Act. 8. We note Divine discloses
that this allows identifying a set of rules that apply to the vehicle. See
Divine ¶ 61. As noted above, the Examiner reasons that the proposed
modification of Cox in view of Divine is “to give the driver control over the
infotainment system that supersedes the control of the occupants.” Final
Act. 8. Appellant does not apprise us of error in this reasoning.
As Appellant does not apprise us of error in the Examiner’s findings
or reasoning, we sustain the rejection of claim 10, and claim 11 depending
therefrom but not separately argued, as unpatentable over Cox and Divine.
Claims 16, 18, and 19
For claim 16, Appellant contends that the Examiner has not
established a prima facie case of obviousness because the claim “requires the
configuration ‘having been preconfigured using only the handheld wireless
device using an offline vehicle configuration application, prior to
connection,’ whereas “the proposed combination of Cox and Divine use[s] a
Appeal 2019-006008
Application 13/916,687

11
PC to provide the configuration application in combination with the RVIAI.”
Appeal Br. 6–7.
As discussed above, the Examiner finds that “Cox discloses
preconfiguring various infotainment settings offline using only the driver
handheld wireless device.” Ans. 9 (citing Cox ¶¶ 54–55) (emphasis added).
As explained by the Examiner, Cox discloses that software can be
incorporated in the RVIAI to provide a user interface using RVIAI controls
that allow a user to set preferences for media recording. Id. at 9–10 (citing
Cox ¶ 58). Appellant does not apprise us of error in these findings.
Accordingly, we sustain the rejection of claim 16, and claims 18 and
19 depending therefrom but not separately argued, as unpatentable over Cox
and Divine.

Claim 12 as Unpatentable Over Cox, Divine, and Gautama
Claim 13 as Unpatentable Over Cox, Divine, Schneider, and Chien
Claims 14 and 15 as Unpatentable Over Cox, Divine, and Schneider
Claim 20 as Unpatentable Over Cox, Divine, and Chien
Appellant does not present substantive argument for claims 12–15,
which depend ultimately from claim 10, or claim 20 depending from claim
16. Thus, we sustain the rejections of: claim 12 as unpatentable over Cox,
Divine, and Gautama; claim 13 as unpatentable over Cox, Divine,
Schneider, and Chien; claims 14 and 15 as unpatentable over Cox, Divine,
and Schneider; and claim 20 as unpatentable over Cox, Divine, and Chien
for the same reasons as for the respective parent claims 10 and 16.

Appeal 2019-006008
Application 13/916,687

12
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 18–20 112, first
paragraph
Written Description 16, 18–20
10, 11, 16,
18, 19
103(a) Cox, Divine 10, 11, 16,
18, 19

12 103(a) Cox, Divine,
Gautama
12
13 103(a) Cox, Divine,
Schneider, Chien
13
14, 15 103(a) Cox, Divine,
Schneider
14, 15
20 103(a) Cox, Divine, Chien 20
Overall
Outcome
10–16,
18–20

TIME PERIOD FOR RESPONSE

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

AFFIRMED