Ford Global Technologies, LLCDownload PDFPatent Trials and Appeals BoardJul 2, 20212019006008 (P.T.A.B. Jul. 2, 2021) 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. 13/916,687 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 Copy with citationCopy as parenthetical citation