Boston, Neville et al.

Patent Trials and Appeals Board

Sep 11, 2020

2019001373 (P.T.A.B. Sep. 11, 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.
13/117,089 05/26/2011 Neville Boston REVR-00100 6864
34051 7590 09/11/2020
Stevens Law Group
1754 Technology Drive
Suite #226
San Jose, CA 95110
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
uspto@stevenslawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEVILLE BOSTON and MICHAEL JORDAN
Appeal 2019-001373
Application 13/117,089
Technology Center 3600
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1 and 36–43, which are all claims
pending in the application. Appellant has canceled claims 2–35 and 44–59.
See generally, Appeal Br. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Revivermx, Inc.
Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a method and system for rendering content
on the exterior of a vehicle. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention relate “generally to the
display field, and more specifically to a new and useful method and system
for rendering content on the exterior of a vehicle.” Spec. ¶ 2.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method of rendering content on the exterior of a road
vehicle comprising:
• detecting an enablement state of the vehicle;
• determining a speed of the vehicle based on an output of a
vehicle speed sensor coupled to the vehicle;
• in response to a detected on state of the vehicle and a
determined speed of the vehicle less than a threshold speed,
rendering identification information of the vehicle on a display
at a first power consumption level in a first mode, the display
coupled to an exterior forward-facing surface of the vehicle;
• in response to a detected state of the vehicle and a
determined speed of the vehicle greater than the threshold
speed, defining a message and rendering, by a processing
device, the message on the display in a second mode having a
first orientation, the message rendered on the display device in
the first orientation being a horizontally mirrored image of the

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Apr. 16, 2018); Reply Brief (“Reply Br.,” filed Dec. 4, 2018); Examiner’s
Answer (“Ans.,” mailed Oct. 4, 2018); Non-Final Office Action (“Non-Final
Act.,” mailed Sept. 15, 2017); and the original Specification (“Spec.,” filed
May 26, 2011) (claiming benefit of US 61/349,172, filed May 27, 2010).
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message legible to a party viewing the display through a mirror
external the vehicle in the second mode; and
• in response to a detected off state of the vehicle, rendering,
by the processing device the identification information of the
vehicle on the display in a second orientation, the second
orientation being horizontally mirrored relative to the first
orientation, such that the identification information rendered
on the display is legible to a party viewing the display from
external the vehicle, the display at a second power consumption
level less than the first power consumption level in a third
mode.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Steffan et al. (“Steffan”) US 5,905,434 May 18, 1999
Naddeo US 2002/0021210 A1 Feb. 21, 2002
Ozeki et al. (“Ozeki”) US 2004/0105053 A1 June 3, 2004
Feng US 2006/0142933 A1 June 29, 2006
McCann US 2006/0213100 A1 Sept. 28, 2006
Lukawitz et al. (“Lukawitz”) US 2011/0078933 A1 Apr. 7, 2011
Dawson et al. (“Dawson”) US 9,147,192 B2 Sept. 29, 2015
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REJECTIONS3
R1. Claims 1, 36–39, 42, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of McCann, Steffan,
and Naddeo. Non-Final Act. 7.4
R2. Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of McCann, Steffan, Naddeo, and Feng.
Non-Final Act. 16.
R3. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of McCann, Steffan, Naddeo, and
Dawson. Non-Final Act. 7.
R4. Claims 1 and 36–43 stand rejected under the judicially created
doctrine of obviousness-type double patenting (OTDP) over claims 1–14 of
U.S. Patent 9,007,193 B2 and claims 1–13 of U.S. Patent 9,663,028 B2.
Non-Final Act. 24.

3 The Examiner withdrew the rejection under 35 U.S.C. § 101, of appealed
claims 1, 12 and 36–59. Ans. 3. Although not explicitly addressed by the
Examiner, we proceed in this Decision under the assumption that the
indefiniteness rejection of claims 12 and 44–59 (Non-Final Act. 6) has
effectively been withdrawn because these claims have been canceled by
Appellant. Compare Non-Final Act. 6 with Appeal Br. 4 (“Grounds of
Rejection to be Reviewed on Appeal”), 14 and 16 (Claims App.). We leave
it to the Examiner to formally withdraw the indefiniteness rejection of
canceled claims 12 and 44–59.
4 The Examiner originally rejected claims 1, 12, 36–39, and 42–53 under
Rejection R1, however, claims 12 and 44–53 were canceled by Appellant in
an Amendment after Appeal filed Apr. 16, 2018. See Appeal Br. 1.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7–12) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1, 36–39, 42, and 43 on the basis of
representative claim 1. Remaining claims 40 and 41 in obviousness
Rejections R2 and R3, not argued separately, stand or fall with independent
claim 1 from which they depend.5 We address OTDP Rejection R4 of
claims 1 and 36–43, not argued separately, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to Rejection R1
of claim 1 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellant’s

5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 103(a) Rejection R1 of Claims 1, 36–39, 42, and 43
Issue 1
Appellant argues (Appeal Br. 7–11; Reply Br. 1–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of McCann, Steffan, and Naddeo is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method of rendering content on the exterior of a road
vehicle” that includes, inter alia, the conditional limitations:
[(a)] in response to a detected state of the vehicle and a
determined speed of the vehicle greater than the threshold
speed, defining a message and rendering . . . the message on
the display in a second mode having a first orientation . . .
being a horizontally mirrored image of the message legible to a
party viewing the display through a mirror external the vehicle
in the second mode; and
[(b)] in response to a detected off state of the vehicle,
rendering . . . the identification information of the vehicle on
the display in a second orientation, the second orientation being
horizontally mirrored relative to the first orientation, such that
the identification information rendered on the display is legible
to a party viewing the display from external the vehicle,
as recited in claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
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references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. at 425.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. Keller, 642 F.2d at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
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Analysis
Appellant’s primary argument against the Examiner’s rejection is that
“there is no evidence whatsoever showing controlling the orientation
(mirrored/non-mirrored) of text based on speed and on/off state.” Appeal
Br. 7.
Limitation (a): “in response to a . . . determined speed of the vehicle”
The Examiner finds McCann teaches or suggests defining and
rendering a message in a second mode having a first orientation in response
to a detected state of the vehicle, and where the speed of the vehicle is
greater than a threshold speed. Non-Final Act. 7, citing McCann ¶¶ 11, 14,
Fig. 14. The Examiner further finds Steffan teaches that the message
rendered on the display in the first orientation is a horizontally mirrored
image of the message. Id. at 8, citing Steffan 2:59–63, 6:5–10, Fig. 7B
(element 706). “A person having ordinary skill in the art would have been
motivated to combine McCann with Steffan’s features because it would help
to have information communicated through the display ‘quickly and easily
and be clear and concise.’” Id. at 9, quoting Steffan 1:38–39.
Appellant argues that Steffan’s cited
passages show that when the display unit faces forward, the
message is mirrored. However, these passages do not state that
the display orientation (mirrored/non-mirrored) is changed in
relation to the on state of the vehicle or based on comparison to
a speed threshold. Instead, these passages show nothing more
than that the message will be mirrored when facing forward.
Accordingly, only the direction that the display unit is facing is
considered when determining whether to mirror.
Appeal Br. 8.
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In addition to reiterating in the Answer that the rejection relies upon
the combination of McCann, Steffan, and Naddeo, the Examiner further
finds “it would have been obvious to a person of ordinary skill in the art at
the time of the invention was made to display any data in the display of
McCann because such data does not functionally relate to the invention and
merely labeling the data differently from that in the prior art would have
been obvious.” Ans. 6–7.
In support of the Examiner’s finding, we note McCann teaches
“[o]nce the electronic control module determines that a specific threshold
speed has been reached, the vehicle identity information, stored within the
electronic control module, is transmitted to, and shown upon, the display.”
McCann ¶ 11. Under the broadest reasonable interpretation standard,6 we
further conclude the specific type of information displayed in McCann,
including whether the displayed information is mirrored or not, is not
dispositive to the patentability analysis.7 In support of this determination,
we note McCann further teaches “[t]he first message may be an

6 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
7 See MPEP § 2111.05 [R-10.2019] (no functional relationship exists
“where the claim as a whole is directed towards conveying a message or
meaning to a human reader independent of the supporting product.”).
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advertisement, weather information, or any other desired information.”
McCann ¶ 14 (emphasis added). We conclude, under the broadest
reasonable interpretation standard, “any other desired information” may
include the recited “horizontally mirrored image of the message,” as recited
in claim 1. Even if we did interpret McCann’s disclosure as not teaching or
suggesting displaying so-called mirrored information, we further point out
that Steffan teaches mirroring information, as relied upon by the Examiner
in the rejection as identified above. See Steffan 2:60–63, Fig. 7B.
We are not persuaded the Examiner erred because Appellant has not
demonstrated that the Examiner’s proffered combination of references
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor has Appellant
provided objective evidence of secondary considerations which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Limitation (b): “in response to a detected off state of the vehicle”
The Examiner relies upon McCann as teaching or suggesting
contested conditional limitation (b), i.e., “in response to a detected off state
of the vehicle. . . .” Non-Final Act. 8, citing McCann ¶ 13 (“Thus,
advertisements and other information may be displayed when the vehicle is
not moving.”). The Examiner relies upon Steffan as teaching or suggesting
the conditional response, i.e., displaying “identification information of the
vehicle on the display in a second orientation . . . horizontally mirrored
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relative to the first orientation, such that the identification information
rendered on the display is legible to a party viewing the display from
external the vehicle,” as recited in claim 1. Non-Final Act. 8, citing Steffan
Fig. 7A (element 700), Fig. 3; see also Steffan 5:62–6:17.
Appellant contends McCann “paragraph 13 does not disclose that any
of these actions include changing the orientation of text based on these
conditions being met.” Appeal Br. 9. Appellant has not responded to the
rejection as articulated by the Examiner by arguing the references separately.
The Examiner relies upon Steffan as teaching or suggesting changing
orientation to a mirrored orientation, and offers McCann for the conditional
limitation, i.e., “in response to a detected off state.”
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 36–39, 42, and 43, which fall therewith. See Claim Grouping, supra.
2. Rejections R2–R3 of Claims 40–41
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 and R3 of claims 40 and 41 under § 103(a)
(see Appeal Br. 12), we sustain the Examiner’s rejections of these claims.
Arguments not made are waived.
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3. OTDP Rejection R4 of Claims 1 and 36–43
In view of the lack of any argument directed to OTDP Rejection R4 of
claims 1 and 36–43, we pro forma sustain the Examiner’s rejection of these
claims. See Appeal Br. 1 et seq. Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to obviousness
Rejections R1 through R3 of claims 1 and 36–43 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
(2) Appellant has presented no evidence or argument that the
Examiner erred with respect to OTDP Rejection R4 of claims 1 and 36–43,
and we pro forma sustain the rejection.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1, 36–39,
42, 43 103(a)
McCann, Steffan,
Naddeo
1, 36–39,
42, 43
40 103(a)
McCann, Steffan,
Naddeo, Feng 40
41 103(a)
McCann, Steffan,
Naddeo, Dawson 41
1, 36–43
OTDP over claims 1–
14, of U.S. 9,007,193
B2; claims 1–13 of
U.S. 9,663,028 B2
1, 36–43
Overall
Outcome 1, 36–43
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED