Ex Parte 6748320 et al

Board of Patent Appeals and Interferences

Sep 25, 2010

95000368 (B.P.A.I. Sep. 25, 2010)

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.
95/000,368 05/14/2008 6748320 TSW-002 9892
24504 7590 09/27/2010
THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994
EXAMINER
CLARK, JEANNE MARIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/27/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Melvino Technologies, Ltd.
Appellant and Patent Owner

v.

Transworks, Inc.
Third Party Requestor
____________

Appeal 2010-008091
Reexamination Control 95/000,368
Patent 6,748,320 B2
Technology Center 3900
____________

Before JAMESON LEE, KARL D. EASTHOM, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

2

Melvino Technologies, Ltd.2, 3 appeals4 under 35 U.S.C. §§ 134(b) and
315(a) from a final rejection of claims 1-26.5 The Third Party Requester, a
party to this inter partes reexamination proceeding, has waived its rights to
file any written comments during this reexamination and additionally waived
its rights to appeal any decision therein.6
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We AFFIRM.

2 Melvino Technologies, Ltd. is the real party in interest and the current
owner of the patent under reexamination.
3 An assignment was executed by M. Kelly Jones, inventor, on Jan. 16, 2004
to ARRIVALSTAR, Inc. Subsequently, an assignment was executed by
ARRIVALSTAR, Inc. and ARRIVALSTAR Jersey Limited on Feb. 3, 2006
and Feb. 6, 2006, respectively, to Melvino Technologies, Ltd.
4 Patent Owner’s Revised Appeal Brief filed Oct. 29, 2009, hereinafter “Br.”
5 Right of Appeal Notice mailed Jun. 4, 2009 [hereinafter RAN].
6 Third Party Requester withdrew from participation in this proceeding in a
Notice of Waiver of Third Party Requester’s Right of Participation in Inter
Partes Reexamination Proceeding, filed Oct. 16, 2008.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

3
STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed by TransWorks, Inc., the Third Party Requestor, on May 14, 2008, of
United States Patent 6,748,320 B2 (the '320 Patent) issued to M. Kelly Jones
on June 8, 2004, based on United States Patent Application Number
10/326,556 filed December 20, 2002.7
Patentee’s invention relates to an advance notification method and
system for notifying users of the impending arrival of a vehicle at a
particular vehicle stop. (col. 2, ll. 46-49). The advance notification system
is comprised of a vehicle control unit (e.g., GPS) on each vehicle and a base
station control unit which is configured to communicate with all of the
vehicle control units and with a user communication device. (col. 2, ll. 53-
65).
Claims 1 and 11, which we deem to be representative, read as follows:
1. (Original) A method for an advance notification
system for notifying a user of an impending arrival of a vehicle
at a vehicle stop, the system comprising (a) a user
communications device associated with said user, (b) a system
communications device, and (c) a computer system for
monitoring travel of said vehicle in relation to said vehicle stop
and for initiating a communication with said system
communication device to the user communications device
before the vehicle reaches said vehicle stop to thereby indicate
impending arrival of the vehicle at said vehicle stop, the method
comprising the steps of:

7 U.S. Pat. App. No. 10/326,556 claims priority to U.S. Pat. App. No.
08/852,119 filed on May 6, 1997, now United States Patent 6,748,318.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

4
permitting said user to solicit a vehicle progress report
relating to said vehicle by the following steps:
permitting establishment of a communication link
between said user communications device and said system
communications device; and
providing said vehicle progress report from said
computer system to said user during said communication link.

11. (Original) An advance notification system for
notifying a user of an impending arrival of a vehicle at a vehicle
stop and for permitting a user to solicit a vehicle progress report
relating to said vehicle, comprising:
a user communications device associated with said user;
a computer system for monitoring travel of said vehicle
in relation to said vehicle stop;
a system communications device in communication with
said computer system, said system communications device for
communicating with said user communications device at a time
before said vehicle reaches said vehicle stop; and
vehicle progress report generator associated with said
computer system for permitting said user to solicit a vehicle
progress report relating to said vehicle by providing said
vehicle progress report from said computer system to said user
communications device during a communication link between
said user and said system communications device.

The prior art references relied upon by the Examiner in rejecting the
claims are:
Kemppainen et al. (“Kemppainen”) 4,611,277 Sep. 9, 1986
Collins et al. (“Collins”) 5,003,595 Mar. 26, 1991
Jones et al. (“Jones '020”) 5,400,020 Mar. 21, 1995
Ross 5,444,444 Aug. 22, 1995
Ehrlich et al. (“Ehrlich”) 5,509,055 Apr. 16, 1996
Westerlage et al. (“Westerlage”) 5,724,243 Mar. 3, 1998
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

5
Burgener8 5,736,940 Apr. 7, 1998
Kay et al. (“Kay”) 5,754,634 May. 19, 1998
Schmier et al. (“Schmier”) 6,006,159 Dec. 21, 1999
Burgener '457 CA 2,093,457 Oct. 7, 1994

U.S. Department of Transportation, Federal Transit Administration,
Advanced Public Transportation Systems: The State of the Art Update '92
(April 1992) (hereinafter “Labell”).
U.S. Department of Transportation, Federal Transit Administration,
Advanced Traveler Aid Systems for Public Transportation, The Intelligent
Transit Mobility System (ITMS), Final Report (September 1994)
(hereinafter “Kikuchi”).
The Examiner rejected claims 1-26 (Examiner’s Answer, mailed May
25, 2010, 9-32 [hereinafter Ans.] as follows:
1) Claims 1, 7, 10, 11, 15-17, 20, 22, 23, and 26 rejected under 35
U.S.C. § 103(a) as obvious over Labell.9
2) Claims 2-5, 12, and 13 rejected under 35 U.S.C. § 103(a) as
obvious over Labell and Kemppainen.
3) Claims 6, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Labell and Burgener '457.
4) Claims 6, 8, 14, 18, and 24 stand rejected under 35 U.S.C. § 103(a)
as obvious over Labell and Schmier.

8 Burgener claims foreign priority to Canadian Patent Application 2,093,457
(“Burgener '457”), filed Apr. 6, 1993, and open to public inspection as of
Oct. 7, 1994. For purposes of clarity, during this opinion, when referring to
the Burgener reference, we will be referring solely to Burgener '457.
9 This rejection was proposed in the request for reexamination by the Third
Party Requestor under 35 U.S.C. § 102(b), but modified by the Examiner
during prosecution to be rejected under 35 U.S.C. § 103(a).
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

6
5) Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as obvious
over Labell, Schmier, and Kikuchi.
6) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Labell and Westerlage.
7) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Labell and Ross.
8) Claims 1, 7-11, 15-20, 22, 23, and 26 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Kikuchi.
9) Claims 2, 4, and 12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kikuchi and Kay.
10) Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kikuchi, Kay, and Collins.
11) Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kikuchi, Kay, and Ehrlich.
12) Claims 6, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kikuchi and Burgener '457.
13) Claims 6, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kikuchi and Schmier.
14) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kikuchi and Westerlage.
15) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Kikuchi and Ross.
16) Claims 1, 7, 8, 10, 11, 15-18, 20, 22, 23, and 26 stand rejected
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

7
under 35 U.S.C. § 102(e) as being anticipated by Schmier.
17) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Schmier and Westerlage.
18) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Schmier and Ross.
19) Claims 1, 2, 7, 10-12, 15-17, 20, 22, 23, and 26 stand rejected
under 35 U.S.C. § 103(a) as obvious over Jones '020 and Labell. 10
20) Claims 3-5 and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jones '020, Labell, and Kemppainen.
21) Claims 6, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jones '020, Labell, and Burgener '457 or Schmier.
22) Claims 8, 9, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jones '020, Labell, and Kikuchi.
23) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jones '020, Labell, and Westerlage.
24) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Jones '020, Labell, and Ross.
25) Claims 1, 6, 7, 10, 11, 14-17, 20, 22, 23, 24, and 26 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Burgener '457.11

10 This series of rejections, over Jones '020 and Labell et al., was not
provided during the request for reexamination by the Third Party Requestor,
but proposed by the Examiner during prosecution.
11 This series of rejections, over Burgener '457 et al., was not provided
during the request for reexamination by the Third Party Requestor, but
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

8
26) Claims 2-5, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Burgener '457 and Kemppainen.
27) Claims 6, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
obvious over Burgener '457 and Schmier.
28) Claims 8, 9, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Burgener '457 and Kikuchi.
29) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Burgener '457 and Westerlage.
30) Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over Burgener '457 and Ross.

proposed by the Examiner during prosecution.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

9
ISSUES
Appellant (Patent Owner) generally argues that each of Kikuchi,
Schmier, and Burgener '457, individually, fails to disclose, and Labell and
the combination of Jones '020 and Labell fails to teach or suggest, “a
computer system for monitoring travel of said vehicle in relation to said
vehicle stop and for initiating a communication with said system
communication device to the user communications device before the vehicle
reaches said vehicle stop to thereby indicate impending arrival of the vehicle
at said vehicle stop,” recited as a system limitation in the preamble of
independent claim 1, and the method step of “providing said vehicle
progress report from said computer system to said user during said
communication link,” as recited in claim 1. (Br. 8, 23, 31, 40, 50).
Additionally, Appellant argues that Burgener '457 fails to disclose the
method step of “permitting said user to solicit a vehicle progress report
relating to said vehicle,” as recited by independent claim 1. (Br. 50).
Specifically, with regard to independent method claim 1, Appellant argues
that each of Kikuchi, Schmier, and Burgener '457, individually, fails to
disclose, and Labell and the combination of Jones '020 and Labell fails to
teach or suggest, initiating a communication from a system communication
device to a user communication device. (Br. 8, 23, 31, 40, 50).
Turning to independent system claim 11, Appellant generally argues
that each of Kikuchi, Schmier, and Burgener '457, individually, fails to
disclose, and Labell and the combination of Jones '020 and Labell fails to
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

10
teach or suggest “a system communications device in communication with
said computer system, said system communications device for
communicating with said user communications device at a time before said
vehicle reaches said vehicle stop,” as recited by independent claim 11. (Br.
14, 25, 34, 43, 53). Additionally, Appellant argues that each of Labell and
Burgener '457, individually, fails to teach, suggest or disclose a “vehicle
progress report generator associated with said computer system for
permitting said user to solicit a vehicle progress report relating to said
vehicle by providing said vehicle progress report from said computer system
to said user communications device during a communication link between
said user and said system communications device.” (Br. 14, 53).
Specifically, Appellant agues that each of Kikuchi, Schmier, and Burgener
'457, individually, fails to disclose, and Labell and the combination of Jones
'020 and Labell fails to teach or suggest “. . . an impending arrival of a
vehicle causes an initiation of communication from a system communication
device to a user communication device.” (Br. 15, 26, 35, 43, 54).
The Examiner finds that each of Kikuchi, Schmier, and Burgener '457,
individually, disclose, and Labell and the combination of Jones '020 and
Labell teaches, all the limitations of independent claims 1 and 11. (Ans. 9-
32). Specifically, with respect to independent method claim 1, the Examiner
finds that “[t]he prior art of record applied in the rejections (e.g., the Labell
publication, the Kikuchi publication, Schmier, Jones '020, and Burgener
['457]) all teach a computer system that is capable of initiating the
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

11
communication as cited in the preamble.” (Ans. 34). Additionally, with
respect to independent system claim 11, the Examiner finds:
claim 11 does not require that the system communication
device “initiate” the communication or that the
communication is only initiated when there is an
impending arrival of the vehicle. Claim 11 only requires
that the system communication device communicates to
the user device prior to the vehicle arriving at the stop but
makes no requirement as to who initiated the
communication and that communication is only initiated
when the vehicle is about to arrive.
(Ans. 40).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are12:
1) Has the Examiner erred in concluding that Labell teaches or
suggests a computer system capable of initiating a communication and the
step of providing a vehicle progress report, as generally recited by
independent method claim 1, and a system communication device and

12 While Appellant’s Brief refers to each issue using letters A through DD,
we have modified these headings to reflect their corresponding numbers 1-
10. Additionally, rejections 2-7 have been grouped into Issue 2, rejections
9-15 into Issue 4, rejections 17 and 18 into Issue 6, rejections 20-24 into
Issue 8, and rejections 26-30 have been grouped into Issue 10.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

12
vehicle progress report generator, as generally recited by independent
system claim 11 under 35 U.S.C. § 103(a) as obvious?
2) Do combinations of Labell, Kemppainen, Burgener '457, Schmier,
Kikuchi, Westerlage, and Ross, as applied to the rejections of claims 2-6, 8,
9, 12-14, 18, 19, 21, 24, and 25, teach or suggest all the elements of those
claims under 35 U.S.C. § 103(a) as obvious?
3) Has the Examiner erred in finding that Kikuchi discloses a
computer system capable of initiating a communication and the step of
providing a vehicle progress report, as generally recited by independent
method claim 1, and a system communication device, as generally recited by
independent system claim 11 under 35 U.S.C. § 102(b) as anticipated?
4) Do combinations of Kikuchi, Kay, Collins, Ehrlich, Burgener '457,
Schmier, Westerlage, and Ross, as applied to the rejections of claims 2-6,
12-14, 21, 24, and 25, teach or suggest all the elements of those claims under
35 U.S.C. § 103(a) as obvious?
5) Has the Examiner erred in finding that Schmier discloses a
computer system capable of initiating a communication and the step of
providing a vehicle progress report, as generally recited by independent
method claim 1, and a system communication device, as generally recited by
independent system claim 11 under 35 U.S.C. § 102(e) as anticipated?
6) Do combinations of Schmier, Westerlage, and Ross, as applied to
the rejections of claims 21 and 25, teach or suggest all the elements of those
claims under 35 U.S.C. § 103(a) as obvious?
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

13
7) Has the Examiner erred in concluding that the combination of
Jones '020 and Labell teaches or suggests a computer system capable of
initiating a communication and the step of providing a vehicle progress
report, as generally recited by independent method claim 1, and a system
communication device, as generally recited by independent system claim 11
under 35 U.S.C. § 103(a) as obvious?
8) Do combinations of Jones '020, Labell, Kemppainen, Burgener '457
or Schmier, Kikuchi, Westerlage, and Ross, as applied to the rejections of
claims 3-6, 8, 9, 13, 14, 18, 19, 21, 24, and 25, teach or suggest all the
elements of those claims under 35 U.S.C. § 103(a) as obvious?
9) Has the Examiner erred in finding that the computer system
disclosed in Burgener '457 is capable of initiating a communication and the
steps of permitting a user to solicit a vehicle progress report and providing a
vehicle progress report, as generally recited by independent method claim 1,
and a system communication device and vehicle progress report generator,
as generally recited by independent system claim 11 under 35 U.S.C.
§ 102(b) as anticipated?
10) Do combinations of Burgener '457, Kemppainen, Schmier,
Kikuchi, Westerlage, and Ross, as applied to the rejections of claims 2-6, 8,
9, 12-14, 18, 19, 21, 24, and 25, teach or suggest all the elements of those
claims under 35 U.S.C. § 103(a) as obvious?
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

14
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Facts Pertinent to Claim Interpretation
C1. The Specification of the '320 Patent describes a “user
communication device” as, “a user computer, pager, television, and/or
telephone.” (col. 2, ll. 53-58).
C2. The Specification of the '320 Patent does not provide a
lexicographic definition of a “user.”
C3. In describing a “user,” the Specification of the '320 Patent
describes passengers, users, companies, employers, spouses, and parents all
in the same context. (col. 1, ll. 22-47).

Labell
L1. Labell is a report on the state of the art of technology in the public
transportation industry, published in April of 1992. (p. ii).
L2. Labell teaches interactive in-terminal information systems
consisting of electronic and computer display devices located at transit
stations and/or enroute stops which provide up-to-date travel information on
delays, cancellations, reroutings, and terminal layout and services. (p. x).
L3. Labell describes in-vehicle information systems for the transit
user enroute and the vehicle operator using on-board displays and
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

15
communication devices which provide information on routes, schedules, and
connecting services. (p. xi).
L4. Labell describes that the information available to vehicle
operators includes displays and communication systems indicating
correctable schedule deviations, requirements to wait for connecting
services, and onboard mapping and geographic information system (GIS)
support. (p. xi).
L5. Labell describes providing real-time information to travelers at
bus stops and transfer stations as well as in transit vehicles by using display
boards or smartkiosks. (p. xi).
L6. Labell teaches another embodiment which describes interactive
terminals which allow users to touch the screen for their preferred
destination which then shows the user a route to that destination. The
system allows route changes to be updated by modem from the central
office. (p. xi).
L7. Labell describes that automatic vehicle location (AVL) is a means
used by transit agencies for monitoring the movement of a fleet of vehicles
to control operations and help maintain schedule. (p. xiii).
L8. Labell describes incorporating AVL data into interactive terminals
and “smartkiosks” to provide real-time schedule update information to
travelers at bus stops and transfer stations. (p. 26).
L9. Labell describes that when the pre-trip passenger information
(PTI) system is linked to the AVL system, advanced traveler information
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

16
systems are able to provide real-time updates on expected transit arrival
times and warn transit users of delays to users in their home or office. (p. 4).

Burgener '45713
B1. Burgener '457 is directed to a portable transit data information
system which provides users with an accessible continuously updated arrival
time estimate for the next vehicle arriving at vehicle stops such as bus stops.
(Abs.).
B2. Burgener '457 describes that its system utilizes a GPS which
provides vehicle position data, a central computer to process the GPS data,
and a radio broadcasting means to wirelessly broadcast the data to a portable
display/receiver. (pp. 3-4).
B3. Burgener '457 describes that users wishing to receive notifications
can enter a receiver code or number for a vehicle stop on a route and
Burgener '457’s system can provide an audible alert when an impending
arrival time is registered in the portable display. (pp. 4-5).

Schmier
S1. Schmier is directed to a public transit vehicle arrival information
system which uses global position (GPS) devices located in vehicles for
determining the location of the vehicles along their routes to notify

13 As discussed supra, for purposes of this Appeal, reference has only been
made to the Burgener '457, the Canadian Application.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

17
passengers waiting for public transit vehicles of the status of the vehicles,
including the arrival times of vehicles at stops. (Abs.).
S2. Schmier describes that its central processor includes both a
transceiver and processor capable of polling the vehicle information units
and receiving information from the vehicle wirelessly. (col. 3, l. 65 – col. 4,
l. 4).
S3. Schmier describes that a waiting passenger may use a portable
module (e.g., pager) to establish wireless communication with the central
computer. (col. 14, ll. 38-42).
S4. Schmier describes that when the central processor is queried by a
display module which may include a portable module, the central processor
looks up the requested arrival times and transmits them to the module for
display. (col. 13, ll. 46-49).
S5. Schmier describes wireless broadcasting of updated transit data
including specially addressed information intended only for particular
individual displays. (col. 4, l. 54 – col. 5, l. 2).

Kikuchi
K1. Kikuchi is a Federal Transit Administration report which
describes an intelligent transit mobility system (ITMS) which includes a
central computer that inter alia stores schedule information and receives real
time information on the operating status of individual transit vehicles. (p. i).
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

18
K2. Kikuchi describes that the ITMS consists of five main
components: 1) information collection (via GPS); 2) central information
processor; 3) communication (transmission of information); 4) decision-aid
algorithm; 5) user interface and information dissemination. (pp. I-27, I-32).
K3. Kikuchi describes that a travel decision-aid system gives users en-
route trip information such as actual arrival time and delays. (p. I-21; see
also Fig. 3-6).
K4. Kikuchi describes that users can plug their hand-held computer
into the central transit center via any public or cellular phone to access real
time transit information available through the ITMS. (pp. I-10, I-63).
K5. Kikuchi describes that once a user has connected to the ITMS, the
user can receive real time information regarding inter alia, on-time status
and predicted vehicle arrival times at stops. (p. I-62).
K6. Kikuchi describes that the central processor stores and processes
both dynamic and static information. The dynamic information is real time
information pertaining to the vehicle’s current location which allows the
processor to compute inter alia predicted arrival times. (pp. I-5, I-27-I-29).
K7. Kikuchi describes an e-mail based transit information network
program called UDBUS. UDBUS is installed on a mainframe computer and
disseminates transit information through an e-mail system. (pp. ii-iii).

Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

19
Jones '020
J1. Jones '020 is directed to an advance notification system and
method for notifying school children of the impending arrival of their school
bus. (Abs.).
J2. Jones '020 describes that the base station control unit includes
telephone lines for notifying the homes of the school children. The
notification program is designed to make the telephone calls to the homes of
the students and allow the telephone to ring twice so that it is not necessary
for the telephone to be answered in order for the telephone call to be
recognized as that of the advance notification system. (col. 4, ll. 46-55).
J3. Jones '020 describes that in the case where a parent answers the
telephone, a prerecorded message may be played by the base station control
unit to notifying the parent of the impending arrival of the school bus.
(col. 4, ll. 58-60).

PRINCIPLES OF LAW
Claim Construction
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). We determine the scope of the claims not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 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.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

20
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1395-96 (CCPA 1969). In this regard, “claims are not to be read in a
vacuum, and limitations therein are to be interpreted in light of the
specification in giving them their ‘broadest reasonable interpretation.’” In
re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (quoting In re Okuzawa, 537
F.2d 545, 548 (CCPA 1976) (emphasis by Marosi). This is the standard for
claim interpretation in both original examination and re-examination. In re
Yamamoto, 740 F.2d 1569, 1571-73 (Fed. Cir. 1984).
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).

Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. The properly interpreted claim must then be compared with the
prior art.

Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

21

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

ANALYSIS
Claim Interpretation
Appellant generally argues that each of the references fails to disclose,
teach, or suggest “a computer system for monitoring travel of said vehicle in
relation to said vehicle stop and for initiating a communication with said
system communication device to the user communications device before the
vehicle reaches said vehicle stop to thereby indicate impending arrival of the
vehicle at said vehicle stop,” recited as a system limitation in the preamble
of independent claim 1. (Br. 8, 23, 31, 40, 50). In this section, we interpret
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

22
the scope of the claim language, and later address Appellant’s arguments
with respect to each art rejection under 35 U.S.C. §§ 102 and 103, infra.
Appellant’s arguments are generally directed to the functionality of
the computer system recited in the preamble and its ability to “initiat[e] a
communication,” as recited in the preamble of independent claim 1 as a
system limitation. Appellant appears to argue that the language of their
claim requires a computer system which initiates a communication from the
system communication device to a user communication device. In other
words, the communication would be “pushed” from the system
communication device to the user communication device. However,
Appellant’s independent claim 1 has not been drafted as such, nor do the
method steps require this functional system limitation. As such, we will not
interpret it so. It is well established that while the features of an apparatus
claim may be recited functionally, the apparatus must be distinguished from
the prior art in terms of structure, rather than function. Schreiber, 128 F.3d
at 1477.
Additionally, in construing Appellant’s independent claim 1,
Appellant refers to “a communication” in the preamble of the claim with
respect to the computer system, but then recites anew “a communication
link” in the body of the claim with respect to the second “permitting” step.
Subsequently, Appellant’s second “providing” step provides the “vehicle
progress report” during “said communication link,” which we find lays
antecedent basis to the “communication link” which is established in the
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

23
body of the claim rather than in the preamble portion defining the system
communication device.
Accordingly, since the preamble term “communication” neither
provides a necessary antecedent basis for the term “communication link” in
the body of independent claim 1 nor provides any “context essential to
understand[ing]” the meaning of “communication link” in the body of the
claim, Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1376 (Fed. Cir.
2005), we find that the claim drafters did not rely on the preamble language
to define or refine the scope of the asserted claims. Cf. Am. Med. Sys., Inc. v
Biolitec, Inc., No. 2009-1323, 2010 WL 3564855, at *5 (Fed Cir. Sept. 13,
2010) (“[D]ependence on a particular disputed preamble phrase for
antecedent basis may limit claim scope because it indicates a reliance on
both the preamble and claim body to define the claimed invention.”)
(quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (internal quotation marks omitted)). As such, we find
that the “communication link” in the body of Appellant’s method claim does
not necessarily refer to the communication by the computer system in the
preamble.
Further, claim 1 also uses the open-ended transitional term
“comprising” which does not exclude additional, unrecited elements. See
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
Accordingly, there is no language in the claim that limits the
“communication link” established in the second “permitting” step to be a
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

24
separate and independent communication link from the first “permitting”
step which “permit[s] said user to solicit a vehicle progress report . . . by the
following steps,” which itself would require some communication link
between the user and the computer system. In fact, a reasonable
interpretation of claim 1 would allow for the “communication link”
established in the second “permitting” step to be the same step in which the
user “solicits” the vehicle report because the “communication link” that is
established is between a user communication device and system
communication device, as presently claimed.
Therefore, to anticipate or make obvious the method of claim 1, the
prior art need only disclose, teach or suggest a computer system capable of
initiating a communication between a system communication device to a
user device and perform the method steps of claim 1 where a user is
permitted to solicit a vehicle progress report through a communication link
established between a user communication device and a system
communication device which then provides the user with the vehicle
progress report during that communication link established in the second
“permitting” step.
With regard to independent system claim 11, there is no recitation of
any communication which is “initiated” with respect to the recited
“computer system.” Thus, the above claim interpretation does not apply to
independent system claim 11.

Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

25

ISSUE 1
Claims 1, 7, 10, 11, 15-17, 20, 22, 23, and 26 rejected under 35 U.S.C.
§ 103(a) as obvious over Labell.
Independent claim 1
Appellant generally argues that Labell fails to teach or suggest
“initiating a communication with said system communication device to the
user communications device before the vehicle reaches said vehicle stop to
thereby indicate impending arrival of the vehicle at said vehicle stop,”
recited as a system limitation in the preamble of claim 1. (Br. 8).
Specifically, Appellant argues that Labell’s PTI systems and in-terminal
information systems do not initiate communication from a system
communication device to a user communication device. (Br. 9). In making
this argument, Appellant stresses that a display terminal at a terminal
location is not a user device. (Id.). We cannot agree.
In addressing these arguments, we turn first to Appellant’s argument
that a display terminal at a terminal location is not a user device, and
contrary to Appellant’s assertion, we find that Appellant’s Specification
describes that a “user communication device” may be “a user computer,
pager, television, and/or telephone.” (FF C1). Additionally, Appellant’s
Specification makes no distinction as to who a “user” is, and the fact that
this “user communication device” is “associated” with a “user,” does not
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

26
limit the breadth of the term in any way argued. Accordingly, since
Appellant’s Specification refers to passengers, users, companies, employers,
spouses, and parents all in the same context (FF C2, C3), we agree with the
Examiner that “a user can be a dispatcher, a passenger, or any other person
that has an interest on when the vehicle will arrive at a certain location. . . .”
(Ans. 36). Thus, “user communication device,” under the broadest
reasonable interpretation in light of Appellant’s Specification reads on
Labell’s communication devices, interactive terminals (i.e., display
terminals), and “smartkiosks,” in either a terminal or in a vehicle. (FF L3,
L4, L5, L6).
Based upon this interpretation, we agree with the Examiner that
Labell’s advanced traveler information system (i.e., AVL and PTI systems),
in conjunction with its interactive devices which provide travelers with real-
time information on routes, delay warnings, schedules, and connecting
services, constitutes a computer system for monitoring travel of a vehicle in
relation to a vehicle stop, before that vehicle reaches that vehicle stop (FF
L7, L9), and is capable of initiating a communication with a system
communication device to a user communications device associated with the
user either at a terminal or in-transit, as required by the language of claim 1
discussed, supra. (FF L2, L3, L6). Moreover, contrary to Appellant’s
contention that an artisan would not have reasonably considered combining
Labell’s AVL system and PTI system, we find that Labell explicitly
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

27
contemplates linking the two systems to provide real-time updates on
expected vehicle arrival times and warn transit users of delay. (FF L9).
Additionally, Appellant argues that “[t]he mere fact that a system
component could have carried out the claimed subject matter[, it] does not
disclose the claims.” (Br. 12). It appears that Appellant is arguing that even
though Labell discloses the requisite structure to initiate a communication
with a user device, Label does not actually perform this function. While
Appellant may be correct that Labell’s system does not explicitly initiate a
communication to a user communication device in the sense that the
communication would be “pushed” to a user, Appellant’s independent claim
1 does not recite such a limitation and we need not consider arguments about
Appellant’s claim which are outside of its scope. Accordingly, for these
reasons, and the reasons discussed supra, Appellant’s argument is not
persuasive.
Further, Appellant argues that Labell does not teach or suggest the
method step of “providing said vehicle progress report from said computer
system to said user during said communication link,” as recited by
independent claim 1. (Br. 8). We are not persuaded by Appellant’s
argument and as discussed supra, find that Labell describes providing real-
time updates to users at the home or office on expected transit arrival times
and warn transit users of delays using an advanced traveler information
system (i.e., AVL and PTI systems). (FF L9). Additionally, we find as
discussed supra, there is nothing in the claim that limits the communication
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

28
link established in the second “permitting” step to be different than the
communication link necessarily required in the first “permitting” step to
allow the user to solicit the vehicle progress report from the computer
system.
Therefore, since Labell teaches the requisite structure set forth in the
preamble of claim 1, and Labell clearly teaches or suggests the method steps
by which a user solicits and is subsequently provided a vehicle progress
report during the communication link established in the second “permitting”
step between a user communication device and a system communication
device, we find that Labell makes obvious independent claim 1.
Accordingly, for these reasons, and the reasons discussed supra, Appellant’s
arguments are not persuasive as to error in the rejection.

Independent claim 11
Appellant generally argues that Labell does not teach or suggest the
following elements of claim 11:
a system communications device in communication with
said computer system, said system communications
device for communicating with said user
communications device at a time before said vehicle
reaches said vehicle stop; and vehicle progress report
generator associated with said computer system for
permitting said user to solicit a vehicle progress report
relating to said vehicle by providing said vehicle progress
report from said computer system to said user
communications device during a communication link
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

29
between said user and said system communications
device.
(Br. 14).
Specifically, Appellant makes several arguments generally asserting that
Labell’s system does not initiate a communication from a system
communication device to a user communication device. (Br. 15-17).
We are not persuaded by Appellant’s arguments and find that as
discussed supra, Labell teaches or suggests a system that enables transit
agencies to monitor the movement of a fleet of vehicles to control operations
and help maintain schedule through the use of an AVL system. (FF L7).
Additionally, when the PTI system is linked to the AVL system, advanced
traveler information systems are able to provide real-time updates on
expected transit arrival times and warn transit users of delays to users in
their home, office, or interactive displays at terminals or in vehicles. (FF L8,
L9). Therefore, Labell teaches or suggests a system which is capable of
communicating with a user device and generating a progress report
commensurate with the scope of Appellant’s claimed structure, and thus
makes obvious the subject matter of independent claim 11. (FF L2, L3, L4,
L5, L6).
With respect to Appellant’s arguments that Labell’s system does not
initiate a communication from a system communication device to a user
communication device, we do not agree and find that Appellant is arguing
unclaimed limitations, and thus making arguments not commensurate with
the scope of claim 11. As discussed supra, to make obvious the subject-
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

30
matter of claim 11, Labell need not teach or suggest the initiation of a
communication, but must merely disclose a system communication device
capable of communicating with a user communication device at a time
before a vehicle reaches a vehicle stop. Therefore, in providing provide
real-time updates on expected transit arrival times before the vehicle arrives
at a stop (FF L8, L9), Labell makes obvious Appellant’s independent claim
11. Accordingly, for these reasons, and the reasons discussed supra,
Appellant’s arguments are unpersuasive as to error in the rejection.

Dependent claims 7, 10, 15-17, 20, 22, 23, and 26
Appellant does not separately argue claims 7, 10, 15-17, 20, 22, 23,
and 26 which depend from claims 1 and 11, respectively, and so, we find no
error in the Examiner’s rejection of claims 7, 10, 15-17, 20, 22, 23, and 26
under 35 U.S.C. § 103(a) as being obvious over Labell for the same reasons
we found as to claims 1 and 11, supra.

ISSUE 2
Appellant does not separately argue claims 2-6, 8, 9, 12-14, 18, 19,
21, 24, and 25 which depend from claims 1 and 11, respectively, and so, we
find no error in the Examiner’s rejection of claims 2-6, 8, 9, 12-14, 18, 19,
21, 24, and 25 under 35 U.S.C. § 103(a) as being obvious for the same
reasons we found as to claims 1 and 11, supra.

Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

31
ISSUE 3
Claims 1, 7-11, 15-20, 22, 23, and 26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kikuchi.
Independent claim 1
Appellant generally argues that Kikuchi fails to disclose “a computer
system for monitoring travel of said vehicle in relation to said vehicle stop
and for initiating a communication with said system communication device
to the user communications device before the vehicle reaches said vehicle
stop to thereby indicate impending arrival of the vehicle at said vehicle
stop,” recited as a system limitation in the preamble of independent claim 1,
and the method step of “providing said vehicle progress report from said
computer system to said user during said communication link,” as recited in
claim 1. (Br. 23).
We are not persuaded by Appellant’s arguments and find that as
discussed supra, with respect to the Labell reference, Kikuchi, too, is
capable of initiating a communication with a system communication device
to a user communications device associated with the user, as presently
claimed. (FF K3, K5). Specifically, Kikuchi discloses an intelligent transit
mobility system (ITMS) which includes a central computer that inter alia
stores schedule information and receives real time information on the
operating status of individual transit vehicles. (FF K1, K2). Additionally,
Kikuchi describes that users can plug their hand-held computer into the
central transit center via any public or cellular phone to access real time
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

32
transit information such as on-time status and predicted vehicle arrival times
at stops through the ITMS. (FF K4, K5). Further, Kikuchi describes an e-
mail based transit information network system called UDBUS which uses e-
mail to disseminate transit information. (FF K7). Thus, Kikuchi’s UDBUS
system discloses the requisite structure to anticipate the computer system of
independent claim 1, and too is capable of initiating a communication
indicating the impending arrival of a vehicle from a system communication
device to a user communication device. (FF K7). Accordingly, Appellant’s
argument is not persuasive as to error in the rejection.
Additionally, Appellant argues that Kikuchi does not disclose the
method step of “providing said vehicle progress report from said computer
system to said user during said communication link,” as recited by
independent claim 1. (Br. 23). We are not persuaded by Appellant’s
argument and find that as discussed supra, Kikuchi provides users with to
real time transit information such as on-time status and predicted vehicle
arrival times at stops through the ITMS once a user plugs their hand-held
computer into the central transit center via any public or cellular phone (FF
K4, K5), which we interpret to be equivalent to a vehicle progress report.
Therefore, for these reasons, and the reasons discussed supra, Appellant’s
arguments are not persuasive as to error in the rejection.

Independent claim 11
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

33
Appellant generally argues that Kikuchi fails to disclose “a system
communications device in communication with said computer system, said
system communications device for communicating with said user
communications device at a time before said vehicle reaches said vehicle
stop,” as recited in independent claim 11. (Br. 25). Specifically, Appellant
argues that “Kikuchi fails to disclose that an impending arrival of a vehicle
causes an initiation of communication from a system communication device
to a user communication device.” (Br. 26). We are not persuaded by
Appellant’s argument and find that Appellant is arguing unclaimed
limitations, and thus making arguments not commensurate with the scope of
Appellant’s claim. As discussed supra, to anticipate Appellant’s
independent claim 11, Kikuchi’s communication device need not initiate a
communication, but must merely be capable of communicating with a user
communication device at a time before a vehicle reaches a vehicle stop.
Therefore, in providing users with access to real time transit information
such as on-time status and predicted vehicle arrival times at stops through
the ITMS via hand-held computer (FF K4, K5), Kikuchi anticipates
Appellant’s independent claim 11. Accordingly, for these reasons, and the
reasons discussed supra, Appellant’s arguments are unpersuasive as to error
in the rejection.

Dependent claims 7-10, 15, 16-20, 22-23, and 26
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

34
Appellant does not separately argue claims 7-10, 15, 16-20, 22-23,
and 26 which depend from claims 1 and 11, respectively, and so, we find no
error in the Examiner’s rejection of claims 7-10, 15, 16-20, 22-23, and 26
under 35 U.S.C. § 102(b) as anticipated by Kikuchi for the same reasons we
found as to claims 1 and 11, supra.

ISSUE 4
Appellant does not separately argue claims 2-6, 12-14, 21, 24, and 25
which depend from claims 1 and 11, respectively, and so, we find no error in
the Examiner’s rejection of claims 2-6, 12-14, 21, 24, and 25 under 35
U.S.C. § 103(a) as being obvious for the same reasons we found as to claims
1 and 11, supra.

ISSUE 5
Claims 1, 7, 8, 10, 11, 15-18, 20, 22, 23, and 26 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Schmier.
Independent claim 1
Appellant generally argues that Schmier fails to disclose “a computer
system for monitoring travel of said vehicle in relation to said vehicle stop
and for initiating a communication with said system communication device
to the user communications device before the vehicle reaches said vehicle
stop to thereby indicate impending arrival of the vehicle at said vehicle
stop,” recited as a system limitation in the preamble of independent claim 1,
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

35
and the method step of “providing said vehicle progress report from said
computer system to said user during said communication link,” as recited in
claim 1. (Br. 31). We are not persuaded by Appellant’s arguments and find
that as discussed supra, with respect to the Labell and Kikuchi references,
Schmier, too, is capable of initiating a communication with a system
communication device to a user communications device associated with the
user, as presently claimed. (FF S1, S3, S5). Specifically, Schmier discloses
a public transit vehicle arrival information system which uses GPS devices
located in the vehicles for determining the location of the vehicles along
their routes to notify passengers waiting for public transit vehicles of the
status of the vehicles, including the arrival times of vehicles at stops. (FF
S1). Schmier’s system allows a waiting passenger to use a portable module
(e.g., pager) to establish wireless communication with the central computer.
(FF S3). Additionally, Schmier describes the wireless broadcasting of
updated transit data including specially addressed information intended only
for particular individual displays. (FF S5).
Therefore, since Schmier discloses the requisite structure set forth in
the preamble of claim 1, and Schmier discloses the method steps by which a
user solicits and is subsequently provided a vehicle progress report over a
communication link established between a user communication device and a
system communication device discussed supra (FF S3, S5), we find that
Schmier anticipates independent claim 1. Accordingly, for these reasons,
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

36
and the reasons discussed supra, Appellant’s arguments are not persuasive
as to error in the rejection.

Independent claim 11
Appellant generally argues that Schmier fails to disclose “a system
communications device in communication with said computer system, said
system communications device for communicating with said user
communications device at a time before said vehicle reaches said vehicle
stop,” as recited in independent system claim 11. (Br. 34). Specifically,
Appellant argues that “Schmier fails to disclose that a communication to a
user communications device is initiated to indicate impending arrival of a
vehicle at a vehicle stop.” (Br. 35). We are not persuaded by Appellant’s
argument and find that Appellant is arguing unclaimed limitations, and thus
making arguments not commensurate with the scope of Appellant’s claim.
As discussed supra, to anticipate Appellant’s independent claim 11,
Schmier’s communication device need not initiate a communication, but
must merely be capable of communicating with a user communication
device at a time before a vehicle reaches a vehicle stop. Therefore, in
providing users’ portable modules with transit information intended to notify
passengers waiting for public transit vehicles of the status of the vehicles,
including the arrival times of vehicles at stops (FF S3, S5), Schmier
anticipates claim 11. Accordingly, for these reasons, and the reasons
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

37
discussed supra, Appellant’s arguments are unpersuasive as to error in the
rejection.

Dependent claims 7, 8, 10, 15-20, 22, and 23
Appellant does not separately argue claims 7, 8, 10, 15-20, 22, and 23
which depend from claims 1 and 11, respectively, and so, we find no error in
the Examiner’s rejection of claims 7, 8, 10, 15-20, 22, and 23 under 35
U.S.C. § 102(e) as anticipated by Schmier for the same reasons we found as
to claims 1 and 11, supra.

ISSUE 6
Appellant does not separately argue claims 21 and 25 which depend
from claims 1 and 11, respectively, and so, we find no error in the
Examiner’s rejection of claims 21 and 25 under 35 U.S.C. § 103(a) for the
same reasons we found as to claims 1 and 11, supra.

ISSUE 7
Claims 1, 2, 7, 10-12, 15-17, 20, 22, 23, and 26 stand rejected under 35
U.S.C. § 103(a) as obvious over Jones '020 and Labell.
Independent claim 1
Appellant generally argues that the combination of Jones '020 and
Labell fails to teach or suggest, “a computer system for monitoring travel of
said vehicle in relation to said vehicle stop and for initiating a
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

38
communication with said system communication device to the user
communications device before the vehicle reaches said vehicle stop to
thereby indicate impending arrival of the vehicle at said vehicle stop,”
recited as a system limitation in the preamble of independent claim 1, and
the method step of “providing said vehicle progress report from said
computer system to said user during said communication link,” as recited in
claim 1. (Br. 38). Specifically, Appellant argues that Labell’s PTI does not
initiate a communication from a system communication device to a user
communication device. (Br. 39). Additionally, Appellant argues that one of
ordinary skill in the art at the time of the invention “would not of reasonably
looked to Labell to solve a problem for receiving a vehicle progress report in
the manner claimed.” (Br. 40).
We are not persuaded by Appellant’s arguments and agree with the
Examiner that the combination of Jones '020 and Labell makes obvious the
subject matter of claim 1. Specifically, Jones '020 discloses an advance
notification system and method for notifying school children of the
impending arrival of their school bus. (FF J1). Jones '020’s base station
control unit includes telephone lines for notifying the homes of the school
children of the impending arrival of the school bus. (FF J2, J3). Thus, Jones
'020 teaches a computer system which initiates a communication with a
system communication device (i.e., base station control unit with
telephones) to the user communication device (i.e., home telephone) and
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

39
provides a vehicle progress report from the system communication device to
the user communication device. (FF J1, J2, J3).
While Appellant argues that Labell does not disclose initiating a
communication from a system communication device to a user
communication device, the Examiner has not relied on Labell for this feature
in the present rejection. Instead, the Examiner finds, “what Jones '020 was
lacking was the explicit step that the user ‘solicits’ the report and not that
Jones '020 failed to teach the report itself or the step of receiving the report.”
(Ans. 55). Accordingly, as discussed supra, Labell discloses interactive
devices which provide travelers with real-time information on routes, delay
warnings, schedules, and connecting services which would allow a user to
solicit a vehicle progress report in a manner commensurate with the method
steps of independent claim 1, discussed supra. (FF L2, L4, L5, L9).
Accordingly, we find that the combination of Jones '020 and Labell
makes obvious the computer system as recited in the preamble of claim 1
which is capable of, and thus makes obvious the computer system’s intended
use of “initiating a communication with said system communication device
to the user communications device before the vehicle reaches said vehicle
stop to thereby indicate impending arrival of the vehicle at said vehicle stop”
and additionally the step of “providing said vehicle progress report from said
computer system to said user during said communication link.” Therefore,
for these reasons and the reasons discussed supra, Appellant’s arguments are
unpersuasive as to error in the rejection.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

40
Additionally, with respect to Appellant’s argument that one of
ordinary skill in the art at the time of the invention “would not of reasonably
looked to Labell to solve a problem for receiving a vehicle progress report in
the manner claimed,” we cannot agree, and find that to the extent Appellant
seeks an explicit suggestion or motivation in the reference itself, this is no
longer the law in view of the Court’s holding in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Here, the Examiner has provided an
articulated reasoning with rational underpinning for why a person with
ordinary skill in the art would modify the advance notification system of
Jones '020 which initiates a communication (FF J1, J2, J3) to incorporate the
advanced traveler information systems (i.e., PTI and AVL systems) as taught
by Labell which provide real-time updates on expected transit arrival times
and warns transit users of delays to users in their home or office. (FF L9).
Specifically, the Examiner articulates a rationale based on encouraging more
use of the transit system by providing users with the personalized
information of Labell. (Ans. 23).
We agree with the Examiner, and find that the modifications proposed
by the Examiner amount to nothing more than the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). Further, Appellant has not proffered any
arguments as to why these substitutions of known elements would not be
obvious, but only make assertions against their combination. (Br. 40).
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

41
Therefore, for these reasons, and the reasons discussed supra, the
combination of Jones '020 and Labell makes obvious the subject matter of
independent claim 1. Accordingly, we find these arguments unpersuasive.

Independent claim 11
Appellant generally argues that the combination of Jones '020 and
Labell fails to teach or suggest “a system communications device in
communication with said computer system, said system communications
device for communicating with said user communications device at a time
before said vehicle reaches said vehicle stop,” as recited in independent
system claim 11. (Br. 43). Specifically, Appellant argues that “Labell does
not disclose that in-vehicle information systems initiate communication for
the purpose of indicating impending arrival of a vehicle.” (Br. 44). We are
not persuaded by Appellant’s argument and find that Appellant is arguing
unclaimed limitations, and thus making arguments not commensurate with
the scope of Appellant’s claim. As discussed supra, to makes obvious
Appellant’s independent claim 11, the combination of Jones '020 and Labell
does not need to initiate a communication, but only have a system
communication device capable of communicating with a user
communication device at a time before a vehicle reaches a vehicle stop.
Therefore, in notifying the homes of the school children of the impending
arrival of the school bus (FF J2, J3), the combination of Jones '020 and
Labell makes obvious Appellant’s independent claim 11. Accordingly, for
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

42
these reasons, and the reasons discussed supra, Appellant’s arguments are
unpersuasive as to error in the rejection.

Dependent claims 2, 7, 12, 15-17, 20, and 26
Appellant does not separately argue claims 2, 7, 12, 15-17, 20, and 26
which depend from claims 1 and 11, respectively, and so, we find no error in
the Examiner’s rejection of claims 2, 7, 12, 15-17, 20, and 26 under 35
U.S.C. § 103(a) as obvious over Jones '020 and Labell for the same reasons
we found as to claims 1 and 11, supra.

ISSUE 8
Appellant does not separately argue claims 3-6, 8, 9, 13, 14, 18, 19, 21
and 25 which depend from claims 1 and 11, respectively, and so, we find no
error in the Examiner’s rejection of claims 3-6, 8, 9, 13, 14, 18, 19, 21 and
25 under 35 U.S.C. § 103(a) for the same reasons we found as to claims 1
and 11, supra.

ISSUE 9
Claims 1, 6, 7, 10, 11, 14-17, 20, 22, 23, 24, and 26 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Burgener '457.
Independent claim 1
Appellant generally argues that Burgener '457 fails to disclose “a
computer system for monitoring travel of said vehicle in relation to said
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

43
vehicle stop and for initiating a communication with said system
communication device to the user communications device before the vehicle
reaches said vehicle stop to thereby indicate impending arrival of the vehicle
at said vehicle stop,” recited as a system limitation in the preamble of
independent claim 1, and the method steps of “permitting said user to solicit
a vehicle progress report relating to said vehicle” and “providing said
vehicle progress report from said computer system to said user during said
communication link,” as recited in claim 1. (Br. 50). Specifically,
Appellant argues that Burgener '457 fails to disclose that an impending
arrival initiates communication with the portable device. (Id.).
We are not persuaded by Appellant’s arguments and find that as
discussed supra, with respect to the Labell, Kikuchi, and Schmier
references, Burgener '457, too, is capable of initiating a communication with
a system communication device to a user communications device associated
with the user, as presently claimed. (FF S1, S3, S5). Specifically, Burgener
'457 discloses a portable transit data information system which provides
users with an accessible continuously updated arrival time estimate of the
next vehicle arriving at vehicle stops such as bus stops which utilizes a GPS
which provides vehicle position data to a central computer which processes
these data and then wirelessly broadcasts the data to a portable
display/receiver. (FF B1, B2). Additionally, Burgener '457 provides this
arrival time notification to users once they have entered either a receiver
code or number into their portable display/receiver. (FF B3).
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

44
Therefore, since Burgener '457 discloses a portable display/receiver
which establishes wireless communication with a central computer and then
receives updated arrival time estimate for the next vehicle arriving at
specific vehicle stops such as bus stops, we agree with the Examiner that this
information would allow the user to solicit a vehicle progress report which
includes the impending arrival of a vehicle at a vehicle stop before the
vehicle reaches the vehicle stop in a manner commensurate with the method
steps of independent claim 1, discussed supra. (FF S3, S5). Hence, contrary
to Appellant’s assertion that the vehicle progress reports in Burgener '457
are sent continuously or periodically, and thus without user solicitation (Br.
50), we find that by entering a receiver code or number into the portable
display/receiver, a user does indeed solicit a vehicle progress report
regardless of how often the reports are sent. Accordingly, we find that
Burgener '457 discloses the computer system as recited in the preamble of
claim 1 which is capable of, and thus anticipates “initiating a communication
with said system communication device to the user communications device
before the vehicle reaches said vehicle stop to thereby indicate impending
arrival of the vehicle at said vehicle stop.” As such, Appellant’s argument is
unpersuasive.
Additionally, with respect to Appellant’s argument that Burgener '457
does not disclose the method steps of “permitting said user to solicit a
vehicle progress report relating to said vehicle” and “providing said vehicle
progress report from said computer system to said user during said
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

45
communication link,” as recited by independent claim 1, we cannot agree
with Appellant’s argument and find that as discussed supra, Burgener '457
discloses that a user enters a receiver code or number which then allows the
user to receive updated arrival time estimate for the next vehicle arriving at
specific vehicle stops such as bus stops. (FF B1, B3). Thus, Burgener '457
discloses a step which requires a user to solicit a vehicle progress report
which then during this communication link can provide that user with the
vehicle progress report. Therefore, since Burgener '457 discloses the
requisite structure set forth in the preamble of claim 1, and Burgener '457
discloses the method steps by which a user solicits and is subsequently
provided a vehicle progress report over a communication link established
between a user communication device and a system communication device
discussed supra, we find that Burgener '457 anticipates independent claim 1.
Accordingly, for these reasons, and the reasons discussed supra, Appellant’s
arguments are not persuasive as to error in the rejection.

Independent claim 11
Appellant generally argues that Burgener '457 fails to disclose “a
system communications device in communication with said computer
system, said system communications device for communicating with said
user communications device at a time before said vehicle reaches said
vehicle stop,” as recited in claim 11. (Br. 53). Specifically, Appellant
argues that “Burgener '457 fails to disclose than an impending arrival
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

46
initiates communications with the portable device.” (Br. 54). We are not
persuaded by Appellant’s argument and find that Appellant is arguing
unclaimed limitations, and thus making arguments not commensurate with
the scope of Appellant’s claim. As discussed supra, to anticipate
Appellant’s independent claim 11, Burgener '457 does not need to initiate a
communication, but only have a system communication device capable of
communicating with a user communication device at a time before a vehicle
reaches a vehicle stop. Therefore, in providing a user’s portable
receiver/display with updated arrival time estimate for the next vehicle
arriving at vehicle stops through a radio broadcasting means (FF B1, B2),
Burgener '457 anticipates Appellant’s independent claim 11. Accordingly,
for these reasons, and the reasons discussed supra, Appellant’s arguments
are unpersuasive as to error in the rejection.

Dependent claims 6, 7, 10, 14-17, 20, 22-24, and 26
Appellant does not separately argue claims 6, 7, 10, 14-17, 20, 22-24,
and 26 which depend from claims 1 and 11, respectively, and so, we find no
error in the Examiner’s rejection of claims 6, 7, 10, 14-17, 20, 22-24, and 26
under 35 U.S.C. § 102(b) as anticipated by Burgener '457 for the same
reasons we found as to claims 1 and 11, supra.

ISSUE 10
Appellant does not separately argue claims 2-6, 8, 9, 12-14, 18, 19,
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

47
21, 24, and 25 which depend from claims 1 and 11, respectively, and so, we
find no error in the Examiner’s rejection of claims 2-6, 8, 9, 12-14, 18, 19,
21, 24, and 25 under 35 U.S.C. § 103(a) for the same reasons we found as to
claims 1 and 11, supra.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

48
CONCLUSIONS
Based on the foregoing, we conclude that:
1) The Examiner did not err in concluding that Labell teaches or
suggests a computer system capable of initiating a communication and the
step of providing a vehicle progress report, as generally recited by
independent method claim 1, and a system communication device and
vehicle progress report generator, as generally recited by independent
system claim 11 under 35 U.S.C. § 103(a) as obvious.
2) The Examiner did not err in concluding that the combinations of
Labell, Kemppainen, Burgener '457, Schmier, Kikuchi, Westerlage, and
Ross, as applied to the rejections of claims 2-6, 8, 9, 12-14, 18, 19, 21, 24,
and 25, teach or suggest all the elements of those claims under 35 U.S.C.
§ 103(a) as obvious.
3) The Examiner did not err in finding that Kikuchi discloses a
computer system capable of initiating a communication and the step of
providing a vehicle progress report, as generally recited by independent
method claim 1, and a system communication device, as generally recited by
independent system claim 11 under 35 U.S.C. § 102(b) as anticipated.
4) The Examiner did not err in concluding that the combinations of
Kikuchi, Kay, Collins, Ehrlich, Burgener '457, Schmier, Westerlage, and
Ross, as applied to the rejections of claims 2-6, 12-14, 21, 24, and 25, teach
or suggest all the elements of those claims under 35 U.S.C. § 103(a) as
obvious.
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

49
5) The Examiner did not err in finding that Schmier discloses a
computer system capable of initiating a communication and the step of
providing a vehicle progress report, as generally recited by independent
method claim 1, and a system communication device, as generally recited by
independent system claim 11 under 35 U.S.C. § 102(e) as anticipated.
6) The Examiner did not err in finding that the combinations of
Schmier, Westerlage, and Ross, as applied to the rejections of claims 21 and
25, teach or suggest all the elements of those claims under 35 U.S.C.
§ 103(a) as obvious.
7) The Examiner did not err in concluding that the combination of
Jones '020 and Labell teaches or suggests a computer system capable of
initiating a communication and the step of providing a vehicle progress
report, as generally recited by independent method claim 1, and a system
communication device, as generally recited by independent system claim 11
under 35 U.S.C. § 103(a) as obvious.
8) The Examiner did not err in concluding that the combinations of
Jones '020, Labell, Kemppainen, Burgener '457 or Schmier, Kikuchi,
Westerlage, and Ross, as applied to the rejections of claims 3-6, 8, 9, 13, 14,
18, 19, 21, 24, and 25, teach or suggest all the elements of those claims
under 35 U.S.C. § 103(a) as obvious.
9) The Examiner did not err in finding that the computer system
disclosed in Burgener '457 is capable of initiating a communication and the
steps of permitting a user to solicit a vehicle progress report and providing a
Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

50
vehicle progress report, as generally recited by independent method claim 1,
and a system communication device and vehicle progress report generator,
as generally recited by independent system claim 11 under 35 U.S.C.
§ 102(b) as anticipated.
10) The Examiner did not err in concluding that the combinations of
Burgener '457, Kemppainen, Schmier, Kikuchi, Westerlage, and Ross, as
applied to the rejections of claims 2-6, 8, 9, 12-14, 18, 19, 21, 24, and 25,
teach or suggest all the elements of those claims under 35 U.S.C. § 103(a) as
obvious.

DECISION
The decision of the Examiner to reject claims 1-26 under 35 U.S.C.
§§ 102 (b), 102(e), and 103(a) is AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

Appeal 2010-008091
Reexamination Control 95/000,368
United States Patent 6,748,320 B2

51
saw

cc:

PATENT OWNER:

THOMAS, KAYDEN, HORSTEMEYER & RISLEY, LLP
600 GALLERIA PARKWAY, S.E.
STE 1500
ATLANTA, GA 30339-5994

THIRD-PARTY REQUESTOR:

GOODWIN PROCTER LLP
901 NEW YORK AVENUE NW
WASHINGTON, D.C. 20001