Ex Parte Breed

Board of Patent Appeals and Interferences

Jan 29, 2009

10940881 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID S. BREED
_____________

Appeal 2008-5068
Application 10/940,881
Technology Center 2600
______________

Decided: January 29, 2009
_______________

Before ROBERT E. NAPPI, MARC S. HOFF and CARLA M. KRIVAK
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the Examiner’s
final rejection of claims 1 through 3, 5, 6, 10, 12, 14, 15, 18 through 20, 22
23, 25 through 32. Claims 21 and 24 have been canceled. We note that the
Examiner’s final rejection dated April 16, 2007 also identified claims 4, 7
through 9, 11, 13, 16, and 17 as rejected. However, the only rejection
applied to these claims, under 35 U.S.C. § 112, was withdrawn. Answer 2.
Accordingly, there is no rejection of claims 4, 7 through 9, 11, 13, 16, and
17 before us.
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We affirm-in-part the Examiner’s rejections of these claims.

INVENTION
The invention is directed towards a system “for wirelessly controlling
systems in an asset, such as a house or trailer, in which a movable device,
such as a PDA” includes a transmitter arranged to transmit signals and “a
control unit is arranged on or in connection with the asset and includes a
receiver which communicates with the transmitter and a processor coupled
to the receiver and which generates different command signals based on
signals generated by the transmitter and received by the receiver. Each
system is arranged on or in connection with the asset and coupled to the
control unit and is responsive to command signals from the processor to
perform a function relating to or affecting the asset.” See page 506
(Abstract) of Appellant’s Specification. Claim 27 is representative of the
invention and reproduced below:
27. An arrangement for wirelessly controlling systems in an
asset, comprising;
a movable device including a transmitter arranged to transmit
different control signals based on user activation, said movable device
being a cell phone or a PDA;
a control unit arranged on or in connection with the asset, said
control unit including a receiver arranged to communicate with said
transmitter and a processor coupled to said receiver and arranged to
generate one of a plurality of different command signals based on
control signals transmitted by said transmitter and received by said
receiver; and
a plurality of systems each arranged on or in connection with
the asset, all of said systems being coupled to said control unit, each
of said systems being responsive to command signals generated by
said processor to perform a function relating to or affecting the asset,
each of said systems being only indirectly controlled by said
cell phone or PDA through the intermediary of said control unit by
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causing said transmitter of said cell phone or PDA to transmit a
specific control signal which, when received by said receiver of said
control unit, causes said processor of said control unit to generate a
unique command signal to which only said system is responsive and
direct the unique command signal to said system.

REFERENCES

Huang US 6,437,836 B1 Aug. 20, 2002

Joao US 6,542,076 B1 Apr. 1, 2003

Antico US 6,826,514 B1 Nov. 30, 2004

REJECTIONS AT ISSUE
The Examiner has rejected claims 27 through 30 under 35 U.S.C.
§ 102 as being anticipated by Joao. The Examiner’s rejection is on pages 3
and 4 of the Answer.1
The Examiner has rejected claims 1 through 3, 5, 6, 10, 12, 15, 18, 19,
22, 23, 25, 26, 31, and 32 under 35 U.S.C. § 103 as being unpatentable over
Joao in view of Huang. The Examiner’s rejection is on pages 5 through 9 of
the Answer.
The Examiner has rejected claims 14 and 20 under 35 U.S.C. § 103 as
being unpatentable over Joao in view of Huang and Antico. The Examiner’s
rejection is on page 9 of the Answer.

1 Throughout the opinion, we make reference to the Answer, mailed January
24, 2007, for the respective details thereof.
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ISSUES
Rejection under 35 U.S.C. § 102
Appellant argues on page 6 of the Brief2 that the Examiner’s rejection
of claims 27 through 30 under 35 U.S.C. § 102 is in error. Appellant asserts
on page 8 of the Brief that the Examiner erred in finding that Joao teaches a
plurality of systems arranged on or in connection with an asset, which are
responsive to command signals to perform a function relating to or affecting
the asset as claimed.
Thus, Appellant’s contentions with respect to the claims rejected
under 35 U.S.C. § 102 present us with the following issue: has Appellant
shown that the Examiner erred in finding that Joao teaches a control unit
coupled to systems of an asset, where each of the systems is responsive to
command signals to perform a function relating to or affecting the asset, as
recited in claim 27?3

Rejection under 35 U.S.C. § 103 based upon Joao and Huang
Appellant argues on page 7 and 8 of the Brief that the Examiner’s
rejection of claims 1 through 3, 5, 6, 10, 12, 15, 18, 19, 22, 23, 25, 26, 31,
and 32 under 35 U.S.C. § 103 is in error. Appellant argues that the rejection
is in error for the reasons discussed with respect to the rejection under 35
U.S.C. § 102. Appellant further argues that the combination of Joao and

2 Throughout the opinion, we make reference to the Brief, received
November 21, 2007, and the Reply Brief received February 6, 2008, for
details thereof.
3 Appellant’s arguments addressed claims 27 through 30 as a group.
Accordingly, we select claim 27 to be representative of this group of claims.

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Huang does not teach two of the features of independent claims 1 and 15.
Specifically, Appellant argues that the art does not teach that the movable
device is programmable via the Internet as claimed (Brief 7, Reply Brief 1),
and that the art does not teach bi-directional communication between the
mobile device and the transmitter as claimed. Additionally, with respect to
claims 22 and 25 Appellant argues that since the art does not teach bi-
directional communication it does not teach the responsive follow up
message as claimed.
Thus, Appellant’s contentions with respect to the rejection under 35
U.S.C. § 103 based upon Joao and Huang present us with the same issue
discussed with respect to the rejection under 35 U.S.C. § 102 and the
following additional issues as applied to claim 14:
Has Appellant shown that the Examiner erred in finding that the
combination of Joao and Huang teaches programming the mobile unit as
claimed?
Has Appellant shown that the Examiner erred in finding that the
combination of Joao and Huang teaches bi-directional communication as
claimed?
Appellant’s contentions with respect to claims 22 and 25 present us
with the additional issue: has Appellant shown that the Examiner erred in

4 Appellant’s arguments address the claims rejected under 35 U.S.C. § 103
based upon Joao and Huang in two groups. The first group being claims 1
through 3, 6, 10, 12, 15, 18, 19, 23, 26, 31, and 32, and we select claim 1 as
representative of this group. The second group is claims 22 and 25, and we
select claim 22 as representative of this group. As claim 5 is dependent upon
claim 11 (which is not subject to a rejection) we will treat claim 5 separately.
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finding that the combination of Joao and Huang teaches the follow up
message as recited in claims 22 and 25?

Rejection under 35 U.S.C. § 103 based upon Joao, Huang and Antico.
Appellant argues on page 9 and 10 of the Brief that the Examiner’s
rejection of claims 14 and 20 under 35 U.S.C. § 103 is in error. Appellant
argues that the rejection is in error for the reasons discussed with respect to
the rejection under 35 U.S.C. § 102. Appellant further argues that Antico is
not from the same art area as Joao and Huang. Appellant reasons that
Antico, the reference the Examiner applies to teach satellite to Internet
communication, is concerned with transmitting data and not transmitting
control signals. Brief 9. Additionally, Appellant asserts that Antico is
different from Joao as Antico teaches transmitting data from an asset to a
monitoring facility whereas Joao is concerned with transmission from a
transmitter to an asset. Brief 9.
Thus, Appellant’s contentions with respect to the rejection of claims
14 and 205 under 35 U.S.C. § 103 based upon Joao and Huang present us
with the same issue as discussed with respect to the rejection under 35
U.S.C. § 102 and the following additional issue:
Has Appellant shown that the Examiner erred in finding that one
skilled in the art would apply Antico’s teaching of using satellite to Internet
communications to Joao’s system?

5 Appellant’s arguments group claims 14 and 20. Thus, we select claim 14 to
be representative of the group.
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PRINCIPLES OF LAW
In analyzing the scope of the claims, Office personnel must rely on
Appellant’s disclosure to properly determine the meaning of the terms used
in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980
(Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim is not to
be confused with adding an extraneous limitation appearing in the
specification, which is improper.” (Emphasis original). In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (citations and
quotations omitted).
On the issue of obviousness, the Supreme Court has recently stated
that “the obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation.” KSR Int’l
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Further, 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, 127 S. Ct. at 1739. “One of the ways in which a patent’s subject
matter can be proved obvious is by noting that there existed at the time of
the invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.” Id. at 1742.
The test for non-analogous art is first whether the art is within the
field of the inventor's endeavor and, if not, whether it is reasonably pertinent
to the problem with which the inventor was involved. In re Wood, 599 F.2d
1032, 1036 (CCPA 1979). A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it logically would have
commended itself to an inventor's attention in considering his problem
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because of the matter with which it deals. In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992).

FINDINGS OF FACT
1. Joao teaches a control, monitoring, and security system for use with
vehicles or premises. The system makes use of a first control device
(CPU item 4, depicted in figures 1, 5A, 5B, 9, 11A through 16)
located on the vehicle or premises, which enables/disables systems on
the vehicle or premises. This control device controls the subsystems
in response to a signal generated and transmitted from a second
control device (transmitter item 2 depicted in figures 1, 5A, 5B, 9, and
11A through 16). Abstract.
2. When used in a vehicle, the systems on the vehicle controlled by the
first device include lights, lock, video recording device, ignition
system, fuel system, etc. Joao, col. 4, l. 61- col. 5, l. 20, col. 9, ll. 20-
28.
3. The vehicle can be a marine vessel (i.e., a boat or ship). Joao, col. 62,
ll. 27-36.
4. When used in a premise, the systems in the premises controlled
include aspects of the heating and cooling system, including the
thermostat temperature setting, water pumps, sprinkler systems, lights,
etc. Joao, col. 11, ll. 40-67, col. 12, ll. 17-67, col. 86, ll. 33-47, col.
87, ll. 1-39.
5. The second control device, transmitter system item 2, transmits
signals to the CPU, item 4, via receiver item 3. Joao, col. 22, ll. 45-
54, col. 23, ll. 48-60.
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6. The second control device, transmitter system item 2, also includes a
receiver to receive signals from the CPU, item 4, via a transmitter,
item 3a or item 4a. Joao, col. 21, ll. 35-51, col. 23, ll. 10-18, col. 24,
ll. 17-31, col. 38, ll. 31-35.
7. The user interactive control afforded by the second control device
transmitter, item 2, may be accomplished with many types of devices
including, telephones, personal digital assistants (PDA), or personal
computers. Joao, col. 15, ll. 35-60, col. 100 ll. 32-55.
8. The communication medium between the control units can be any of a
number of means including radio, satellite, or other means including
the Internet. Joao, col. 6, ll. 20-29, col. 22, ll. 1-12, col. 57, ll. 34-53,
col. 100, ll. 28-31 and ll. 48-55.
9. The user interactive control device issues a command to the first
control unit in the form of a command code. The first control unit
may respond by acknowledging receipt of the command. The first
control unit can also respond by providing diagnostic information to
the user. The user can then follow up to the diagnostic information by
providing repair signal to reprogram CPU item 4. Joao, col. 38, ll. 31-
40, col. 50, ll. 9-37.
10. Huang teaches a method of using a PDA as a remote control for
devices that use a remote control. Abstract, col. 4, ll. 7-11.
11. Huang teaches in one embodiment that files which contain all of the
programming to allow the PDA to control the devices can be
downloaded via the Internet and World Wide Web. Abstract, col. 4,
ll. 12-21, col. 5, ll. 22-25.
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12. Antico teaches a system of monitoring containers on a cargo ship.
Each container has a unit which monitors the conditions in the
container and transmits the data about the conditions to a shipboard
transponder. The shipboard transponder transmits the information to a
satellite which relays the information to a ground unit. Abstract, col.
6, ll. 1-7
13. In one embodiment of Antico’s system information received at the
ground unit by the satellite link is made available on the Internet. Col.
4, ll. 26-50.
14. Antico teaches that the satellite communication with the ship is
bi-directional. Abstract , col. 5, ll. 15-16.

ANALYSIS
Rejection under 35 U.S.C. § 102
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that Joao teaches a control unit coupled to systems of an asset,
where each of the systems is responsive to command signals to perform a
function relating to or affecting the asset. Claim 27 recites “each of said
systems being responsive to command signals generated by said processor to
perform a function relating to or affecting the asset.” It is unclear from
Appellant’s argument if Appellant is challenging (a) the Examiner’s finding
that Joao’s system teaches controlling an asset (i.e., whether the vehicle in
Joao is an asset), or (b) the Examiner’s finding that controlling a fuel pump
of a vehicle is a system which performs a function relating to or affecting an
asset. We note that Appellant’s Specification discusses embodiments where
the asset is a vehicle or a building such as a house, see embodiments of
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Specification page 491, lines 24-31. Thus, we find that the scope of the term
“asset” in claim 27 includes both vehicles and buildings such as houses.
Further, the Examiner has interpreted the term “performing a function
relating to or affecting the asset” in the alternative. Answer 10. We concur
with this interpretation and consider the scope of the limitation to be that
each of the systems is responsive to command signals generated by the
processor to: perform a function relating to the asset; or perform a function
affecting the asset.
Given this claim interpretation, we find sufficient evidence to support
the Examiner’s finding that Joao teaches a control unit coupled to systems of
an asset, where each of the systems is responsive to command signals to
perform a function relating to or affecting the asset. The Examiner has
found that Joao’s teaching of a system to control a vehicle (an asset) to
disable the fuel pump (a system of the vehicle) meets the limitations of claim
27. Answer 10. We concur. Joao teaches using a mobile element, e.g., a
PDA, which can transmit control codes to a vehicle. Facts 1, 2, and 7. The
vehicle has a processor which receives these codes and controls systems on
the vehicle. Facts 1 and 5. We consider the disabling of a vehicle’s fuel
pump to affect the asset in that it disables the vehicle. Further, inasmuch as
Appellant may have intended claim 27 to include a more narrow scope of the
term “a function relating to the asset,” we note that one of the examples of a
function relating to an asset in Appellant’s Specification involves controlling
a thermostat in a building (Specification 492:34), we also find that Joao
teaches such remote control. Fact 4. For the aforementioned reasons,
Appellant’s arguments have not persuaded us that the Examiner erred in
finding that Joao teaches a control unit coupled to systems of an asset, where
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each of the systems is responsive to command signals to perform a function
relating to or affecting the asset. Accordingly, we sustain the Examiner’s
rejection of claims 27 through 30.

Rejection under 35 U.S.C. § 103 based upon Joao and Huang
Claim 5
Initially, we note that the Examiner has included dependent claim 5 in
the rejection based upon Joao and Huang. Claim 5 is ultimately dependent
upon claim 11, which, as discussed supra, is not subject to any rejection of
record. Thus, we do not find that the Examiner has established that claim 5
is unpatentable over Joao and Huang, and we reverse the Examiner’s
rejection of this claim.
Claims 1 through 3, 6, 10, 12, 15, 18, 19, 23, 26, 31, and 32
Appellant’s arguments have not convinced us that the Examiner erred
in finding that the combination of Joao and Huang teaches programming the
mobile unit as claimed. Representative claim 1 recites “said movable device
being programmable via the Internet to enable the transmission of the
specific control signals by said transmitter to cause said processor to
generate the unique command signals and provide for responses by said
systems.” Thus, the scope of claim 1 includes that the mobile unit is
programmable through a connection to the Internet, and that the
programming enables transmission of control signals.
The Examiner has found that Joao teaches use of a control device that
transmits commands to a controller on a vehicle. Answer 5 and 6. As
discussed supra with respect to claim 27 we find ample evidence to support
this finding by the Examiner. Further, the Examiner has found that Huang
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teaches programming a mobile device over the Internet. Answer 6 and 10.
We concur with the Examiner’s findings and find that Huang teaches using a
personal digital assistant as a remote controller for devices and that the
codes to control the devices can be downloaded via the Internet. Facts 10
and 11. The Examiner has found that it would be obvious to combine these
teachings. We concur as we consider that applying Huang’s teaching of
using the Internet to download files, which includes control code
programming (col. 4, ll. 19-20), to a PDA with the PDA controller of Joao’s
system to be nothing more than using known techniques for their known
purposes. Contrary to Appellant’s arguments, we do not find that the files
downloaded by Huang’s device to be different than those claimed. In Huang
the data files downloaded provide the data that enables the PDA to be
programmed to control a device. Fact 11. Thus, Appellant’s arguments
have not persuaded us that the Examiner erred in finding that the
combination of Joao and Huang teaches programming the mobile unit as
recited in claim 1.
Appellant’s arguments directed to the second issue raised with respect
to the rejection of claim 1 has not convinced us that the Examiner erred in
finding that the combination of Joao and Huang teaches bi-directional
communication as claimed. Representative claim 1 recites “said at least one
control unit being arranged to send a return signal in response to reception of
a signal by said receiver which was transmitted by said transmitter to
thereby provide bi-directional signal transmission between said transmitter
and said at least one control unit.” Thus, the scope of claim 1 includes that
the control unit, in response to receiving a signal from the transmitter of the
mobile device, sends a response.
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Contrary to Appellant’s argument on page 8 of the Brief, we find that
Joao teaches that upon receipt of a command from the transmitter of the user
interactive control device (which can be a PDA, i.e., a mobile device) the
CPU (i.e., a control unit) of the vehicle responds with an acknowledgement
of the command. Fact 6. Further, Joao teaches an embodiment where the
command from the mobile device prompts the CPU to provide diagnostic
information. Fact 9. Both of these situations involve bi-directional
communication between the user’s interactive control device and the control
device of the vehicle. Thus, there is ample evidence of record to support the
Examiner’s finding that the combination of Joao and Huang teaches
bi-directional communication as claimed.
For the aforementioned reasons Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claims 1 through 3, 6,
10, 12, 15, 18, 19, 23, 26, 31, and 32 under 35 U.S.C. § 103.
Claims 22 and 25
Appellant’ arguments have persuaded us that the Examiner erred in
finding that the combination of Joao and Huang teaches the follow-up
message as recited in claims 22 and 25. Claim 22 is dependent upon claim 1
and recites that the mobile unit responds to the reply message from the
control unit by transmitting a follow-up message where “said follow-up
message being a message of a type which only said movable device is
arranged to provide to thereby ensure secure communications between said
movable device and said at least one control unit.” Claim 25 recites similar
limitations and is dependent upon claim 15. Thus, the scope of these claims
includes that the mobile unit issues a command to the control unit which in
turn sends a return signal (see discussion of claim 1 above) and in response
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to the return signal the mobile unit sends a follow-up message that only the
mobile unit provides, thus ensuring secure communications.
The Examiner, in rejecting claim 22, finds that Joao, in column 38,
lines 41-60, teaches the limitations of claim 22. Answer 8 and 10. We
disagree with the Examiner’s findings. As discussed above, we find that
Joao teaches bi-directional communication between a mobile device and
controller on a vehicle as recited in claim 1. Further, we find that there is
evidence that the mobile device can download programs and other data to
the controller on the vehicle. Fact 9. Thus, there is a follow-up
communication, but not of codes, to establish secure communications.
Further, Joao does teach use of codes from the mobile device to the
controller on the vehicle; however, we do not find that Joao teaches that the
mobile device transmits a follow-up message to the vehicle controller upon
receipt of a reply to establish secure communications. Accordingly, we will
not sustain the Examiner’s rejection of claims 22 and 25 under 35 U.S.C.
§ 103.

Rejection under 35 U.S.C. § 103 based upon Joao, Huang, and
Antico.
Appellant’s arguments have not convinced us that the Examiner erred
in rejecting claims 14 and 20 by finding that one skilled in the art would
apply Antico’s teaching of using satellite to Internet communications to
Joao’s system. Claim 14 is dependent upon claim 1 and further recites that
the transmitter (of the mobile unit) is arranged to transmit control signals to
a satellite for re-transmission from the satellite to a network coupled to the
Internet. The Examiner relies upon Antico as teaching this limitation and
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that Antico is analogous art. Answer 9 and 11. We concur with the
Examiner’s conclusions.
Initially, we note that Joao teaches using both satellite communication
and Internet communication between the mobile unit and the controller on
the vehicle. Further, we note that Joao teaches that the system can use other
known communications systems. Fact 8. Antico teaches that it was known
to use a communication system where there is communication with a
satellite and the satellite re-transmits the information to a network coupled to
the Internet. Fact 12 and 13. Thus, we consider that the use of satellite to
Internet communication to be nothing more than using known
communications systems to produce the predictable result of providing
communication between two distant devices. Further, we consider Antico’s
teachings to be reasonably pertinent to the problems of communicating
between devices in Joao’s system. Both systems deal with communication
to and from vehicles, Antico teaches communication to and from a ship
(Fact 12) and Joao teaches the system can be used on many types of vehicles
including a ship (Fact 3). Contrary to Appellant’s arguments, we do not
consider that one skilled in the art would be deterred from using Antico’s
communication system because the type of data being communicated is
different than in Joao, as the need for communicating over distance, rather
than the type of data to be communicated, provides the suggestion to use
Antico’s system. Further, Appellant’s arguments directed to the direction of
communication being different in Antico than what is claimed or taught by
Joao are not persuasive, because Antico teaches that the satellite
communication system is bi-directional. Fact 14. As such, we do not find
that the skilled artisan would be deterred from using such a system to
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communicate the commands as taught by Joao. Thus, Appellant has not
persuaded us that the Examiner erred in finding that one skilled in the art
would apply Antico’s teaching of using satellite to Internet communications
to Joao’s system. Accordingly, we sustain the Examiner’s rejection of
claims 14 and 20.

SUMMARY
We sustain the Examiner’s rejection of claims 27 through 30 under 35
U.S.C. § 102, and the Examiner’s rejection of claims 1 through 3, 6, 10, 12,
14, 15, 18, 19, 20, 23, 26, 31, and 32, and under 35 U.S.C. § 103. However,
we will not sustain the Examiner’s rejection of claims 5, 22, and 25 under 35
U.S.C. § 103.
ORDER
The decision of the Examiner to reject claims 1 through 3, 5, 6, 10,
12, 14, 15, 18 through 20, 22, 23, and 25 through 32 is affirmed-in-part.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ELD

BRIAN ROFFE, ESQ
11 SUNRISE PLAZA, SUITE 303
VALLEY STREAM, NY 11580-6111
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