Ex Parte Cepuran et al

Patent Trial and Appeal Board

Mar 22, 2017

13782035 (P.T.A.B. Mar. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/782,035 03/01/2013 Lawrence D. Cepuran P022041-OST-ALS/710873 7510
73811 7590 03/24/2017
Leydig, Voit & Mayer, Ltd.
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
FANG, PAKEE
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
03/24/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE D. CEPURAN, STEVEN SWANSON, and
DAVID GEORGE
Appeal 2016-007267
Application 13/782,0351
Technology Center 2600
Before HUNG H. BUI, NABEEL U. KHAN, and MICHAEL M. BARRY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 According to Appellants, the real party in interest is General Motors LLC.
App. Br. 1.
2 Our Decision refers to Appellants’ Appeal Brief filed January 8, 2016
(“App. Br.”); Reply Brief filed July 11, 2016 (“Reply Br.”); Examiner’s
Answer mailed May 12, 2016 (“Ans.”); Final Office Action mailed August
7, 2015 (“Final Act.”); and original Specification filed March 1, 2013
(“Spec.”).
Appeal 2016-007267
Application 13/782,035
STATEMENT OF THE CASE
Appellants ’ Invention
A conventional wireless communication device (e.g., mobile phone)
requires an installation of a new SIM (Subscriber Identity Module) card each
time a wireless carrier is changed or switched (e.g., from AT&T to Verizon
or Sprint). Spec. 14. However, in the context of a telematics system
onboard a telematics-equipped vehicle, each SIM card is embedded in a
telematics unit, for example, physically soldered to a printed circuit board
(PCB) in a vehicle communications platform (VCP) or a network access
device (NAD) and, as such, cannot be replaced each time a wireless carrier
is changed. Spec. 14. In these telematics systems, an over-the-air (OTA)
re-flashing or re-registration method is used to update the wireless carrier,
which presents certain drawbacks, i.e., the telematics system must (1) have a
valid account, and (2) be in coverage and able to connect with the cellular
network. Spec. 1 5.
As a solution, Appellants’ invention proposes re-provisioning a
telematics unit of a telematics-equipped vehicle using a separate computing
device that is connected to the on-board diagnostics interface of the
telematics-equipped vehicle, via a communications bus, “[1] without
removal of the subscriber identification [SIM] card and [2] without
conducting an OTA re-flashing session.” Spec. ^fl[ 34—39, Figures 2—3.
Appellants’ Figure 2 is reproduced below with additional markings
for illustration.
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Application 13/782,035
■■ > *• V V + * + * * ■ y <■ V ->
As shown in Appellants’ Figure 2, the re-provisioning tool is an
application running on PC 202, which is operated by technician 222. PC
202 is connected to vehicle communication platform (VCP) 212 of vehicle
203, via on-board diagnostics (OBD) interface 211, in order to allow re­
provisioning tool (1) to communicate with SIM card 215, (2) to utilize an
identifier associated with SIM card 215 to request subscription information
pertaining to SIM card 215 from subscriber credentials server 201, and (3) to
utilize subscription information pertaining to SIM card 215 received from
subscriber credentials server 201 in order to re-provision or reprogram SIM
card 215 for wireless services according to that subscription. Spec. 36—
39.
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Application 13/782,035
Representative Claim
Claims 1, 9, and 17 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics'.
1. A method for re-provisioning a telematics unit of a
telematics-equipped vehicle for wireless services, the method
comprising:
connecting a computing device to an on-board diagnostics
interface of the telematics-equipped vehicle via a
communications bus;
accessing, by the computing device, a subscriber
identification card of the telematics unit via the on-board
diagnostics interface',
requesting, by the computing device, subscription
information from a subscriber credentials server via a network
connection;
receiving, by the computing device, the subscription
information; and
reprogramming, via the on-board diagnostics interface of
the telematics-equipped vehicle, by the computing device, the
subscriber identification card of the telematics unit for wireless
services based on the received subscription information.
App. Br. 11 (Claims App’x).
Examiner’s Rejection and References
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard (US 2010/0203864 Al; published Aug. 12, 2010)
and Farhan et al. (US 2012/0268235 Al; published Oct. 25, 2012;
“Farhan”). Final Act. 2—8.
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Appeal 2016-007267
Application 13/782,035
Issues on Appeal
Based on Appellants’ arguments, the dispositive issues on appeal are
(1) Whether the combination of Howard and Farhan teaches or
suggests several limitations of independent claims 1, 9, and 17, including:
(i) “connecting a computing device to an on-board
diagnostics interface of the telematics-equipped vehicle”,
(ii) “accessing, by the computing device, a subscriber
identification card of the telematics unit via the on-board
diagnostics interface;” and
(iii) “reprogramming, via the on-board diagnostics
interface of the telematics-equipped vehicle, by the computing
device, the subscriber identification card of the telematics unit
for wireless services based on the received subscription
information.”
(2) Whether the Examiner has articulated sufficient “reasoning
with rational underpinnings” to combine Howard and Farhan.
See App. Br. 3—10; Reply Br. 1—5.
ANALYSIS
In support of the rejection of independent claim 1, and similarly,
claims 9 and 17, the Examiner finds Howard teaches most aspects of
Appellants’ claimed “method for re-provisioning a telematics unit of a
telematics-equipped vehicle for wireless services,” except for the use of “a
diagnostics interface” to interface between a computing device and a
telematics unit of a telematics-equipped vehicle. Final Act. 2—3 (citing
Howard H 6-7, 1^15, 22-23, 30, 32, 40-47, 52-53, and 56-58). The
Examiner then relies on Farhan for teaching the use of “an on-board
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Application 13/782,035
diagnostic interface” to support the conclusion of obviousness, i.e., “it would
have been obvious ... to combine the teaching of Howard with the internet
network and the OBD-11 interface of Farhan to enhance the vehicle
operation monitoring capabilities . . ., thus, improving accuracy and
flexibility of the data collected.” Id. at 4 (citing Howard 178).
Appellants dispute the Examiner’s factual findings regarding Howard
and Farhan, as well as the Examiner’s rationale for combining Howard with
Farhan. First, Appellants contend neither Howard nor Farhan teaches or
suggests the limitations:
(1) “connecting a computing device to an on-board
diagnostics interface of the telematics-equipped vehicle”,
(2) “accessing, by the computing device, a subscriber
identification card of the telematics unit via the on-board
diagnostics interface;” and
(3) “reprogramming, via the on-board diagnostics
interface of the telematics-equipped vehicle, by the computing
device, the subscriber identification card of the telematics unit
for wireless services based on the received subscription
information”
as recited in claim 1, and similarly recited in claims 9 and 17. App. Br. 4.
In particular, Appellants argue “Howard describes using an over-the-air
(OTA) method for re-registration based on wireless communications with a
remotely situated ‘SIM management center 10.’” Id. at 4 (citing Howard
1141—47). In other words, Appellants argue Howard teaches the same OTA
method acknowledged in the background of Appellants’ invention along
with its drawbacks, including the requirement that the telematics system
must (1) have a valid account, and (2) be in coverage and able to connect
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Application 13/782,035
with the cellular network. Spec. 1 5. As such, Appellants argue Howard
does not teach Appellants’ claimed “computing device” connected to an on­
board diagnostics interface of the telematics-equipped vehicle to access a
SIM card and to reprogram the SIM card for wireless services based on
received subscription information. App. Br. 5. Because of Howard’s failure
to teach Appellants’ claimed “computing device” to access and reprogram
the SIM card, Farhan does not cure the deficiencies of Howard to arrive at
the subject matter of Appellants’ claims 1, 9, and 17. Id.
Second, Appellants contend the Examiner’s stated rationale to
combine Howard and Farhan is without any “rational underpinnings” and is
based on “an improperly excessive degree of hindsight.” Id. at 6.
According to Appellants, “improving accuracy and flexibility of collected
data has nothing to do with either reprogramming a subscriber identification
card of a telematics unit via an on-board diagnostics interface or avoiding
the drawbacks associated with OTA re-registration.” Id.
The Examiner responds that (1) the claimed “‘communications bus’ is
not exclusively tied to non-OTA communication” (Ans. 3); (2) “Howard and
Farhan are analogous arts addressing vehicle telematics use with a mobile
device” and, as such, the combination of Howard and Farhan is proper {Id. at
4); and (3) “Farhan also discloses connecting a computing device 230 to an
on-board interface of the telematics equipped vehicle using a wired/wireless
communication link” {Id. at 5).
We are persuaded by Appellants’ arguments and disagree with the
Examiner’s position. Obviousness is a question of law based on underlying
factual findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012),
including what a reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed.
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Application 13/782,035
Cir. 1992), and the existence of a reason to combine references, In re Hyon,
679 F.3d 1363, 1365—66 (Fed. Cir. 2012). At the outset, we agree with
Appellants that the Examiner’s factual findings regarding Howard are not
supported by the actual teachings of Howard. As recognized by Appellants,
Howard teaches the same OTA method acknowledged in the background of
Appellants’ invention, that is, an OTA method used by a SIM management
centre 10, shown in Figure 1, for re-registration when a SIM card installed in
a telematics unit of a vehicle is registered with a different network from that
of its home network. Howard Tflf 41—47, 55—60.
Howard’s Figure 1 is reproduced below, with additional markings for
illustration.
Howard’s Figure 1 shows a schematic diagram of network elements,
including SIM management centre 10 used to distribute new SIM cards.
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Application 13/782,035
As shown in Howard’s Figure 1, SIM management centre 10 passes
details of particular SIM cards to 1st operating company (OpCol) 18 upon
receipt new SIM cards from SIM supplier 14 and orders from ordering
source 12. Howard Tflf 38—39. When a re-registration request is generated
from operating company (OpCol) 18, SIM management centre 10 sends an
OTA message to the SIM card to enable it to be registered with 2nd operating
company (OpCol) 20 instead of OpCol. Howard 41—43. According to
Howard, “[a]t a later time, it may be necessary for the SIM [card] to register
with a different network.” Howard 155.
Howard does not teach or suggest Appellants’ claimed “computing
device” connected to an on-board diagnostics interface of the telematics-
equipped vehicle to access a SIM card and to reprogram the SIM card for
wireless services based on received subscription information, in the manner
recited in claims 1,9, and 17. App. Br. 4.
Farhan, which is cited as teaching “an on-board diagnostic interface”
connecting a computing device to a diagnostics interface of a telematics
equipped vehicle (Final Act. 4), does not cure the deficiencies of Howard to
arrive at Appellants’ claims 1, 9, and 17. In the Answer, the Examiner
asserts that “Farhan also discloses connecting a computing device 230 to an
on-board interface of the telematics equipped vehicle using a wired/wireless
communication link.” Ans. 4—5. However, that assertion is misplaced.
Contrary to the Examiner’s finding, component 230, shown in Farhan’s
Figure 2, refers to user equipment 230 used to restrict or disable user device
functionality (such as vehicle speed, motion, engine state, etc.) and is not
connected to an on-board diagnostics interface of the telematics-equipped
vehicle to access a SIM card and to reprogram the SIM card for wireless
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Application 13/782,035
services based on received subscription information, in the manner recited in
claims 1, 9, and 17.
Separately, we also note the Examiner’s rationale to incorporate the
teachings of Farhan into Howard is without any “rational underpinning” as
required by KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); and In
re Kahn, 441 F.3d 977, 988 (Fed Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”). For example, the Examiner
reasons “it would have been obvious ... to enhance the vehicle operation
monitoring capabilities . . . thus, improving accuracy and flexibility of the
data collected.” Final Act. 4. However, as recognized by Appellants,
“improving accuracy and flexibility of collected data has nothing to do with
either reprogramming a subscriber identification card of a telematics unit via
an on-board diagnostics interface or avoiding the drawbacks associated with
OTA re-registration.” App. Br. 6; see Spec. 34—39. As such, we are not
persuaded that the Examiner’s rationale for combining Howard and Farhan
in the manner suggested by the Examiner is supported by “rational
underpinnings.”
For these reasons, we decline to sustain the Examiner’s obviousness
rejection of independent claim 1, and similarly, independent claims 9 and
17, which include commensurate limitations, and their respective dependent
claims 2—8, 10-16, and 18—20.
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CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 103(a).
DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1—20
under 35 U.S.C. § 103(a).
REVERSED
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