Ex Parte Gussen et al

Patent Trial and Appeal Board

Oct 26, 2018

15074051 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/074,051 03/18/2016
28395 7590 10/30/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Uwe Gussen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83623383 2535
EXAMINER
LE, THIEN MINH
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
10/30/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE GUS SEN, CHRISTOPH ARNDT,
FREDERIC STEP AN, and FRANK PETRI
Appeal2018-004710
Application 15/074,051
Technology Center 2800
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
May 16, 2017 decision finally rejecting claims 1-20 ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the Applicant, Ford Global Technologies, LLC, who is also
identified as the real party in interest (Appeal Br. 1 ).
Appeal2018-004710
Application 15/074,051
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to "[a]n apparatus and a method for
transmitting traffic-related data in road traffic include transmitting the
traffic-related data in the form of dynamically generated QR codes from a
transmission or display device to a mobile unit hosted by at least one
vehicle" (Abstract). The mobile unit hosted by the vehicle is designed
likewise to transmit dynamically generated QR codes (id.). Further
details of the claimed invention are set forth in independent claims 1 and
16, which are reproduced below from the Claims Appendix to the Appeal
Brief:
1. A system for communicating traffic-related data,
compnsmg:
a mobile device disposed within or on a vehicle and
configured to receive a dynamically generated QR code
representing traffic-related data, and to transmit dynamically
generated QR codes representing traffic-related data.
16. A vehicle system comprising:
a camera;
a display; and
a processor coupled to the camera and the display and
configured to receive dynamically generated QR codes that do
not include an encoded URL from the camera representing
traffic data and to dynamically generate QR codes that do not
include an encoded URL representing traffic data to the display,
wherein the dynamically generated QR codes comprise patterns
that change in response to the traffic data.
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Application 15/074,051
REJECTIONS
I. Claims 1-3, 5, 9-11, and 13-15 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Ciavatta. 2
II. Claims 4, 6, 7, and 16-20 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Ciavatta in view of Tate, 3 Warrier, 4 and Donabedian. 5
III. Claims 8 and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ciavatta in view of Webb. 6
DISCUSSION
Rejection I. "A prior art reference anticipates a patent claim under
35 U.S.C. § I02(b) if it discloses every claim limitation." In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)).
In this instance, Appellant contends that its claims are directed to systems
that provide "dynamically generated" QR codes, which is different from the
"dynamic QR code" of Ciavatta cited in the rejection (Appeal Br. 3). Thus,
the key issue on appeal is whether the phrase "dynamically generated QR
code" reads on the dynamic QR code disclosed in Ciavatta.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. Therefore, we
look to the specification to see if it provides a definition for claim terms, but
2 Ciavatta, US 2016/0196484 Al, published July 7, 2016.
3 Tate, Jr. et al., US 2014/0074352 Al, published March 13, 2014.
4 Warrier, US 2014/0225711 Al, published August 14, 2014.
5 Donabedian et al., US 2013/0124186 Al, published May 16, 2013.
6 Webb et al., US 2015/0120474 Al, published April 30, 2015.
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Appeal2018-004710
Application 15/074,051
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
In this instance, the Specification provides the following definition of
the dynamically generated QR code:
Within the meaning of the present application, "dynamic
generation" of a QR code is understood to mean generating a
QR pattern on the basis of a latest announcement or piece of
information, where such dynamic QR codes are fundamentally
different from conventional QR codes which can be read by an
app or a smartphone.
(Spec. ,r 9). Accordingly, the Specification defines the dynamically
generated QR code as distinct from conventional QR codes. In particular,
the dynamically generated QR codes described in the Specification have
patterns which are based on (i.e., contain information based on) recently
acquired information. The dynamically generated QR codes themselves
contain the information to be communicated, as opposed to directing a user
to a website for information (Spec. ,r 12). This is said to allow for
communication of traffic information in situations where the mobile
communications network is overwhelmed or otherwise unavailable (id.).
In addition, independent claim 16 explicitly recites that the
dynamically generated QR codes "do not include an encoded URL."
Ciavatta explicitly states that its QR codes "remain[] unchanged or
static," and that these QR codes point to remote dynamic informative
contents ( e.g., a web page):
Purpose of the present invention is to obtain a method
and an apparatus to remotely display dynamic informative
contents, in particular to present dynamic contents in reply to
successive scannings of a QR code, which remains unchanged
or static, and to cause said dynamic contents to be associated
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Appeal2018-004710
Application 15/074,051
securely and univocally to a registered and authenticated user,
that is, accredited to use at least the service of modifying
contents.
(Ciavatta, ,r 9, emphasis added). Ciavatta further explicitly discloses that its
system generates and assigns to a QR code a URL address on the Internet
(Ciavatta, ,r 40).
The Examiner contends that the phrase "dynamically generated QR
code" does not recite both the structure and functions performed to generate
a dynamically generated QR code and, therefore, the claims:
do[] not go beyond stating the transmitting function in general
terms, without limiting the functions to technical means for
performing the function that is arguably considered as an
advance over the teaching of Ciavatta.
(Ans. 4). However, as explained above, the Specification is explicit in
defining the phrase "dynamically generated QR code," such that additional
definition in the claim is not necessary.
The Examiner also cites to various paragraphs of Ciavatta as
supporting the finding that Ciavatta discloses dynamic QR codes (Ans. 5-7,
citing Ciavatta, ,r,r 9, 13, 16, 40, 60, 61, 113, 119). However, as argued by
Appellant (Appeal Br. 5---6, Reply Br. 2), Ciavatta discloses QR codes which
point to web sites which can have dynamic informative content (i.e., the
content of the web pages can change), not the generation of differing QR
codes depending on changing conditions (i.e., dynamically generated QR
codes).
Finally, the Examiner also cites to various outside sources as
suggesting a definition of dynamically generated QR codes which would be
broad enough to encompass the disclosure of Ciavatta (Ans. 7-9). However,
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Appeal2018-004710
Application 15/074,051
in this instance the Specification provides an explicit definition of the phrase
at issue, making recourse to external explanations improper in the sense that
claims are to be construed broadly but consistent with the Specification.
ICON, 496 F.3d at 1379.
Thus, we determine that the preponderance of the evidence of record
supports Appellant's contention that the Examiner reversibly erred in finding
that Ciavatta discloses a system with the claimed dynamically generated QR
codes ( claim 1 ), or the claimed "dynamically generate[ d] QR codes that do
not include an encoded URL" ( claim 16). Accordingly, we reverse the
anticipation rejection of claims 1-3, 5, 9-11, and 13-15 (Rejection I).
With regard to the obviousness rejections of claims 4, 6, 7, and 16-20
(Rejection II) and claims 8 and 12 (Rejection III), the secondary references
cited in these rejections are not relied on for teaching the dynamically
generated QR codes. The Examiner has the initial burden of establishing a
prima facie case of obviousness based on an inherent or explicit disclosure
of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability."). To establish a prima facie case of obviousness,
the Examiner must show that each and every limitation of the claim is
described or suggested by the prior art or would have been obvious based on
the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d
1071, 107 4 (Fed. Cir. 198 8). In this instance, for the reasons outlined above
in connection with the anticipation rejection, the preponderance of the
evidence of record does not support the Examiner's finding that Ciavatta
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discloses the claimed dynamically generated QR codes. Accordingly, we
also reverse the obviousness rejections.
CONCLUSION
We REVERSE the rejection of claims 1-3, 5, 9-11, and 13-15 under
35 U.S.C. § 102(b) as anticipated by Ciavatta.
We REVERSE the rejection of claims 4, 6, 7, and 16-20 under
35 U.S.C. § 103(a) as unpatentable over Ciavatta in view of Tate, Warrier,
and Donabedian.
We REVERSE the rejection of claims 8 and 12 under 35 U.S.C. § 103(a)
as unpatentable over Ciavatta in view of Webb.
REVERSED
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