Ex Parte Hider et al

Patent Trial and Appeal Board

Oct 20, 2016

13547223 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/547,223 07 /12/2012
28395 7590 10/24/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Mounir Hider
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.
83220386 8278
EXAMINER
LANG, MICHAEL DEAN
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
10/24/2016 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 MOUNIR HIDER, DAVID MARVIN GERSABECK,
EDWARD ANDREW PLEET, and YIPING XIA1
Appeal2014-006249
Application 13/547,223
Technology Center 3600
Before JAMES P. CALVE, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mounir Hider et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's July 17, 2013 final rejection of claims 1-18 and 20.2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Ford Global
Technologies, LLC. Appeal Br. 2.
2 Although the Office Action Summary lists claim 19 as rejected, the body
of the Office Action does not reject claim 19 or treat it in any manner. See
Final Act. 1---6. Accordingly, we do not address claim 19 in this Decision.
Appeal2014-006249
Application 13/547,223
CLAIMED SUBJECT MATTER
The invention concerns "a method and apparatus for normalizing
navigation data for vehicle computing system playback." Spec. i-f 1. Claim
1 is illustrative of the subject matter on appeal, and recites:
1. A system comprising:
a processor configured to communicate wirelessly with a
mobile device, wherein the processor is further configured to
receive output data from a navigation application running
on the mobile device,
send data back through the mobile device to a
standardization system, including a request for standardization,
running on a remote system, if the output data is in an unusable
format,
receive a standardized form of the data, having been
standardized by the remote standardization system, and
process the standardized data to provide navigation
directions through one or more vehicle outputs controllable by
the processor.
Appeal Br. at Claims App. l (emphasis added). Independent claim 9
requires a mobile device configured to send unusable data to a remote server
for standardization and to receive data that has been standardized by the
remote server. Id. at Claims App. 2. Independent claim 18 requires a
processor configured to send to a remote server unusable data and a request
for standardization, through a mobile device, and to receive the data that has
been standardized by the server. Id. at Claims App. 3--4.
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Application 13/547,223
REJECTIONS
The claims stand rejected as follows:
I. Claims 1-5, 8-11, 17, and 183 under 35 U.S.C. § 103(a) as
unpatentable over Ohta (US 2010/0138149 Al, pub. June 3,
2010) and Juengling (US 2006/0161312 Al, pub. July 20,
2006).
II. Claims 6, 7, 12-16, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Ohta, Juengling, and Yi (US 2008/0102854
Al, pub. May 1, 2008).
ANALYSIS
Rejection I
The Examiner finds Ohta discloses nearly all elements of independent
claims 1, 9, and 18, but does not disclose sending unusable data to a remote
server for standardization or receiving data that has been standardized by the
remote server. Final Act. 2-3; Ans. 2. The Examiner finds Juengling
discloses "a similar system" that "send[ s] data that is unusable and not
locally standardizable to a remote server for standardization, [and] receive[s]
data, having been standardized by the remote server." Final Act. 3 (citing
Juengling i-fi-f 11, 12, 17, 19, Abstract); Ans. 2-3. The Examiner concludes
that it would have been obvious to modify Ohta in view of Juengling' s
3 Although the rejection heading lists claim 16, that claim is treated in the
Examiner's rejection over Ohta, Juengling, and Yi. Compare Appeal Br.
2-5 (listing claim 16 in the heading, but not treating it), with id. at 5---6
(listing claim 16 in the heading and also treating it in the body of the
rejection).
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Application 13/547,223
disclosure of remote standardization of data "in order to accommodate
newly created mobile appliances that were not given consideration when the
in-vehicle device was created." Final Act. 3. The Examiner also states that
"sending the data, including a request for standardization, to a remote system
for standardization ... is not a limitation of the claimed processor but rather
it is intended use and as such does not further limit the claim." Id. at 2.
Appellants contend that Juengling discloses data conversion
performed by the vehicle's communications management unit 7. Appeal Br.
6 (citing Juengling, Abstract). Although Juengling discloses that new
translation sets may be downloaded from a remote server, Appellants
contend that Juengling does not disclose sending data or a request for
standardization to a remote system. Id. (citing Juengling i-f 11 ). Finally,
Appellants contend that the claims specifically recite "configured to"
language and, therefore, it is improper for the Examiner to dismiss claim
limitations as mere "intended use." Id. at 6-7.
We agree with Appellants. A preponderance of evidence does not
support the Examiner's finding that Juengling discloses "send[ing] data that
is unusable and not locally standardizable to a remote server for
standardization, [and] receiv[ing] data, having been standardized by the
remote server." Final Act. 3. Rather, Juengling discloses that mobile device
1 communicates wirelessly with a vehicle's hands-free device 2 via interface
module 5. Juengling i-f 16. Juengling specifies that "interface module 5
[includes] communication management unit 7 ... for converting the various
input/output data formats into one another." Id. Instruction sets for this data
format conversion are stored in memory 14. Id. Juengling discloses that if a
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Application 13/547,223
user later purchases a new mobile device for which the appropriate data
conversion instruction sets are not stored in memory, interface module 5
links to a remote server "to request and receive the instruction sets for newly
identified appliances." Id. i-fi-f 11, 17 (disclosing that new instruction sets can
be downloaded from an external server and stored in memory).
As an initial matter, we reject the Examiner's position that the
limitations of claims 1, 9, and 18 reciting structure "configured to" send data
and, in claims 1 and 18, to also send a "request for standardization," are not
"limitation[ s] of the claimed processor but rather [are statements of]
intended use and as such does not further limit the claim." Final Act. 2.
When claimed functional language is associated with programming or some
other structure required to perform the function, that programming or
structure cannot be ignored by the Examiner when applying the prior art.
See, e.g., Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380
(Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Tex.
Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)).
Claims 1 and 18
Claims 1 and 18 require a processor configured to send two items to a
remote server-"data" and "a request for standardization." Juengling
discloses, however, sending only one item to a remote server-a request for
an instruction set. Id. i-fi-f 11, 17. Even if a request for an instruction set is
considered to be "data," as broadly recited in claim 18, both claims 1 and 18
require the sending of two items to the remote server. The Examiner makes
no findings that Juengling' s request for an instruction set is both the claimed
"data" and the claimed "request for standardization" or that the processor is
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Application 13/547,223
so configured to send such items. Further, Juengling does not disclose
"receiv[ing] a standardized form of the data"4 from the remote server, as
required by claims 1 and 18. Accordingly, a preponderance of the evidence
does not support the Examiner's finding that Juengling teaches these
elements of claims 1 and 18, and we reverse the rejection of those claims.
Claim 9
Claim 9 requires a mobile device configured to send to a remote
server "data that is unusable and not locally standardizable." Juengling,
however, discloses sending to a remote server only a request for an
instruction set. Id. i-fi-f 11, 17. The Examiner makes no findings to show that
Juengling's request includes data that is "unusable and not locally
standardizable" or that the mobile device is configured to send such data to a
remote server. Further, Juengling does not disclose "receiv[ing] data, having
been standardized by the remote server," as required by claim 9.
Accordingly, a preponderance of the evidence does not support the
Examiner's finding that Juengling teaches these elements of claim 9, and we
reverse the rejection of that claim.
Dependent Claims 2-5, 8, 10, 11, and 17
Claims 2-5 and 8 depend from independent claim 1, and claims 10,
11, and 17 depend from independent claim 9. Appeal Br. (Claims App.
1--4). Accordingly, the rejection of these claims is reversed for the same
reasons discussed with respect to the rejection of independent claims 1 and
9.
4 Claim 18 uses slightly different language: "receive the data, having been
standardized by the server as per the request." Appeal Br. at Claims App. 3.
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Application 13/547,223
Rejection II
Claims 6 and 7 depend from independent claim 1, claims 12-16
depend from independent claim 9, and claim 20 depends from independent
claim 18. Appeal Br. (Claims App. 1--4). The Examiner's reliance on Yi to
teach features of these dependent claims does not overcome deficiencies of
Ohta and Juengling discussed above as to independent claims 1, 9, and 18.
Accordingly, the rejection of these claims is reversed for the same reasons
discussed with respect to the rejection of independent claims 1, 9, and 18.
DECISION
The Examiner's rejection of claims 1-5, 8-11, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over Ohta and Juengling is reversed; and
the Examiner's rejection of claims 6, 7, 12-16, and 20 under
35 U.S.C. § 103(a) as unpatentable over Ohta, Juengling, and Yi is reversed.
REVERSED
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