Ex Parte Lowenthal et al

Patent Trial and Appeal Board

Jun 20, 2018

12372726 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/372,726 02/17/2009
130093 7590 06/22/2018
Nicholson De Vos Webster & Elliott LLP
99 Almaden Boulevard
Suite 710
San Jose, CA 95113
FIRST NAMED INVENTOR
Richard Lowenthal
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.
8605.P006 1165
EXAMINER
FAN,HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
ndwe_docketing@cardinal-ip.com
patent@ndwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD LOWENTHAL, PRA VEEN MANDAL,
MIL TON TORMEY, DAVID BAXTER, HARJINDER BRADE,
JAMES SOLOMON, and SRINIV AS SW ARNAPURI
Appeal2017-010997
Application 12/372,726
Technology Center 2400
Before JUSTIN BUSCH, SCOTT B. HOW ARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1--42. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the real party in interest as Chargepoint, Inc.
App. Br. 2.
Appeal2017-010997
Application 12/372,726
STATEMENT OF THE CASE
The Invention
According to the Specification, "the invention relate[ s] to the field of
charging electric vehicles, and more specifically to transmitting notification
messages for an electric vehicle charging network." Spec. ,r 1. 2 The
Specification explains that "[ a ]n electric vehicle charging station network
server which manages a plurality of charging stations receives subscriber
notification message preferences for a subscriber ( e.g., electric vehicle
operator) which indicate one or more events of interest that the subscriber
wishes to receive notification messages for," and "[t]he server detects an
event of interest for the subscriber and transmits a notification message for
that event to at least one of the set of contact points associated with the
subscriber." Abstract.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method performed on a charging station network
server which manages a plurality of charging stations, the
method comprising:
receiving subscriber notification message preferences for
a subscriber of electric vehicle charging service which indicate
a set of one or more events of interest which the subscriber
wishes to receive notification messages for, wherein at least one
of the set of events of interest is charging session related;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed February 17, 2009; "Final Act." for the Final Office
Action, mailed July 7, 2016; "App. Br." for the Appeal Brief, filed March 7,
2017; "Ans." for the Examiner's Answer, mailed June 26, 2017; and
"Reply Br." for the Reply Brief, filed August 25, 2017.
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Appeal2017-010997
Application 12/372,726
receiving a set of one or more contact points associated
with the subscriber;
authorizing the subscriber to use one of the plurality of
charging stations;
receiving data associated with the subscriber from that
one of the plurality of charging stations, the data indicating a
charging session has been established for an electric vehicle
associated with the subscriber; and
responsive to detecting the at least one of the set of the
events of interest for the subscriber that is charging session
related and which is related to the established charging session,
transmitting a notification message for that event of interest to
at least one of the set of contact points associated with the
subscriber.
App. Br. 16 (Claims App.).
The References Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
references:
Mayer
Berdichevsky et al.
("Berdichevsky")
Fincham et al.
("Fincham")
Ambrosio et al.
("Ambrosio")
US 2008/0177994 Al
US 2008/0312782 Al
US 2010/0017249 Al
US 2010/0049610 Al
The Rejections on Appeal
July 24, 2008
Dec. 18, 2008
Jan. 21, 2010
(filed July 13, 2009)
Feb.25,2010
(filed Aug. 19, 2008)
Claims 1-5, 7, 8, 15-19, 21, 22, 29-33, 35, and 36 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over Fincham and Mayer. Final
Act. 4--8.
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Appeal2017-010997
Application 12/372,726
Claims 6, 9-13, 20, 23-27, 34, and 37--41 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Fincham, Mayer, and Ambrosio.
Final Act. 8-11.
Claims 14, 28, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fincham, Mayer, and Berdichevsky. Final Act. 11-12.
ANALYSIS
We have reviewed the rejections of claims 1--42 in light of
Appellants' arguments that the Examiner erred. Based on the record before
us and for the reasons explained below, we concur with Appellants'
contention that the Examiner erred in determining that Fincham's Figures 6-
7 and paragraph 7 5 qualify as prior art.
The§ 103(a) Rejection of Claims
1-5, 7, 8, 15-19, 21, 22, 29-33, 35, and 36
The Examiner finds that Fincham's Figures 6-7 and paragraph 75
disclose the "receiving subscriber notification message preferences"
limitation in independent claims 1, 15, and 29. Final Act. 4, 6; see Ans. 3-5.
For instance, Figure 6 depicts a user located inside a vehicle holding a
wireless device that displays notification message preferences. Fincham
,r,r 65---66, Fig. 6. Figure 7 illustrates a charging system graphical user
interface with an alerts field. Id. ,r 69, Fig. 7. Paragraph 75 explains that the
alerts field allows a user to specify various conditions and/or events that
trigger alerts, such as alerts related to charge-level thresholds, charge-rate
thresholds, temperature thresholds, and vehicle diagnostics. Id. ,r 75.
Because the filing date for Application 12/372,726 (February 2009)
precedes Fincham's filing date (July 2009), the Examiner identifies various
portions of Fincham's provisional application (filed July 2008) as support
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Appeal2017-010997
Application 12/372,726
for Fincham's Figures 6-7 and paragraph 75. Final Act. 2-3; Ans. 3-5; see
Manual of Patent Examining Procedure (MPEP) § 2136.03(III) (9th ed.
Rev. 08.2017 Jan. 2019) (explaining that the "critical reference date of a
U.S. patent or U.S. application publication[] ... is the filing date of the
provisional application ... if the provisional application(s) properly supports
the subject matter relied upon to make the rejection in compliance with"
35 U.S.C. § 112 ,r 1).3 The Examiner finds that the "predefined parameter
selections" described in Fincham's provisional concern "subscriber
notification message preferences which indicate a set of one or more events
of interest which the subscriber wishes to receive notification messages
for." Ans. 4--5.
Appellants argue that the Examiner erred in rejecting claims 1, 15,
and 29 because the cited portions of Fincham' s provisional do not support
Fincham's Figures 6-7 and paragraph 75, and therefore Figures 6-7 and
paragraph 75 do not qualify as prior art. See App. Br. 6-10, 13; Reply
Br. 2---6. More specifically, Appellants assert that Fincham's provisional
"does not include any Figures, let alone" Figures 6-7. App. Br. 7.
Appellants also assert that the "predefined parameter selections" and
"predetermined parameters" described in Fincham's provisional "are not
notification message preferences" but instead "user charging preferences."
Reply Br. 5. In addition, Appellants contend that "Fincham's provisional
3 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 112, e.g., to rename§ 112's
subsections. Because Application 12/372,726 was filed before the AIA's
effective date for applications, this decision refers to the pre-AIA version of
§ 112.
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Appeal2017-010997
Application 12/372,726
does not describe that the charging preferences include any notification
message preference." Id.
Based on the record before us, we agree with Appellants that the
Examiner has not shown how the cited portions of Fincham's provisional
support Fincham's Figures 6-7 and paragraph 75 in compliance with
35 U.S.C. § 112 ,r 1. Fincham's provisional discloses "user selected
parameters defining user charging preferences" and "predefined parameter
selections" for a "predetermined charging regime." Application 61/ 134,646
at 2-3. Fincham's provisional explains that a "driver predefines a charging
profile" for a vehicle, and a charging system performs "a charging regimen
to match the user defined charging parameters." Id. at 4. As Appellants
contend, the cited portions of Fincham's provisional do not indicate that the
charging preferences include notification message preferences. See id.
at 1--4.
Because the Examiner has not shown how the cited portions of
Fincham's provisional properly support Fincham's Figures 6-7 and
paragraph 75, the Examiner has not established that Figures 6-7 and
paragraph 75 qualify as prior art. Hence, we do not sustain the§ 103(a)
rejection of claims 1, 15, and 29.
Claims 2-5, 7, and 8 depend directly or indirectly from claim 1;
claims 16-19, 21, and 22 depend directly or indirect! y from claim 15; and
claims 30-33, 35, and 36 depend directly or indirectly from claim 29. For
the reasons discussed regarding the independent claims, we do not sustain
the§ 103(a) rejection of these dependent claims.
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Application 12/372,726
The§ 103(a) Rejections of Claims
6, 9--14, 20, 23-28, 34, and 37-42
Claims 6 and 9-14 depend directly or indirectly from claim 1 ;
claims 20 and 23-28 depend directly or indirectly from claim 15; and
claims 34 and 37--42 depend directly or indirectly from claim 29. On this
record, the Examiner has not shown how the additionally cited secondary
references-Ambrosio and Berdichevsky----overcome the deficiency in
Fincham discussed above for the independent claims. Hence, we do not
sustain the§ 103(a) rejections of these dependent claims.
Because this determination resolves the appeal with respect to
claims 1--42, we need not address Appellants' other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on "a single dispositive issue").
DECISION
We reverse the Examiner's decision to reject claims 1--42.
REVERSED
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