Ex Parte MacNeille et al

Patent Trial and Appeal Board

Feb 26, 2019

13951686 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/951,686 07/26/2013
28395 7590 02/28/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Perry Robinson MacNeille
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.
83374614 5519
EXAMINER
WANG,JACKK
ART UNIT PAPER NUMBER
2687
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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 PERRY ROBINSON MAcNEILLE, YIMIN LIU,
OLEG YURIEVITCH GUSIKHIN, PAUL DUNCAN McCARTHY, and
JOHN MATTHEW GINDER
Appeal2018-006034
Application 13/951, 686 1
Technology Center 2600
Before HUNG H. BUI, SHARON PENICK, and AARON MOORE,
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, 6-10, and 15, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE. 2 Pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection for claims 1, 6-10, and 15.
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
December 20, 2017; Reply Brief ("Reply Br.") filed May 21, 2018;
Examiner's Answer ("Ans.") mailed March 21, 2018; Final Office Action
Appeal2018-006034
Application 13/951,686
STATEMENT OF THE CASE
Appellants' invention relates to "a method and apparatus for message
delivery via HD radio." Spec. ,r 1; Abstract.
Claims 1, 6-10, and 15 are pending on appeal. Claims 1 and 10 are
independent. Claim 1 is illustrative, as reproduced below with disputed
limitations in italics.
1. A system comprising:
a processor configured to:
[ 1] receive a message, including delivery conditions
specifying delivery to a single, vehicle-identifiable occupant,
included with a digital radio signal;
determine if the message is intended for receipt at a
receiving vehicle based on a header; and
[2] deliver the message to a vehicle occupant, once
the single occupant, identified by a vehicle system, is singularly
present in the receiving vehicle.
App. Br. 6 (Claims App.) (bracketing added).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1 and 8-10 stand rejected under 35 U.S.C. § I02(a)(2)
as being anticipated by Marko et al. (US 6,834,156 B 1; issued Dec. 21,
2004; "Marco"). Final Act. 2-3.
(2) Claims 6, 7, and 15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Marko and Christensen et al. (US 2012/0158905
Al; published June 21, 2012). Final Act. 3-5.
("Final Act.") mailed September 20, 2017; and original Specification
("Spec.") filed July 26, 2013.
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Application 13/951,686
ANALYSIS
In support of the anticipation rejection of claim 1 and, similarly, claim
10, the Examiner finds Marko discloses Appellants' system, as shown in
Marko's Figure 1, including
a processor configured to:
receiv[ e] a message, including deliver[y] conditions specifying
delivery to a single, vehicle-identifiable occupant (wherein the
occupant is identified associate [ d] with vehicle) included with a
digital radio signal;
determine if the message is intended for receipt at a receiving
vehicle based on a header ( a header is provided with a unique
identification code assigned to the receiver to enable the receiver
to analyze and store packets in the received data stream that are
intended for reception); and
deliver the message to a vehicle occupant, once the single
occupant (subscriber) identified by a vehicle system
( subscription for mobile use) is singularly present in the
receiving vehicle."
Final Act. 2-3 (citing Marko 5:40-48, Fig. 1); see also Marko 6:41-53.
Marko' s Figure 1 is reproduced below with additional markings for
illustration.
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Application 13/951,686
FIG.1
Marko's Figure 1 shows digital broadcast system (satellite digital audio
radio service "SDARS" system) 10 for broadcasting a radio signal including
messages addressed to specific receiver unit 14 configured for stationary use
(e.g., on a subscriber's premises) and/or mobile use (e.g., mobile use in a
vehicle.
According to the Examiner, the messages included in Marko' s radio
signal "are addressed to a specific receiver (e.g., a header is provided with a
unique identification code assigned to the receiver to enable the receiver to
analyze and store packets in the received data stream that are intended for
reception by the receiver and to discard packets that are not addressed to the
receiver)." Ans. 2-3 (citing Marko 6:41--48).
Appellants dispute the Examiner's factual findings regarding Marko.
In particular, Appellants argue Marko does not disclose: (1) "receiv[ing] a
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Application 13/951,686
message, including delivery conditions specifying delivery to a single,
vehicle-identifiable occupant, included with a digital radio signal" and (2)
"deliver[ing] the message to a vehicle occupant, once the single occupant,
identified by a vehicle system, is singularly present in the receiving vehicle"
recited in claim 1 and similarly recited in claim 10. App. Br. 4; Reply Br. 2.
Specifically, Appellants acknowledge Marko discloses "a receiver
identifier" that corresponds to "a receiver in a vehicle." App. Br. 4.
However, Appellants argue Marko does not disclose any "single, vehicle-
identifiable occupant" or "single occupant, identified by a vehicle system, []
singularly present in the receiving vehicle" as recited in claim 1 and
similarly recited in claim 10. Id. Because Marko does not disclose any
identification of a single occupant in a vehicle system, Appellants argue
Marko does not disclose "delivery conditions specifying delivery to a single,
vehicle-identifiable occupant," or any delivery of the message "to a vehicle
occupant, once the single occupant identified by a vehicle system, is
singularly present in the receiving vehicle" as recited in claim 1 and
similarly recited in claim 10. Id.
In response, the Examiner takes the position that: ( 1) Marko' s
"receiver unit 14 can be configured for stationary use (e.g., on a subscriber's
premises), or mobile use (e.g., portable use or mobile use in a vehicle), or
both"; and (2) when Marko's receiver unit 14 is configured for mobile use in
a vehicle,
(i) "the vehicle-identifiable occupant is considered as subscriber
identified by the unique code through the message header in a
digital radio signal selectively assigned to each subscriber," and
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Application 13/951,686
(ii) "the vehicle occupant is considered as a driver of the vehicle as
single occupant present inside the vehicle that is identified by
vehicle system."
Ans. 2-3 (citing Marko 3:40-44, 54--58, 6:41--48) (emphasis added).
We agree with the Examiner only in part-that is, Marko suggests to
one of ordinary skill in the art that his "receiver unit 14" [ shown in Figure 1]
can be configured for mobile use in a vehicle and, when Marko' s receiver
unit 14 is configured for mobile use in a vehicle, (i) the subscriber can be
considered as Appellants' claimed "vehicle-identifiable occupant" and (ii)
the subscriber/driver of the vehicle can be considered as Appellants' claimed
"single occupant ... present inside the receiving vehicle."
However, Marko does not disclose (1) "delivery conditions [included
in the message] specifying delivery to a single, vehicle-identifiable
occupant" and (2) the identification of "once the single occupant, identified
by a vehicle system, is singularly present in the receiving vehicle" for
message deli very as recited in claim 1 and similarly recited in claim 10. A
person having ordinary skill in the art is expected to have the skill level and
knowledge necessary to various delivery conditions as part of a message
included in a radio signal to deliver the message to a target subscriber in a
vehicle. In re Etter, 756 F.2d 852, 859---60 (Fed. Cir. 1985) (en bane).
However, that, in itself, is not sufficient to support the Examiner's finding of
anticipation under 35 U.S.C. § 102(b ).
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described in a single prior art reference. Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628,631 (Fed. Cir. 1987). "The
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identical invention must be shown in as complete detail as is contained in the
... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989). "Because the hallmark of anticipation is prior invention, the prior art
reference-in order to anticipate under 35 U.S.C. § 102-must not only
disclose all elements of the claim within the four comers of the document,
but must also disclose those elements 'arranged as in the claim."' Net
Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
Because Marko fails to disclose "delivery conditions specifying
delivery to a single, vehicle-identifiable occupant," or "once the single
occupant, identified by a vehicle system, is singularly present in the
receiving vehicle" for message delivery, we do not sustain the Examiner's
anticipation rejection of independent claims 1 and 10, and dependent claims
8 and 9, which Appellants do not argue separately. App. Br. 5. For the
same reasons, we also do not sustain the Examiner's obviousness rejection
of claims 6, 7, and 15.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 4I.50(b ), however, we
reject claims 1, 6-10, and 15 under 35 U.S.C. § 112(a) for lack of
enablement for the following reasons.
"[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). Naturally, the specification must teach those of skill in the art
"how to make and how to use the invention as broadly as it is claimed." In
re Vaeck, 947 F.2d 488,496 (Fed. Cir. 1991).
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Application 13/951,686
Claim 1 recites, inter alia: (I) "a message, including delivery
conditions specifying delivery to a single, vehicle-identifiable occupant" and
(2) "deliver the message to a vehicle occupant, once the single occupant,
identified by a vehicle system, is singularly present in the receiving vehicle."
Appellants' Specification describes in relevant part:
System outputs can be provided as a human machine interface
(HMI) 409, which can also provide inputs 417 usable to identify
a user or to identify whether or not a message should be
delivered.
Spec. ,r 45 ( emphasis added).
If there are any conditions for delivery, and if the conditions are
met 513, the message may be delivered to the recipient 517. If
the conditions are not met, the message may be queued 515 so
that it can be delivered at a later point in time. For example,
some messages may only be delivered in conditions where a
single user (possibly also specifically identifier) is present in the
vehicle. Other messages may have distraction-related factors
affecting delivery. Or messages may only be delivered when a
vehicle is not in motion. These are just a few examples of
conditional delivery. Also, some messages may be delivered via
a vehicle HMI, whereas others may be delivered via a cell phone
or other connected medium.
Spec. ,r 50 ( emphasis added).
In other words, Appellants' Specification teaches or suggests that ( 1)
"a human machine interface (HMI) 409" can be used "to identify a user or to
identify whether or not a message should be delivered" and (2) "some
messages may only be delivered in [ response to] conditions where a single
user is present in the vehicle." Spec. ,r,r 45, 50. However, Appellants'
Specification does not explain how the determination is made that a "single
occupant, identified by a vehicle system, is singularly present in the
receiving vehicle," as recited in claims 1 and 10.
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Application 13/951,686
Because Appellants' Specification does not explain how a
determination is made that a "single occupant, identified by a vehicle
system, is singularly present in the receiving vehicle," we issue a new
ground of rejection of claims 1, 6-10, and 15 under 35 U.S.C. § 112(a) as
lacking in enablement.
DECISION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1, 6-10, and 15 under 35 U.S.C.
§102(a)(2) and§ 103(a) based on Marko. As such, we REVERSE the
Examiner's final rejection of claims 1, 6-10, and 15 under 35 U.S.C.
§ 102(a)(2) and§ 103(a).
However, we enter a NEW GROUND OF REJECTION of claims 1,
6-10, and 15 under 35 U.S.C. § 112(a) for lack of enablement.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b) (2010). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
Rule 37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new [ e ]vidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer ....
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Application 13/951,686
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
37 C.F.R. § 4I.50(b)
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