Ex Parte Tonnon et al

Patent Trials and Appeals Board

Feb 25, 2019

12716791 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/716,791 03/03/2010
20350 7590 02/27/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Garry Tonnon
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.
90945-774052 (013800US) 1402
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRY TONNON and DAVID A. OWEN
Appeal2017-011021
Application 12/716, 791 1
Technology Center 3600
Before JAMES R. HUGHES, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4, 5, 7-9, 13, 14, 32, 33, 45--49, and 51-55. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
INVENTION
The invention is directed to collecting and allocating road use fees.
Abstract. Claim 1 ( emphases added) is illustrative of the invention and is
reproduced below:
1 According to Appellants, W estem Union Company of Englewood,
Colorado is the real party in interest. App. Br. 2.
2 Claims 3, 6, 10-12, 15-31, 34--44, and 50 have been canceled. App. Br.
20, 21, 25.
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Application 12/716,791
1. A method for collecting and allocating road use
fees, comprising:
receiving, by a vehicle-based system using an input device
of the vehicle, driver input identifying a first driver as the driver
of the vehicle in a first jurisdiction;
determining, by the vehicle-based system, using a global
navigation satellite system of the vehicle, when the vehicle has
crossed a jurisdictional border exiting the first jurisdiction;
in response to the determination that the vehicle has exited
the first jurisdiction:
(a) determining, by the vehicle-based system, a first
distance that the vehicle has travelled within the first
jurisdiction;
(b) identifying a first jurisdiction computer system
associated with the first jurisdiction; and
(c) transmitting, by the vehicle-based system, first
data including the first distance that the vehicle has
travelled within the first jurisdiction and the identity of the
first driver of the vehicle in the first jurisdiction, to the first
jurisdiction computer system associated with the first
jurisdiction;
receiving, at the first jurisdiction computer system
associated with the first jurisdiction, the first data transmitted
from the vehicle indicating the first distance the vehicle has
travelled within the first jurisdiction and the identity of the first
driver of the vehicle in the first jurisdiction;
calculating, by the first jurisdiction computer system, a
first road use fee due to the first jurisdiction based on the identity
of the first driver of the vehicle and a first road use fee schedule
associated with the first jurisdiction;
receiving, by the vehicle-based system using the input
device of the vehicle, driver input identifying a second driver as
the driver of the vehicle in a second jurisdiction;
determining, by the vehicle-based system, using the global
navigation satellite system of the vehicle, when the vehicle has
crossed a jurisdictional border exiting the second jurisdiction;
in response to the determination that the vehicle has exited
the second jurisdiction
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(a) determining, by the vehicle-based system, a
second distance that the vehicle has travelled within the
second jurisdiction;
(b) identifying a second jurisdiction computer
system associated with the second jurisdiction, wherein
the second jurisdiction computer system is different from
the first jurisdiction computer system; and
(c) transmitting, by the vehicle-based system,
second data including the second distance that the vehicle
has travelled within the second jurisdiction and the
identity of the second driver of the vehicle in the second
jurisdiction, to the second jurisdiction computer system
associated with the second jurisdiction;
receiving, at the second jurisdiction computer system
associated with the second jurisdiction, the second data
transmitted from the vehicle indicating the second distance the
vehicle has travelled within the second jurisdiction and the
identity of the second driver of the vehicle in the second
jurisdiction;
calculating, by the second jurisdiction computer system, a
second road use fee due to the second jurisdiction based on the
identity of the second driver of the vehicle and a second road use
fee schedule associated with the second jurisdiction;
receiving, at a payment computer system, an indication of
the first road use fee from the first jurisdiction computer system
and an indication of the second road use fee from the second
jurisdiction computer system;
deducting, by the payment computer system, from a stored
value account associated with at least one of the vehicle, the first
driver, or the second driver, at least the first road use fee and the
second road use fee; and
transferring, by the payment computer system, the first
road use fee to the first jurisdiction and the second road use fee
to the second jurisdiction.
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Application 12/716,791
REJECTIONS AT ISSUE
Claim 55 stands rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 2.
Claims 1, 2, 5, 7-9, 13, 14, 32, 33, 45--49, and 51-53 3 stand rejected
under 35 U.S.C. § 103 as being unpatentable over the combination of Slavin
(US 5,819,234; issued Oct. 6, 1998), Westerlage (US 5,970,481; issued Oct.
19, 1999), Donath ("Technology Enabling Near-Term Nationwide
Implementation of Distance Based Road User Fees"; June 2009), and
Nicolai (US 2007 /0265744 Al; published Nov. 15, 2007). Final Act. 3-16.
Claims 4, 54, and 55 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Slavin, Westerlage, Donath, Nicolai,
and Wallace (US 2002/0169641 Al; published Nov. 14, 2002). Final Act.
16-18.
ANALYSIS
I. Claim 55 under 35 U.S. C. § l l 2(b)
The Examiner concludes claim 55 is indefinite. Final Act. 2.
Appellants do not proffer arguments pertaining to this rejection. App. Br.
10-16. We, therefore, summarily sustain the Examiner's rejection. See
37 C.F.R. § 4I.39(a)(l).
3 The Examiner includes claims 3, 10, 38, 43, 44, 50 in either the heading of
the rejection or the body of the rejection. Final Act. 3-16. We note that
these claims are cancelled. App. Br. 18-31. We, therefore, interpret the
Examiner's inclusion of these claims as inadvertent.
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Application 12/716,791
II. Claims 1, 2, 4, 5, 8, 9, 13, 14, 32, 33, 48, and 54 under
35 u.s.c. § 103
The Examiner finds Donath teaches using an in-vehicle GPS to
determine different prices charged based on distance travelled in designated
areas, which the Examiner maps to the limitation "in response to the
determination that the vehicle has exited the [] jurisdiction: determining, by
the vehicle-based system, a [] distance that the vehicle has travelled within
the [] jurisdiction" recited in claim 1. Final Act. 7-8 (citing Donath, 17-19,
27-29). The Examiner finds Slavin teaches toll plazas calculating road
usage fees each time the user passes through, which the Examiner maps to
the limitation "identifying a [] jurisdiction computer system associated with
the first jurisdiction." Final Act. 5 ( citing Slavin Fig. 1, 3: 19-28). The
Examiner finds Nicolai teaches a vehicle transmitting user identification to a
data center, which the Examiner maps to the limitation "transmitting, by the
vehicle-based system, [] data including the ... the identity of the [] driver of
the vehicle in the [] jurisdiction, to the [] jurisdiction computer system
associated with the [] jurisdiction" recited in claim 1. Final Act. 11-12
(citing ,r,r 37--44). The Examiner finds Westerlage teaches processor 22
transmitting distance to dispatch 30, which the Examiner maps to the
limitation "transmitting, by the vehicle-based system, [] data including the []
distance that the vehicle has travelled within the [] jurisdiction ... to the []
jurisdiction computer system associated with the [] jurisdiction." Final Act.
5-7 (citing Westerlage, Abstract, Fig. 6, 14:28--41).
Appellants argue the cited references fail to teach the emphasized
limitations supra in reproduced claim 1 because Slavin merely teaches
debiting of vehicle tolls, W esterlage merely teaches calculating
multijurisdictional road use fees on either a mobile unit coupled with the
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Application 12/716,791
vehicle, or at a centralized host or dispatch, and Donath merely teaches
calculating multi-jurisdictional road use fees on a device at the vehicle, so
that only total fee information has to be transmitted to protect privacy
concerns. App. Br. 10-11; Reply Br. 2-3. Appellants also argue Slavin
fails to teach transmitting an identity of the driver. App. Br. 11-12. And,
Appellants argue the cited references fails to teach both "a first jurisdiction
computer system," and a separate "second jurisdiction computer system" as
recited in claim 1. Id. at 12; Reply Br. 3. We disagree with Appellants.
As an initial matter, we note that claim 1, a method claim, recites
"determining, by the vehicle-based system, using a global navigation
satellite system of the vehicle, when the vehicle has crossed a jurisdictional
border exiting the first jurisdiction" ( emphasis added) and "determining, by
the vehicle-based system, using a global navigation satellite system of the
vehicle, when the vehicle has crossed a jurisdictional border exiting the
second jurisdiction" ( emphasis added). We note that these limitations are
conditional, which means the resulting language emphasized above on pages
2-3 of this decision need not be given patentable weight. Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28, 2016)
(precedential). This only applies to the method claims. Nonetheless, we
need not base our decision on whether this limitation is conditional because
the Examiner sufficiently finds the combination of references teach the
limitations argued by Appellants, which we address below.
Regarding Appellants' argument pertaining to each individual
reference failing to teach the emphasized limitation supra recited in claim 1
(App. Br. 10-11; Reply Br. 2-3), we disagree with Appellants because one
cannot show nonobviousness "by attacking references individually" where
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the rejections are based on combinations of references. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d
413,425 (CCPA 1981)).
In this case, Donath teaches using an in-vehicle GPS to determine
different prices charged based on distance travelled in designated areas,
which teaches the limitation "in response to the determination that the
vehicle has exited the [] jurisdiction: determining, by the vehicle-based
system, a [] distance that the vehicle has travelled within the [] jurisdiction"
recited in claim 1. Final Act. 7-8 ( citing Donath, 17-19, 27-29).
Slavin teaches toll plazas calculating road usage fees each time the
user passes through, which teaches the limitation "identifying a []
jurisdiction computer system associated with the first jurisdiction." Final
Act. 5 ( citing Slavin Fig. 1, 3: 19-28).
Nicolai teaches a vehicle transmitting user identification to a data
center, which teaches the limitation "transmitting, by the vehicle-based
system, [] data including the ... the identity of the [] driver of the vehicle in
the [] jurisdiction, to the [] jurisdiction computer system associated with the
[] jurisdiction" recited in claim 1. Final Act. 11-12 (citing ,r,r 37--44).
Westerlage teaches processor 22 transmitting distance to dispatch 30,
which teaches the limitation "transmitting, by the vehicle-based system, []
data including the [] distance that the vehicle has travelled within the []
jurisdiction ... to the [] jurisdiction computer system associated with the []
jurisdiction." Final Act. 5-7 (citing Westerlage, Abstract, Fig. 6, 14:28--41).
Moreover, we note that W esterlage teaches mobile unit 22 transmitting
distance travelled to dispatch 30 or host 35. Westerlage, 4:44--67.
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As for Appellants' argument the cited references fails to teach both "a
first jurisdiction computer system," and a separate "second jurisdiction
computer system" as recited in claim 1 (App. Br. 12; Reply Br. 3), teach toll
plazas (i.e., more than one plaza has more than one computer), which
teaches "a first jurisdiction computer system" and a "second jurisdiction
computer system" as recited in claim 1. Final Act. 5; Ans. 5 (citing Slavin
Fig. 1, 3: 19-28).
Appellants do not separately argue claims 2, 4, 5, 8, 9, 13, 14, 32, 33,
46, 48, and 54 with particularity, but assert the rejections of those claims
should be withdrawn for at least the same reasons as argued in independent
claim 1. App. Br. 10-16. Accordingly, we sustain the Examiner's rejection
of: (1) independent claims 1 and 46; and (2) dependent claims 2, 4, 5, 8, 9,
13, 14, 32, 33, 48, and 54.
III. Claim 7 under 35 U.S.C. § 103
The Examiner finds W esterlage teaches timing periodic transmissions
of data from a vehicle-based system to a payment system "based on an
increment of distance travelled" as recited in claim 7. Final Act. 12-13
(citing Westerlage, 4:10-37, 7:41-67); Ans. 6 (citing Westerlage, 4:10-37,
7 :41---67).
Appellants argue the cited references fail to teach timing periodic
transmissions of data from a vehicle-based system to a payment system
"based on an increment of distance travelled." App. Br. 12-13. Appellants
also argue the Examiner statement that transmissions occurring when
entering the jurisdiction and exiting the jurisdiction are not periodic
transmissions based on distance travelled. Reply Br. 4--5. We disagree with
Appellants.
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In order to rebut a prima facie case of unpatentability, Appellants
must distinctly and specifically point out the supposed Examiner errors, and
the specific distinctions believed to render the claims patentable over the
applied references. See 3 7 C.F .R. § 41.3 7 ( c )( vii) ("A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim."); see also In re Lovin, 652 F .3d
1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41. 3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."); cf In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art."). In
this case, Appellants merely give a conclusory statement that the cited
references fail to teach timing periodic transmissions of data from a vehicle-
based system to a payment system "based on an increment of distance
travelled." App. Br. 12-13.
As for Appellants' argument that transmissions occurring when
entering the jurisdiction and exiting the jurisdiction are not periodic
transmissions based on distance travelled (Reply Br. 4--5), this argument is
untimely. Appellants' arguments filed in the Reply Brief (see Reply Br. 4--
5) are untimely and waived because the Examiner did not change the theory
in the Answer while Appellants' proffered new arguments in the Reply Brief
without showing good cause. See 37 C.F.R. § 4I.41(b)(2); compare Final
Act. 12-13 (citing Westerlage, 4:10-37, 7:41-67) with Ans. 6 (citing
Westerlage, 4: 10-37, 7:41---67).
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Even if Appellants' argument in the Reply Brief is timely, it is
unpersuasive. W esterlage teaches timing periodic transmissions of data
from a vehicle-based system (Westerlage, 4:44---67) performed as a result of
a predetermined reporting event (i.e., performed as a result of a
predetermined reporting event suggests "based on an increment of distance
travelled" as recited in claim 7). Final Act. 12-13 (citing Westerlage, 4:10-
37, 7:41---67); Ans. 6 (citing Westerlage, 4:10-37, 7:41---67).
Accordingly, we sustain the Examiner's rejection of claim 7.
IV. Claim 47 under 35 U.S.C. § 103
The Examiner finds W esterlage teaches mobile unit 22 transmits
information to dispatch 30 between fixed positions such as the start and end
point of jurisdiction travel, which the Examiner maps to the limitation
"determine amount of time that the vehicle spent in jurisdiction, in response
to determining that the vehicle has exited jurisdiction" recited in claim 4 7.
Final Act. 15-16 (citing Westerlage, 7:20-30); Ans. 7.
Appellants argue W esterlage teaches a time value being sent from
central dispatch 30 to vehicle 20 to configure the amount of time between fix
point determinations, which fails to teach the limitation "determine amount
of time that the vehicle spent in jurisdiction, in response to determining that
the vehicle has exited jurisdiction" recited in claim 4 7. We disagree with
Appellants.
We agree with and adopt the Examiner's finding. Additionally, we
note that W esterlage teaches determining actual time at which vehicle 20
travelled from one taxing region into another, which teaches the limitation
"determine amount of time that the vehicle spent in jurisdiction, in response
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to determining that the vehicle has exited jurisdiction" recited in claim 4 7.
W esterlage, 7 :46-51.
Accordingly, we sustain the Examiner's rejection of claim 47.
V. Claims 45 and 49 under 35 U.S.C. § 103
The Examiner finds W esterlage teaches mobile units 22, which the
Examiner maps to the limitations recited in claims 45 and 49. Ans. 7 ( citing
W esterlage, 6: 14--46).
Appellants argue the Westerlage fails to teach different mobile
devices associated with different drivers of the vehicle within the first and
second jurisdiction, and transmitting the different road use fee data to the
different mobile devices of the drivers within the respective jurisdictions.
We disagree with Appellants.
Westerlage teaches mobile units (i.e., more than one mobile unit).
Ans. 7 ( citing Westerlage, 6: 14--46). Westerlage' s plurality of mobile units
22 suggest a plurality of different mobile devices associated with different
drivers of the vehicle within the first and second jurisdiction, and
transmitting the different road use fee data to the different mobile devices of
the drivers within the respective jurisdictions. Ans. 7 ( citing W esterlage,
6:14--46).
Accordingly, we sustain the Examiner's rejection of claims 45 and 49.
VI. Claim 53 under 35 U.S.C. § 103
The Examiner finds the combination of references teach the
limitations recited in claim 53. Final Act. 16; Ans. 7-8.
Appellants argue the cited references fail to teach the limitation
"periodically transmit data indicating where the vehicle has travelled to the
payment computer system, but wherein the vehicle-based system is
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configured not to transmit actual location data corresponding to the vehicle
to the first jurisdiction computer system or the second jurisdiction computer
system" recited in claim 53 because Slavin merely teaches a user driving
through a toll plaza and W esterlage and Donath describe vehicles having
GPS systems configured to periodically receive GPS location data. App. Br.
14--15. We agree with Appellants.
The Examiner finds the combination of references teaches the
limitation ''periodically transmit data indicating where the vehicle has
travelled to the payment computer system, but wherein the vehicle-based
system is configured not to transmit actual location data corresponding to
the vehicle to the first jurisdiction computer system or the second
jurisdiction computer system" recited in claim 53, but does not provide a
pinpoint citation within the references. Stated another way, the Examiner
does not provide pinpoint citations within the references as to transmitting
data to one device, while refraining from transmitting data to another device.
The Examiner's scant explanation behind the rejection was not sufficient to
put Appellants on notice of the grounds for rejection. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011).
Instead, the Examiner concludes "[ w ]hether that data is sent to one
party or the other ( or the particular name of any entity) is non-functional
descriptive material. Thus, because the data is shown to be transmitted from
mobile device to one entity, this satisfies the limitation." We do not
interpret claim 53 as reciting non-functional descriptive material.
Accordingly, we do not sustain the Examiner's rejection of claims 53.
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VII. Claim 55 under 35 U.S.C. § 103
The Examiner finds the limitations recited after the period in line 3 8
of claim 55 is not given patentable weight. Ans. 8.
Appellants argue the Examiner fails to address specific limitations
recited after the period in line 38 of claim 55. App. Br. 15-16; Reply Br. 6-
7. We agree with Appellants.
The Examiner is conflating section 103 with section 112(b ). A person
having ordinary skill in the art at the time of the invention would have
understood the period as an inadvertent typographical error and would have
given patentable weight to the limitations recited after the period in line 38
of claim 55.
Accordingly, we do not sustain the Examiner's rejection of claims 55.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We summarily affirm the Examiner's decision rejecting claim 55
under 35 U.S.C. § 112(b).
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 7-9, 13,
14, 32, 33, 45--49, 51, 52, and 54 under 35 U.S.C. § 103.
We reverse the Examiner's decision rejecting claims 53 and 55 under
35 U.S.C. § 103.
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).
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AFFIRMED-IN-PART
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