Ex Parte Tretyak et al

Board of Patent Appeals and Interferences

Jun 14, 2012

11142715 (B.P.A.I. Jun. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/142,715 06/01/2005 Laurence J. Tretyak GP-306542 (2760/248) 7731
60770 7590 06/14/2012
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
LEE, JUSTIN YE
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
06/14/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LAURENCE J. TRETYAK, MINGHENG WANG,
and GARY A. WATKINS
____________________

Appeal 2010-003887
Application 11/142,715
Technology Center 2600
____________________

Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and JUSTIN
BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003887
Application 11/142,715

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 21-34. Claims 1-20 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
According to Appellants, the invention relates to an in-vehicle
messaging service. Claim 21, reproduced below, is illustrative of the claimed
subject matter:
21. A method for managing an in-vehicle messaging service in a
subscriber's vehicle, comprising the steps of:

receiving an alert message notification at a telematics unit in a
vehicle, wherein the alert message notification has a presentation
period and audio alert message associated therewith;

accessing the audio alert message; and

automatically presenting the audio alert message in voice
within the vehicle during the presentation period.

Rejections
Claims 21-23, and 25-33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith (US 2006/0089128 A1; April 27, 2006
(corresponding PCT filed December 19, 2002)), Applicant Admitted Prior
Art (“AAPA”), and Jennings (US 2006/0160522 A1; July 20, 2006 (filed
January 20, 2005)).
Claims 24 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Smith, AAPA, Jennings, and Svensson (US
2006/0293068 A1; December 28, 2006 (corresponding PCT filed April 25,
2003)).
Appeal 2010-003887
Application 11/142,715

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ISSUE
Claims 21 and 32

Appellants argue claims 21-23 and 25-33 as a group on the basis of
claims 21 and 32. (App. Br. 6). We select independent claim 21 as the
representative claim. We will, therefore, treat claims 22, 23, and 25-33 as
standing or falling with representative claim 21. Appellants argue that (1)
the audio messages taught by Jennings would not be received in a vehicle
and (2) the combination of Smith and Jennings conflicts with their teachings.
Therefore, the two issues before the Board are:
1) Did the Examiner err in finding that a skilled artisan would apply
the teaching of Jennings’ audio messages to be received in a vehicle?
2) Did the Examiner err in finding that a skilled artisan would
combine Smith and Jennings?

ANALYSIS
Claims 21-23 and 25-33
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to each of the arguments and the Appellants’
arguments in the Reply Brief.
Appellants first argue that “the Examiner offers no explanation that
supports modifying Jennings’ radio messages for transmission to a vehicle
for presentation therein.” Br. 6. Appellants assert that the Examiner has not
explained how “the audio alert messages of Jennings would be introduced
into the teachings of Smith and AAPA.” Reply Br. 2.
Appeal 2010-003887
Application 11/142,715

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The Examiner has stated, and Appellants have not disputed, that the
Smith-AAPA combination discloses every element of claim 21 except for
“the alert message can be audio alert message and accessing the audio alert
message.” Ans. 4-5. The Examiner only relies on Jennings to teach that the
messages can be audio messages and accessing the audio alert message.
Therefore, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the Smith-AAPA messaging management
system, which already receives messages in a vehicle, to incorporate
Jennings’ teaching of audio messages. Ans. 5.
Moreover, the Examiner articulated a sufficient rational basis for
Jennings to be received in a vehicle because the messages of Jennings may
be received in a cellular phone or laptop, which may be used in a vehicle.
Ans. 11-12. For the above reasons, we agree with the Examiner that one of
ordinary skill in the art would have applied the audio alert messages of
Jennings to be used in a vehicle.
Appellants other argument is that the combination of Smith and
Jennings conflicts with their teachings. Br. 8 and Reply Br. 3-4. Appellants
argue that “Jennings involves radio messages stored for later playback,”
whereas “Smith prioritizes SMS messages in part for later auto-deletion.” Br.
8 (emphasis in original). Appellants further assert that altering Smith to
transmit audio messages instead of SMS messages would “fundamentally
change” Smith and that “when the references are considered as a whole in
view of their express objectives and in the context of the types of
communication systems for which they were designed … [the] combination
Appeal 2010-003887
Application 11/142,715

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is not a proper result of what would have been obvious at the time of the
invention to those skilled in the art.” Reply Br. 3-4.
Appellants’ focus on certain aspects of the references does not
convince us that the combination conflicts with the teachings of Smith and
Jennings. As the Examiner explains, Smith and Jennings both include
processors that may be used in portable electronic devices. Ans. 11-12.
Smith and Jennings disclose using such portable electronic devices to
receive, manage and (visually or orally) display alert messages.
Additionally, Jennings discloses the use of both voice and text messages and
one of ordinary skill in the art would understand that message managing
systems eventually delete stored messages. Moreover, the Examiner has
articulated a sufficient rational basis to support the combination of Smith
and Jennings. Ans. 5. We agree with the Examiner that one of ordinary skill
in the art would have found the use of audio messages, as taught by
Jennings, to be an obvious substitute for or enhancement to Smith.
For the above reasons, we agree with the Examiner that one of
ordinary skill in the art would find the combination of Jennings and Smith to
be obvious and not conflict with their respective teachings.

Claims 24 and 34
With respect to claims 24 and 34, Appellants assert that Svensson
does not cure any of the deficiencies alleged in the Smith, AAPA, and
Jennings combination. Further, Appellants state that the additional claim
elements of claims 24 and 34 are not made obvious by the cited prior art.
This mere statement does not have sufficient substantial argument to merit
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Application 11/142,715

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consideration and claims 24 and 34 therefore stand or fall with claim 21. As
explained above, we do not find any deficiencies in the Examiner’s rejection
of claim 21 and thus affirm the Examiner’s rejection of claims 24 and 34 for
the same reasons.

CONCLUSION

Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 21-34 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 21-23 and 25-33 under 35 U.S.C.
§ 103(a) as being obvious over Smith, AAPA, and Jennings is affirmed.
The Examiner’s rejection of claims 24 and 34 under 35 U.S.C. §
103(a) as being obvious over Smith, AAPA, Jennings, and Svensson is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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