Ex Parte Videtich et al

Patent Trial and Appeal Board

Jul 27, 2016

12165236 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/165,236 06/30/2008
73811 7590 07/29/2016
Leydig, Voit & Mayer, Ltd,
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Matt C. Videtich
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.
263586 1607
EXAMINER
AMRANY,ADI
ART UNIT PAPER NUMBER
2836
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MATT C. VIDETICH, and STEVEN C. TENGLER
Appeal2014-009680
Application 12/165,236
Technology Center 2800
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-7, 9, 11, 12, and 20-23. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b ).
We REVERSE, enter a NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. 41.50(b), and denominate a NEW GROUND OF
REJECTION.
Appellants' invention is directed to personal alert technology and
more particularly to a system for providing an alert to a user of a vehicle
(Spec. if 1 ).
Appeal2014-009680
Application 12/165,236
Claim l is illustrative:
1. A system for providing alerts to a user of a vehicle,
wherein urgent alerts are provided immediately by a mobile
wireless device while non-urgent alerts need not be provided
immediately by the mobile wireless device, the system
compnsmg:
a telematics unit associated with the vehicle and having audio
and visual play functionalities, the telematics unit comprising a
short range wireless interface; and
a mobile wireless device that is paired with the vehicle via a
pairing with the telematics unit, the mobile wireless device
further comprising:
a first communication interface configured to receive
alert information via a long range mobile wireless signal
broadcast by a service provider;
a second communication interface, configured to
communicate with the telematics unit via the short range
wireless interface thereof;
a memory, configured to store received alert information;
and
a processor configured for performing the following steps
in response to receiving alert information:
determining, upon receipt of the alert information,
that the alert information corresponds to a non-
urgent alert that does not need to be provided
immediately, and that the mobile wireless device is
not within range of the telematics unit via the
second communications interface;
storing, in response to the determining, the
received alert information in the memory;
detecting, after the storing, that the second
communications interface is within range of the
short range wireless interface of the telematics
unit; and
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Application 12/165,236
transferring, in response to the detecting, the alert
information to the telematics unit for providing of
the non-urgent alert corresponding to the alert
information;
wherein the processor is further configured for
performing the following steps in response to receiving
alert information:
determining, upon receipt of the alert information,
that the alert information corresponds to an urgent
alert that needs to be provided immediately, and
that the mobile wireless device is not within range
of the telematics unit via the second
communications interface; and
providing the urgent alert corresponding to the
alert information via the mobile wireless device.
THE REJECTIONS
Appellants appeal the following rejections:
1. Claims 1, 3-5, 7, 9-11, and 20-22 are rejected under 35 U.S.C.
§ 102(e) as unpatentable over Schwarz (US 2008/0221743 Al Sept.
11, 2008).
2. Claims 6, 12, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwarz.
FINDINGS OF FACT & ANALYSIS
REJECTION (1)
Appellants argue that Schwarz does not disclose that the disable
command sent from the mobile device 152 to the device 111 in the vehicle is
an alert provided to a user of the vehicle as required by claim 1 (App. Br. 5).
Appellants contend that Schwarz's disable command is only applicable to
the vehicle so as to disable some functionality on the vehicle based upon
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Application 12/165,236
non-payment. Id. Appellants contend that an "alert" according to the claim
language and within the context of the Specification must be a message
provided to the vehicle user, not a command to be executed by the vehicle
(Reply Br. 7).
We find that the Examiner has not established that Schwarz's disable
vehicle command is an alert provided to the user of a vehicle. Claim 1
recites "a system for providing alerts to a user of a vehicle ... while non-
urgent alerts need not be provided immediately by the mobile wireless
device, the system comprising .... " The claim requires that the non-urgent
alerts need not be provided immediately to the user of the vehicle. Schwarz
discloses that the disable command is sent to the instructing device 111 to
disable the vehicle 109 (Schwarz i-f 76). The device 111 disables the vehicle
109. Id.
According to Schwarz's i-f 76, the user is not provided with any notice
from the instructing device 111 that the vehicle has been disabled. On this
record, we are constrained to reverse the Examiner's§ 102(e) rejection over
Schwarz.
NEW GROUND OF REJECTION
Claim 1 requires a system that provides alerts to a user of a vehicle by
using a mobile device that differentiates between urgent and non-urgent
alerts; determines if the mobile wireless device is within range of a
telematics units associated with a vehicle; provides urgent alerts to the user
on the mobile device if the alert is urgent; stores non-urgent information on
the mobile wireless device ifthe mobile device is out of range of the
telematics unit; and transfers the non-urgent alerts to the telematics units
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upon detection that the communication interface of the mobile device is
within range of the telematics unit.
Appellants and the Examiner agree that the urgent and non-urgent
alerts are "alerts that are processed in a different manner" (Reply Br. 6; Ans.
4). We base the new ground on this claim interpretation.
We reject claims 1, 3-5, 7, 9-11 and 20-22 under 35 U.S.C. § 103(a)
over Schwarz. We focus on claim 1 only in drafting the rejection as
Appellants did not contest the Examiner's finding that Schwarz teaches the
limitations of claims 3-5, 9-11, 21, and 22 (App. Br. 3-9). Appellants'
arguments regarding independent claims 7 and 20 are based on arguments
made regarding claim 1. Therefore, our findings regarding claim 1 are
applicable to claims 7 and 20 as well.
We adopt the Examiner's findings regarding Schwarz on pages 2 to 8
of the Final Action. Appellants do not dispute that Schwarz teaches all the
limitations of claim 1, except for the processor configured to perform the
steps recited in the claim (App. Br. 4-7). Accordingly, we add the following
findings and analysis to address the obviousness of the subject matter of
claim 1 including the processor in light of Schwarz.
Regarding the processor limitation, Schwarz teaches in i-f 49 that
"status updates, prompts, warnings, and the like" can be displayed on the
screen of the wireless device 152 (i.e., the mobile wireless device in the
claim). Schwarz further discloses that the device 111 (i.e., telematics unit in
the claim) sends messages to the wireless device 152 using BlueTooth®
technology when the device 111 detects the presence or proximity of
wireless device 152 (i-f 49). Schwarz discloses in i-f 53 that instead of the
device 111 sending messages to the wireless device 152, the wireless device
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Application 12/165,236
152 may act as the intermediary and send messages to device 111 (i.e.,
telematics unit). Schwarz exemplifies an embodiment where, due to non-
payment, the operator sends a message to the wireless device 152 which
displays a message to the user (i-f 76). The wireless device 152 then sends to
the device 111 (i.e., telematics unit) instructions to disable the vehicle due to
nonpayment. Id.
Schwarz's sending and immediate display of a non-payment message
on the wireless device 152 constitutes an urgent alert. Schwarz teaches that
the disable instruction is sent from the wireless device 152 to device 111
(i.e., telematics unit). Schwarz further discloses that the messages may be
saved on the device 111 and later sent to wireless device 152 when the
wireless device is within proximity of the device 111 using Blue Tooth®
technology (i-f 49). Schwarz suggests at i153 that messages may be saved on
the wireless device 152 when the wireless device is used as the intermediary
between the operation center and the device 111 on the vehicle (i1i1 49, 53).
Schwarz's saving of the messages or instructions on the wireless device 152
and later sending to the device 111 constitutes a non-urgent alert. As noted
by the Examiner, Schwarz treats the alerts differently and so inherently has
the processor that sorts the messages into urgent alerts that are presented
immediately and non-urgent alerts that are saved and transferred for later
presentation within the meaning of the claim.
While Schwarz discloses transferring a disable instruction from the
wireless device 152 to the device 111, Schwarz further discloses that the
messages that may be conveyed are not limited and may include "status
updates, prompts, warnings, and the like" (i-f 49). Accordingly, it would
have been obvious to one of ordinary skill in the art at the time of the
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invention to send to the device 111 non-urgent alerts in addition to the
disable instruction in Schwarz in order to provide additional non-urgent
information to the vehicle owner such as a status update for the disabled
vehicle. For example, when the disable instruction is sent wirelessly to the
device 111 to disable the vehicle, it would have been obvious to include a
message to the owner upon attempting to start the vehicle that the vehicle
has been disabled. Such a message would prevent any uncertainty as to the
reason for the vehicle not starting and prevent unnecessary trips to the
mechanic.
REJECTION (2):
Dependent claims 6, 12, and 23 are rejected under 35 U.S.C. § 103
over Schwarz. The Examiner relied upon the findings that Schwarz
anticipates independent claims 1, 7 and 20, from which claims 6, 12, and 23
respectively depend. Because we reverse the Examiner's anticipation
rejection over Schwarz and enter a new obviousness rejection over Schwarz
for these independent claims, the rejection of claims 6, 12, and 23 over
Schwarz is also denominated a new ground of rejection because this
rejection now includes different findings of fact and conclusions of law.
Therefore, the Examiner's§ 103 rejection of claims 6, 12, and 23 over
Schwarz is denominated a new ground of rejection.
DECISION
The Examiner's decision is reversed. We enter a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b). We further denominate the
Examiner's 35 U.S.C. § 103(a) rejection of claims 6, 12, and 23 a new
ground of rejection.
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THvIE PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review" and that
the 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 Evidence 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 examiner ....
(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).
ORDER
REVERSED, NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b), & DENOMINATE A NEW
GROUND OF REJECTION
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