Ex Parte Wilson

Patent Trial and Appeal Board

Jun 29, 2016

11423873 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111423,873 06/13/2006
23628 7590 07/01/2016
WOLF GREENFIELD & SACKS, P,C
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
Hendalee Wilson
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.
Cl381.70000USOO 6602
EXAMINER
LOUIE, W AE LENNY
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENDALEE WILSON
Appeal2013-006514
Application 11/423,873
Technology Center 3600
Before ANNETTE R. REIMERS, TIMOTHY J. GOODSON, and
LEE L. STEPINA, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hendalee Wilson (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 1-11, 13-
17, and 19-22 as unpatentable over Fudali (US 2005/0096805 Al; pub. May
5, 2005) and Namaky (US 7,073,714 B2; iss. July 11, 2006). Claims 12 and
18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing in accordance with 37 C.F.R. § 41.47 was held on December 1,
2015.
We AFFIRM-IN-PART.
Appeal2013-006514
Application 11/423,873
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to use of a mobile phone to
extract automotive data from an automobile's engine control unit (ECU)
and translate it into human readable form on the phone's display, while
simultaneously broadcasting the information over an Internet-based
system for immediate repair and roadside assistance." Spec. para. 1, Fig. 3.
Claims 1, 15, and 16 are independent.
Claims 1 and 15 are illustrative of the claimed subject matter and
recite:
1. A system for interfacing with an on-board diagnostic
computer in a vehicle, wherein the on-board diagnostic computer
monitors a set of operational characteristics of a vehicle, the
system comprising:
a mobile phone in communication with the on-board
diagnostic computer, said mobile phone including:
a wireless communication component configured to
transmit data received from said on-board diagnostic
computer to a system configured to receive the data, and
a data-collection component configured to extract a
set of operational characteristics that are monitored by the
on-board diagnostic computer and translate the operational
characteristics from an SAE J 1979 format to a OBD-II
textual format and viewable on a display of the mobile
phone.
15. A system for interfacing with an on-board diagnostic
computer in a vehicle, the on-board diagnostic computer
monitoring a set of operation characteristics of the vehicle, the
system enabled in a mobile phone, the system comprising:
a data collection component in communication with the on-
board diagnostic computer, the data collection component
configured to extract the set of operations characteristics that are
monitored by the on-board diagnostic computer and to translate
the set of operations characteristics from a non-textual standard
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Application 11/423,873
to a textual format that is viewable on a display on the mobile
phone; and
a wireless communication component configured to
transmit the set of operations characteristics received from the
on-board diagnostic computer to a receiver, the receiver
including a database, the database to store the set of operations
characteristics in a collection of vehicle information.
ANALYSIS
Claims 1-11, 13, 14, and 21
Claim 1 recites, in relevant part, "a mobile phone in communication
with the on-board diagnostic computer, said mobile phone including:
a wireless communication component configured to transmit data received
from said on-board diagnostic computer to a system configured to receive
the data." Appeal Br. 34, Claims App. 1 The Examiner finds that Fudali
discloses the above-cited limitation. See Final Act. 2 (citing Fudali, para.
8) ("wireless adapter coupled to external data port communicates diagnostic
data \~\rith one or more computing devices"). The Examiner also finds that
"Fudali discloses a handheld computing device but is silent concerning a
'mobile phone[.'"] Final Act. 3; Ans. 5.2 The Examiner proposes to
substitute a mobile phone for the handheld computing device of Fudali.
See Final Act. 3; Ans. 5, 11.
1 We interpret this limitation to mean that the mobile phone includes a wireless
communication component that is automatically configured to transmit data
from the on-board diagnostic computer to a system that is automatically
configured to receive the data. See Oral Hearing Transcript 10-11 (mailed
Jan. 13, 2016).
2 The Examiner relies on Namaky for disclosing that "off-board devices such
as scan tools are commonly known and are governed by a number of
standards, e.g. SAE 11978; SAE 11979." Final Act. 3 (citing Namaky, 1:27-
42); see also Ans. 5.
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Appellant contends that "Fudali's handheld computing device does
not transmit received data to a system configured to receive the data."
Appeal Br. 21. According to Appellant, "Fudali describes that the
handheld computing device receives the diagnostic information, stores the
diagnostic information in a database maintained on the handheld computing
device, and displays the diagnostic information to a user." Id. (citing
Fudali, paras. 37, 78, 90, 95). As such, Appellant contends that "Fudali
does not teach or suggest that the wireless communications interface of
Fudali' s handheld computing device is configured to transmit diagnostic
information to another system," as called for in claim 1. Id.
Appellant's argument is persuasive. Claim 1 recites that "[the] mobile
phone includ[es]: a wireless communication component configured to
transmit data received from said on-board diagnostic computer to a system
configured to receive the data." Appeal Br. 34, Claims App. Fudali
discloses "[a] wireless adapter coupled to the external data port
communicates diagnostic data with one or more computing devices."
Fudali, para. 8 (emphasis added); see also id. at Abstract; Final Act. 2. In
other words, wireless adapter 350 of Fudali, which is separate from (not
part of) the handheld computing device( s ), communicates diagnostic data
with one or more of the handheld computing devices. See Fudali, para. 8;
see also id. at Abstract, para. 4 7, Fig. 3. The Examiner does not direct us to
any discussion in Fudali regarding Fudali's handheld computing device(s)
including a wireless communication component configured to transmit data
received from the on-board diagnostic computer to a system configured to
receive the data, as called for in claim 1. Nor does the Examiner address
whether such a configuration would have been obvious to add to Fudali.
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Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1, and its dependent claims 2-
11, 13, 14, and 21, as unpatentable over Fudali and Namaky.
Claim 15
Appellant contends:
In rejecting claim 15, the Office Action cites to the same portions
of Fudali as are cited with respect to claim 1. For reasons that
should be appreciated from the foregoing, the Office Action has
misinterpreted the cited passages of Fudali. As a result, the
proposed modification would not have resulted in a system
comprising "a wireless communication component configured to
transmit the set of operation characteristics received from the on-
board diagnostic computer to a receiver," as recited by claim 15.
Appeal Br. 22.
As noted supra, claim 1 requires the mobile phone to include "a
wireless communication component configured to transmit data received
from said on-board diagnostic computer to a system configured to receive
the data." Appeal Br. 34, Claims App. In contrast, claim 15 merely
requires "the system comprising:" "a wireless communication component
configured to transmit the set of operations characteristics received from
the on-board diagnostic computer to a receiver." Id. at 36, Claims App. 3
3 The preamble of claim 15 recites "the system enabled in a mobile phone."
Appeal Br. 36, Claims App. Here, the body of the claim defines a complete
structure and the preamble appears to recite only a purpose or intended use for
the invention, the preamble cannot be relied on to constitute or explain a claim
limitation. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999). Therefore, the recitation of the system "enabled in a
mobile phone" in the preamble of claim 15 does not distinguish from the
structure described by the Fudali reference.
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Application 11/423,873
Fudali discloses that ( 1) "in an automotive service facility, a handheld
computing device can be easily connected to a vehicle's on-board
diagnostic system for testing or problem diagnosis" (para. 2); and (2) "[a]
wireless adapter coupled to the external data port communicates diagnostic
data with one or more computing devices" (para. 8; see also Final Act. 5;
Ans. 7). In other words, Fudali discloses a system including a wireless
communication component (e.g., adaptor 350) configured to transmit the
set of operations characteristics received from the on-board diagnostic
computer (e.g., diagnostic instrument 110) to a receiver (e.g., computing
device 125). See e.g., Fudali, paras. 28, 29, 39, 47, 53-55, 81, Figs. 1, 3, 6;
see also Final Act. 5; Ans. 7. As such, Appellant has not apprised us of
Examiner error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 15 as unpatentable over Fudali and Namaky.
Claim 16
Appellant does not present any separate arguments pertaining to
independent claim 16. See Appeal Br. 20-32.4 Accordingly, we summarily
sustain the Examiner's rejection of independent claim 16 as unpatentable
over Fudali and Namaky. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Claim 17
Appellant contends:
Claim 17 depends from claim 16. As should be appreciated
from the foregoing discussion of the rejection of claim 16 in
Section VII(C), Fudali does not teach or suggest a system that
transmits data received from an on-board diagnostic computer to
4 We note that Appellant presents claim 16 in the general arguments made at
pages 15-20 of the Appeal Brief. However, similar to the discussion above
for claim 15, claim 16 merely recites "a system" comprising.
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another system .
. . . [T]he proposed modification would not have resulted in
a system comprising "means for communicating to the Internet"
to send data collected from an on-board diagnostic computer to
a server, as recited by claim 17.
Appeal Br. 28.
At the outset, we note that Section VII(C) of the subject appeal merely
discusses claim 1. See Appeal Br. 20-22. Moreover, claim 16 does not
recite anything regarding "a system that transmits data [means for
transmitting data] received from an on-board diagnostic computer to
another system." See Appeal Br. 36, Claims App. Limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671F.2d1344, 1348 (CCPA 1982).
Regarding claim 17, the Examiner finds that Fudali discloses that
"computer storage can be available via public network, a private network or
the internet." Final 1A..ct. 4 (citing Fudali, para. 71 ); see also 1A..ns. 6; Fudali,
paras. 66, 67, Figs. 4, 5. Appellant does not apprise us of Examiner error.
See Appeal Br. 28. Merely reciting the language of a claim and asserting
that the cited prior art references do not disclose that limitation is
insufficient. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and naked assertion that the corresponding elements were not
found in the prior art.").
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of dependent claim 17 as unpatentable over Fudali and Namaky.
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Claim 19
Claim 19 recites, "[t]he system of claim 17 wherein the means for
communicating to the Internet further comprises means for transmitting
identity data and location data." Appeal Br. 36, Claims App. We agree
with Appellant that the paragraphs of Fudali cited by the Examiner (paras.
33-37) do not "describe that its handheld computing device queries itself to
get information about a user [means for transmitting identity data]." See
Appeal Br. 25; see also id. at 26; id. at 36, Claims App.; Final Act. 4; Ans.
10.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of dependent claim 19 as unpatentable over Fudali
and N amaky.
Claim 20
Appellant contends:
Claim 20 depends from claim 16. As should be appreciated
from the foregoing discussion of the rejection of claim 16 in
Section VII(C), Fudali does not teach or suggest a system that
transmits data received from an on-board diagnostic computer to
another system .
. . . [T]he proposed modification would not have resulted in
a system comprising "means for formatting the translated data to
a Web format," as recited by claim 20.
Appeal Br. 29.
At the outset, as noted above, Section VII(C) of the subject appeal
merely discusses claim 1. See Appeal Br. 20-22. Moreover, claim 16 does
not recite anything regarding "a system that transmits data [means for
transmitting data] received from an on-board diagnostic computer to
another system." See Appeal Br. 36, Claims App.; see also In re Self, 671
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F.2d at 1348.
Regarding claim 20, the Examiner cites to paragraph 71 of Fudali.
Final Act. 4; see also Ans. 6. Paragraph 71 of Fudali discloses that
"[p ]rogram instructions can be in any appropriate form, such as source
code, object code, or scripting code" (italics added). A skilled artisan
would recognize that Fudali discloses "means for formatting the translated
data to a Web format," as called for in claim 20. Appellant does not
provide any persuasive evidence or argument to the contrary.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of dependent claim 20 as unpatentable over Fudali and Namaky.
Claim 22
Appellant contends that "the proposed modification would not have
resulted in a system comprising 'means for sending' the [collected data] 'to
a database to be stored in a collection of vehicle information,' as recited by
claim 22." Appeal Br. 32.
Appellant does not apprise us of Examiner error. 5 Merely reciting the
language of a claim and asserting that the cited prior art references do not
disclose that limitation is insufficient. See In re Lovin, 652 F.3d at 1357.
Fudali discloses:
The storage device controller 430 can be used to interface
the processor 410 to various memory or storage devices. In the
illustrated embodiment, a database 432 is shown for storing
5 Appellant states: "Claim 22 is rejected based on the same portions of Fudali
as claims 6 and 21. For reasons that should be appreciated from the
[discussion] of the rejection of claims 6 and 21, the Office Action
mischaracterizes the cited passages of Fudali." Appeal Br. 32. However,
claims 6 and 21 depend from claim 1 and recite limitations different from
those recited in claim 22, which depends from claim 16. See Appeal Br. 34,
36, 37, Claims App.
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customer information, test results, control sequences, system
configuration, and the like. As one skilled in the art will
appreciate, the database 432 can be implemented on any suitable
storage medium, such as magnetic, optical, or electrical storage.
Fudali, para. 67 (italics added). Based on the foregoing, a skilled artisan
would recognize that Fudali discloses "means for sending the collected data
to a database to be stored in a collection of vehicle information," as recited
in claim 22.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of dependent claim 22 as unpatentable over Fudali and Namaky.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-11, 13,
14, 19, and 21 as unpatentable over Fudali and Namaky
We AFFIRM the decision of the Examiner to reject claims 15-17, 20,
and 22 as unpatentable over Fudali and Namaky.
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).
AFFIRMED-IN-PART
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