2020002560 (P.T.A.B. Nov. 23, 2020)

FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals BoardNov 23, 2020

2020002560 (P.T.A.B. Nov. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/674,601 08/11/2017 David Martin GERSABECK 83840670 1007 28395 7590 11/23/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER WALLACE, DONALD JOSEPH ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 11/23/2020 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 DAVID MARTIN GERSABECK, DAVID ANTHONY HATTON, ZIAD ALHIHI, MICHAEL ANDREW SIMONS, THOMAS NELSON, and RYAN CONROY Appeal 2020-002560 Application 15/674,601 Technology Center 3600 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER and JEREMY M. PLENZLER, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6, 8–11, 17, 18, and 20, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Ford Global Technologies, LLC, as the real party in interest. Appeal Br. 1. Appeal 2020-002560 Application 15/674,601 2 We REVERSE, and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a system for communication between a mobile device and a vehicle. Claims 1 and 10 are illustrative, and are reproduced below: 1. A system comprising: a portable-device processor configured to: wirelessly pair with a mobile device; receive a selection, from a mobile device application, of one of a plurality of vehicles controllable by the processor and transmitted from the processor to the mobile device application; wirelessly receive a vehicle command from the mobile device application; and send a wireless instruction to the selected vehicle instructing an action corresponding to and responsive to the received vehicle command. 10. A system comprising: a mobile device processor configured to: detect wireless connection advertising from a fob-device configured for communication with a mobile device application executed by the mobile device processor; Appeal 2020-002560 Application 15/674,601 3 wirelessly connect using the advertised wireless connection; present a set of vehicle-functions controllable by the fob- device and identified by the fob-device, following connection to the fob-device; receive selection of a vehicle function on the mobile device; and send a wireless instruction, corresponding to the selected vehicle function, to the fob-device. THE REJECTIONS The Examiner rejects: (i) claims 1–4 and 6 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu (US 2014/0342668 A1, published Nov. 20, 2014) in view of Utter (US 2007/0001805 A1, published Jan. 4, 2007); (ii) claim 8 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu in view of Utter and Sultan (US 2009/0096596 A1, published Apr. 16, 2009); (iii) claim 9 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu in view of Utter and Hatton (US 2014/0277837 A1, published Sept. 18, 2014); (iv) claim 10 under 35 U.S.C. § 103 as being unpatentable over King (US 2014/0313009 A1, published Oct. 23, 2014) in view of Sultan; (v) claim 11 under 35 U.S.C. § 103 as being unpatentable over King in view of Sultan, Kyomitsu, and Utter; and (vi) claims 17, 18, and 20 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu and Utter. Appeal 2020-002560 Application 15/674,601 4 ANALYSIS Claims 1–4 and 6--§ 103--Kyomitsu/Utter The Examiner relies on Kyomitsu as disclosing all limitations in claim 1, with the exception of “the plurality of the vehicles” being transmitted from the processor (key fob) to the mobile device application. Final Act. 4. The Examiner cites to Utter as disclosing a key fob that includes a processor and memory for storing vehicle identification for multiple vehicles controllable by the fob, and provides for authentication between the fob and a vehicle authentication method. Id. The Examiner concludes that it would have been obvious to “incorporate the universal fob of Utter et al. into the system of Kyomitsu,” in order to provide additional security by way of authentication, and to provide means for authenticating access to a vehicle that has not previously been accessed by a user or the mobile device, in the event that network access is not available. Id. Appellant points out that neither Kyomitsu nor Utter involves sending vehicle information from an intermediary device (fob) to an application residing on a mobile device, the combination would not do so either. Appeal Br. 5–6. Appellant emphasizes that, in the Kyomitsu system, the mobile device, and not the fob, has stored therein information as to which vehicles it may control, and that the combination of the teachings of Kyomitsu and Utter “does not contemplate a scenario whereby the phone does not know what vehicles are controllable by a given fob that prestores control information,” such that communication of that information from the fob to the mobile device would ever be necessary. Reply Br. 2–3. Appellant has the better position. The Examiner does not explain what “additional security” would result from having Utter’s key fob used in Appeal 2020-002560 Application 15/674,601 5 the Kyomitsu system, which already includes an authorization protocol. See, e.g., Kyomitsu ¶ 18. The other reason for combining the references provided by the Examiner is premised on “network access [not being] available,” yet, in Kyomitsu, the key fob itself establishes a communications link with the mobile device, and can transmit or relay commands to the vehicle. Kyomitsu ¶ 14. As such, we are admittedly unsure as to what specifically the Examiner envisions, and thus cannot determine that the reason provided is supported by rational underpinnings. Accordingly, we do not sustain the rejection of claim 1 as being unpatentable over Kyomitsu and Utter. Claims 2–4 and 6 depend from claim 1, and the rejection is not sustained as to those claims, either. Claim 8--§ 103--Kyomitsu/Utter/Sultan The Examiner does not rely on Sultan in any manner that remedies the deficiencies in the proposed combination of Kyomitsu and Utter. The rejection of claim 8 is not sustained. Claim 9--§ 103--Kyomitsu/Utter/Hatton The Examiner does not rely on Hatton in any manner that remedies the deficiencies in the proposed combination of Kyomitsu and Utter. The rejection of claim 9 is not sustained. Claim 10--§ 103--King/Sultan The Examiner relies on King as disclosing the limitations set forth in claim 10, with the exception that King does not teach that a set of vehicle functions controllable by a fob-device is identified by the fob-device to the Appeal 2020-002560 Application 15/674,601 6 mobile device processor. Final Act. 7–9. The Examiner finds that Sultan teaches a mobile device that initiates communication with a vehicle controller on a vehicle, via a processor/fob, and the mobile device receives a list of available functions from the vehicle controller via the fob. Id. at 9. The Examiner concludes that it would have been obvious to incorporate the teachings of Sultan into the King system, so as to provide specific guidance to an operator as to the command functions available for a selected vehicle, with the combination also involving known prior art elements being combined in a known manner with a reasonable expectation of predictable results. Id. Appellant initially argues that, in Sultan, the commands displayed on the mobile device are received from the vehicle, and not from the fob- device, and that the combination of the teachings of Sultan with King would result in a system in which, once the vehicle is awakened by the fob-device, would send a command list from the vehicle to the mobile device “without any further intervention by or transmission from the fob.” Appeal Br. 7. The Examiner clarifies that paragraph 9 of Sultan evidences that the fob- device is involved in all communications between a vehicle telematics unit and the mobile device. Ans. 7. Appellant counters that, even if the vehicle control signal information sent by the vehicle to the mobile device in Sultan might be regarded as being presented by the fob-device to the mobile device, due to the information being passed through the fob-device, the vehicle control signals represent functions controllable by the vehicle, and not by the fob-device. Reply Br. 4. Again, Appellant has the better position. Although Sultan contemplates that fob 14 has the ability to control certain vehicle functions Appeal 2020-002560 Application 15/674,601 7 using conventional depressible buttons, Sultan does not evidence that these control functions are identified by the fob-device to the mobile device processor, as required by claim 10. See Sultan ¶ 8. The vehicle function controls that are presented to the mobile device processor in Sultan are functions controllable by the vehicle, and not the fob. See, e.g., Sultan ¶ 10. In these circumstances, “fob 14 operates to relay information between the vehicle telematics unit 12 and the personal communication device 16.” Id. ¶9. As such, the rejection presented by the Examiner fails to teach or suggest presenting, to a mobile device processor, vehicle functions that are both identified to the mobile device processor by the fob-device, and are controllable by the fob-device. The rejection of claim 10 as being unpatentable over King and Sultan, is not sustained. Claim 11--§ 103--King/Sultan/Kyomitsu/Utter The Examiner does not rely on Kyomitsu and/or Utter in any manner that remedies the deficiencies in the proposed combination of King and Sultan. The rejection of claim 11 is not sustained. Claims 17, 18, and 20--§ 103--Kyomitsu/Utter The Examiner’s proposed combination of Kyomitsu and Utter in concluding that the subject matter of claim 17 would have been obvious suffers from the same deficiencies identified with respect to claim 1 above. Final Act. 13. We do note, however, that we agree with the Examiner that claim 17 does not require that the transmission of vehicle information to the mobile device be effected by the fob device. Final Act. 15. However, the Appeal 2020-002560 Application 15/674,601 8 Examiner does not adequately explain why, in the Kyomitsu system that stores vehicle identification and vehicle control information on a mobile device, it would have been obvious to also store some of that information on a fob device as well, which is the result of the proposed combination. The rejection of claim 17, and of claims 18 and 20 depending therefrom, is not sustained. NEW GROUND OF REJECTION--Claims 1–4, 6, 8, and 9--Indefiniteness Claims 1–4, 6, 8, and 9 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention.2 This is a New Ground of Rejection pursuant to 37 C.F.R. § 41.50(b). Claim 1 requires that a portable-device processor (e.g., on a card or fob) be configured to “receive a selection, from a mobile device application, of one of a plurality of vehicles controllable by the processor and transmitted from the processor to the mobile device application.” Appeal Br., Claims Appendix. It is reasonably clear from the claim language that the processor is configured to receive a selection of a vehicle from among a plurality of vehicles, but it is unclear as to what exactly is “transmitted from the processor to the mobile device application.” Parsing the claim language, it 2 We note that, normally, when substantial confusion exists as to the interpretation of a claim and no reasonably definite meaning can be ascribed to the terms in a claim, a determination as to patentability under 35 U.S.C. § 103 is not made. See In re Steele, 305 F.2d 859, 862 (CCPA 1962); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). However, the reversal herein of the rejection of these claims under § 103 does not turn on how the indefinite limitation is to be interpreted; rather, the combination of references is deemed to be deficient regardless of the claim interpretation. Appeal 2020-002560 Application 15/674,601 9 appears that either the “selection” or the “plurality of vehicles controllable by the processor” is the subject of the claimed transmission from the processor to the mobile application. Since the selection is to be received by the portable device processor from a mobile device application according to claim 1, it is unreasonable to interpret the language in question as also requiring the selection to be transmitted from the portable device processor to the mobile device application. The other possible reasonable interpretation is that a plurality of vehicles is transmitted from the processor to the mobile device. Yet, vehicles themselves are not transmitted from a processor to a mobile device application. Although we surmise that Appellant may have intended the limitation to require transmission of an “identification” of a plurality of vehicles, as is recited in claim 17, for example, or some similar descriptor, none appears in claim 1 and we do not deem it appropriate to infer that a particular descriptor was intended and to consider the recitation to be limited in such manner. In other words, we decline to read any particular limitation appearing in the Specification or another claim into claim 1. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily). A claim is indefinite when it contains language that is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Claims, when read in light of the specification, must “reasonably apprise those skilled in the art both of the utilization and scope of the invention” using language “as precise as the subject matter permits.” Id. at Appeal 2020-002560 Application 15/674,601 10 1313. The limitation at issue fails this last condition, in that it is not sufficiently precise, considering the subject matter involved. It is also appropriate, and favored by the courts, to have issues related to indefiniteness resolved during prosecution, and not later in litigation. Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008); see also In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. . . . An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.”). In consideration of the above, claim 1 is rejected under 35 U.S.C. § 112(b) as being indefinite. Claims 2–4, 6, 8, and 9 are rejected on the same ground due to their dependency from claim 1, in that the further limitations presented in these claims do not cure the deficiency in claim 1. CONCLUSION The rejection of claims 1–4 and 6 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu and Utter is reversed. The rejection of claim 8 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu, Utter, and Sultan, is reversed. The rejection of claim 9 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu, Utter, and Hatton, is reversed Appeal 2020-002560 Application 15/674,601 11 The rejection of claim 10 under 35 U.S.C. § 103 as being unpatentable over King and Sultan is reversed. The rejection of claim 11 under 35 U.S.C. § 103 as being unpatentable over King, Sultan, Kyomitsu, and Utter, is reversed. The rejection of claims 17, 18, and 20 under 35 U.S.C. § 103 as being unpatentable over Kyomitsu and Utter is reversed. Claims 1–4, 6, 8, and 9 are rejected under 35 U.S.C. § 112(b) as being indefinite. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–4, 6 103 Kyomitsu, Utter 1–4, 6 8 103 Kyomitsu, Utter, Sultan 8 9 103 Kyomitsu, Utter, Hatton 9 10 103 King, Sultan 10 11 103 King, Sultan, Kyomitsu, Utter 11 17, 18, 20 103 Kyomitsu, Utter 17, 18, 20 1–4, 6, 8, 9 112(b) Indefiniteness 1–4, 6, 8, 9 Overall Outcome 1–4, 6, 8– 11, 17, 18, 20 1–4, 6, 8, 9 Appeal 2020-002560 Application 15/674,601 12 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground 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. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)