2019005004 (P.T.A.B. Nov. 19, 2020)

Ford Global Technologies, LLC

Patent Trials and Appeals BoardNov 19, 2020

2019005004 (P.T.A.B. Nov. 19, 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. 15/966,307 04/30/2018 Richard Isaacs 84019131; 67186-639PUS1 9338 46442 7590 11/19/2020 CARLSON, GASKEY & OLDS, P.C./Ford 400 W. MAPLE RD. SUITE 350 BIRMINGHAM, MI 48009 EXAMINER EUSTAQUIO, CAL J ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 11/19/2020 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): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RICHARD ISAACS and DEBRA LYNN ROSS ________________ Appeal 2019-005004 Application 15/966,307 Technology Center 2600 ________________ Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and JOHN A. EVANS, Administrative Patent Judges. Per Curiam. Opinion Concurring filed by Administrative Patent Judge BAUMEISTER. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. Appeal Brief filed April 29, 2019 (“Appeal Br.”), 3–10.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies Ford Global Technologies, LLC, as the real party in interest. Appeal Brief filed April 17, 2019 (“Appeal Br.”), 1. 2 The Appeal Brief was corrected by the Response to Notification of Non- Compliant Appeal Brief, filed April 29, 2019. Appeal 2019-005004 Application 15/966,307 2 CLAIMED SUBJECT MATTER Appellant describes the present invention as follows: An example locating assembly includes, among other things, a display within an electrified vehicle, a vehicle symbol presented on the display, and a charge port symbol presented on the display. The charge port symbol is positioned relative to the vehicle symbol to indicate a position of a charge port. An example locating method includes displaying a vehicle symbol and a charge port symbol on a display of an electrified vehicle. The charge port symbol is positioned relative to the vehicle symbol to indicate a position of a charge port. Spec., Abstr. Independent claim 1, reproduced below, illustrates the subject matter of the appealed claims: 1. A locating assembly, comprising: a display within an electrified vehicle; a vehicle symbol presented on the display; and a charge port symbol presented on the display, the charge port symbol positioned relative to the vehicle symbol to indicate a position of a charge port. STATEMENT OF THE REJECTIONS Claims 1–3, 5, 6, 12, 13, 15, and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Skaff (US 2012/0176231 A1; published July 12, 2012) and Matsuura (US 2009/0043449 A1; published Feb. 12, 2009). Final Action mailed November 23, 2018 (“Final Act.”), 2–4. Claims 4, 7, 14, and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Skaff, Matsuura, and Fukano (US 2013/0158797 A1; published June 20, 2013). Final Act. 5–7. Appeal 2019-005004 Application 15/966,307 3 Claims 8, 9, 17, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Skaff, Matsuura, and Bissonette (US 2012/0249065 A1; published Oct. 4, 2012). Final Act. 7–9. Claims 11 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Skaff, Matsuura, Bissonette, and Demma (US 2012/0048945 A1; published Mar. 1, 2012). Final Act. 9–11. Claims 10 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Skaff, Matsuura, Bissonette, and Kanno (US 2008/0193823 A1; published Aug. 14, 2008). Final Act. 11–12. DETERMINATIONS AND CONTENTIONS The Examiner finds that Skaff discloses a display within an electrified vehicle that includes a vehicle symbol presented on the display. Final Act. 2–3 (citing Skaff, Fig. 2 (indicator 70)). In regard to the claim language, “a charge port symbol presented on the display, the charge port symbol positioned relative to the vehicle symbol to indicate a position of a charge port,” the Examiner finds that Skaff depicts a symbol of a charge port that is used to charge the vehicle’s batteries. Id. at 3 (citing Skaff ¶ 24, charge plug 52). But the Examiner further finds, “Skaff does not disclose the location of a charge port as reflected on the disclosed display.” Id. The Examiner finds that Matsuura “discloses a known embodiment showing the particular location of a fuel-filler cap on a display symbolic of the vehicle from an overhead vantage point.” Final Act. 3 (citing Matsuura ¶ 16, Fig. 7). The Examiner determines that it would have been obvious to substitute Skaff’s symbol of a charger plug in an electronic display for an electric vehicle in place of the symbol of the fuel filter location in Appeal 2019-005004 Application 15/966,307 4 Matsuura’s display. Id. The Examiner reasons that “[s]uch a modification would allow a user to quickly locate the port’s location on a vehicle.” Id. Appellant argues, inter alia, that the cited art fails to teach or suggest a charge port symbol presented on the display, as required by claim 1. Appeal Br. 6. ANALYSIS We limit our analysis to addressing the narrow question of whether Appellant has demonstrated error in the Examiner’s rejections. We determine Appellant has demonstrated error. As noted above, the Examiner finds that Skaff’s charge plug 52 corresponds to a symbol of a charge port that is used to charge the vehicle’s batteries. Final Act. 3 (citing Skaff ¶ 24); see also Examiner’s Answer mailed May 16, 2019 (“Ans.”), 4 (“Matsuura’s embodiment modifies Skaff’s charge port (or plug) [52] in figure 1 using the embodiment disclosed in Matsuura’s figure 7.”) But the charge port 52, depicted in Skaff’s Figure 1, is not a symbol presented on the display within an electrified vehicle, as required by independent claim 1. Skaff’s Figure 1 “is a simplified, exemplary schematic representation of a vehicle [that includes] an information display system according to one or more embodiments of [that] application.” Skaff ¶ 9. And that schematic of Figure 1 depicts the vehicle’s display 60 as a black box within information display system 58. Skaff, Fig. 1. Skaff’s element 52 merely is a schematic representation of a physical charge plug. Id. ¶ 26. Furthermore, the Examiner does not provide sufficient evidence that one of Appeal 2019-005004 Application 15/966,307 5 ordinary skill would look to a schematic drawing of a patent application to select a symbol for use in a dashboard display. In his separate Opinion, Judge Baumeister addresses the claims’ patentability when the claim language is interpreted in light of the printed- matter doctrine. But the obviousness rejection before us indicates that the Examiner did not rely on the printed-matter doctrine in formulating the rejection. As such, neither do we, on appeal, consider the relevance of the printed-matter doctrine. The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For these reasons, we reverse the Examiner’s obviousness rejection of independent claim 1 and also of claims 2, 3, 5, 6, 12, 13, 15, and 16, which either depend from claim 1 or otherwise recite similar claim language. With respect to the remaining rejections of dependent claims 4, 7–11, 14, and 17–20, the Examiner does not rely on any of the additionally cited references to cure the deficiency of the obviousness rejection of claim 1, explained above. Final Act. 5–12. We, therefore reverse these obviousness rejections for the reasons set forth in relation to claim 1. Appeal 2019-005004 Application 15/966,307 6 DECISION SUMMARY In summary: REVERSED Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–3, 5, 6, 12, 13, 15, 16 103 Skaff, Matsuura 1–3, 5, 6, 12, 13, 15, 16 4, 7, 14, 16 103 Skaff, Matsuura, Fukano 4, 7, 14, 16 8, 9, 17, 18 103 Skaff, Matsuura, Bissonette 8, 9, 17, 18 11, 19 103 Skaff, Matsuura, Bissonette, Demma 11, 19 10, 20 103 Skaff, Matsuura, Bissonette, Kanno 10, 20 Overall Outcome 1–20 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RICHARD ISAACS and DEBRA LYNN ROSS ________________ Appeal 2019-005004 Application 15/966,307 Technology Center 2600 ________________ Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and JOHN A. EVANS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge, concurring. I agree with the Majority’s finding that Skaff’s charge port 52, as depicted in Figure 1 of Skaff, is a schematic representation of a physical charge plug—not a representation of a symbol presented on the display of an electrified vehicle. I also agree with the Majority’s conclusion that the Examiner does not provide sufficient evidence that one of ordinary skill would look to a schematic drawing of a patent application to select a symbol for use of a dashboard display. I write separately because I would not limit our analysis to the Examiner’s rationales. Claim construction is a threshold inquiry for all of our reviews. See In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974) (“Before considering the rejections . . . , we must first [determine the scope of] the claims.”). When the present claims are construed properly and in Appeal 2019-005004 Application 15/966,307 2 light of the printed-matter doctrine, it is reasonably clear that the cited art renders the claims unpatentable. I, therefore, would affirm all of the rejections on appeal, and if necessary, designate the rejections as constituting new grounds pursuant to the Board’s discretionary authority under 37 C.F.R. § 41.50(b). Turning to the claim-construction inquiry, our reviewing court just this month summarized the printed-matter doctrine as follows: This court and its predecessor have long recognized that certain “printed matter” falls outside the scope of patentable subject matter under U.S. patent law. See AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) (“This court has generally found printed matter to fall outside the scope of § 101.”); In re Chatfield, 545 F.2d 152, 157 (CCPA 1976) (“Some inventions, however meritorious, do not constitute patentable subject matter, e.g., printed matter.”). While historically “printed matter” referred to claim elements that literally encompassed “printed” material, the doctrine has evolved over time to guard against attempts to monopolize the conveyance of information using any medium. See Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018); In re Distefano, 808 F.3d 845, 849 (Fed. Cir. 2015). Today, printed matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is “functionally related” to its “substrate,” which encompasses the structural elements of the claimed invention. Praxair, 890 F.3d at 1032; Di[s]tefano, 808 F.3d at 848–49. In evaluating the existence of a functional relationship, we have considered whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process. C R Bard Inc. v. Angiodynamics, Inc., 14 (Fed Cir, 2019-1756, 2019-1934, Nov. 10, 2020); see also id. at 16 (“the mere marking of products, such as Appeal 2019-005004 Application 15/966,307 3 meat and wooden boards, with information concerning the product, does not create a functional relationship between the printed information and the substrate.”). In the present appeal, claim 1 recites a display within an electrified vehicle (e.g., a display on a dashboard of an electric car). Appeal Br. 16. Claim 1 further recites presenting two symbols on the display (a vehicle symbol and a charge-port symbol), as well as the symbols’ relative positions, to “indicate” information—specifically, to indicate a position of a charge port on the electric vehicle. Id. The only patentable functionality recited in claim 1, then, is that a display in an electric vehicle presents information. Beyond that, the aesthetic design or visual shape of the display’s symbols merely provide communicative content of subjective meaning that does not further patentably distinguish the claim.2 The dashboard display of Matsuura’s Figure 7 depicts a dashboard display screen that provides notification information. The display screen entails patentable functionality. However, no patentable distinction exists between Matsuura providing the visual notification in the form of the text “THE FILLER OPENING IS ON THE LEFT SIDE,” versus providing the notification in symbolic form, such as an arrow symbol adjacent to an automobile symbol. Those visual alternatives are merely non-patentable distinctions relating to the communicative content of the notification. Furthermore, the meaning of two symbols—an arrow adjacent to an automobile—is purely subjective. The symbols only have the meaning that is agreed upon in a given context. For example, an arrow may be used to 2 The existence of a visual display implies the further existence of visual information on the display. That is the entire purpose of a display. Appeal 2019-005004 Application 15/966,307 4 denote the position of any kind of energy-receiving means—a fuel-fill opening for a gasoline-powered automobile, an electric charge port for an electric vehicle, or a plutonium chamber for powering a DeLorean’s flux capacitor. Accordingly, when the scope of Appellant’s claim 1 is interpreted in light of the printed-matter doctrine, the cited prior art renders claim 1 unpatentable. Skaff discloses that electric vehicles were known and that these electric vehicles employed charge plugs to charge the electric vehicles’ batteries. See, e.g., Skaff, Fig. 1. Skaff also teaches that it was known to provide desired information to the vehicle driver on a vehicle information display screen 64. Id. at Figs. 2–5. The fact the Skaff presents any kind of information on the display screen of an electric vehicle is sufficient for Skaff to anticipate claim 1. The type and meaning of the information displayed does not patentably distinguish over Skaff’s disclosure. Nonetheless, even assuming solely for the sake of argument that the subjective meaning of the information must be given patentable weight, the combination of Skaff and Matsuura still would render claim 1 as unpatentable. Matsuura discloses a display within a vehicle that presents visual information to the vehicle driver. E.g., Matsuura, Fig. 7. For example, the display presents information in textual format and in symbolic format. Id. In the case of the symbolic format, a vehicle symbol is presented on the display, and a second symbol is positioned relative to the vehicle symbol to indicate a position of an energy-receiving means. Id. Matsuura does not disclose that the vehicle may be an electric vehicle, as opposed to a gasoline-powered vehicle. As such, Matsuura does not Appeal 2019-005004 Application 15/966,307 5 disclose that the symbol for the energy-receiving-means indicates a position of an electric charge port, as opposed to a fuel-fill line. It would have been obvious to one of ordinary skill in the art at the time of the invention to present information on the display screen of an electric car, the presented information notifying drivers where the vehicle’s energy-receiving means is located, as taught by Matsuura. One would have been motivated to provide this information about the car so that drivers of electric vehicles, as well as gasoline-powered vehicles, would know which side of an energy-receiving station to drive up to. Such a modification would have entailed using a known technique to improve similar devices in the same way. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Known work in one field of endeavour may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Id. at 421. Appellant argues that the Examiner’s rejection is improper because “although the rejection of the claim is presented as obvious over Skaff in view of Matsuura, the rejection is actually relying on Matsuura as the base reference and alleging that the skilled person would [have] ‘substitute[d] the fuel filler location of Matsuura’s display using the plug disclosed in Skaff.” Appeal Br. 4. This argument is unpersuasive for two reasons. First, Matsuura’s symbolic arrow (or written text) can be employed in an electric car, according to Skaff. Claim 1 does not require that the symbol be aesthetically designed in the shape of a charge plug, as opposed to an arrow. Second, our reviewing court has held, “where the relevant factual inquiries underlying an obviousness determination are otherwise clear, Appeal 2019-005004 Application 15/966,307 6 characterization by the examiner of prior art as ‘primary’ and ‘secondary’ is merely a matter of presentation with no legal significance.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). For these reasons, claim 1 is either anticipated by Skaff alone, or it is at least rendered obvious by Skaff in combination with Matsuura. I, therefore, would affirm the obviousness rejection of claim 1. See In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting that obviousness rejections can be based on references that happen to anticipate the claimed subject matter). Each of claims 2–20, likewise, only recite additional details of how information about the car is to be presented on the electric vehicle’s display. I see nothing in any of these claims that adds any further functional relationship between the printed matter and the claimed substrate—the display. Accordingly, I would affirm the obviousness rejection of those claims for the same reasons set forth in relation to claim 1.