FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Jul 23, 2020

15641948 - (D) (P.T.A.B. Jul. 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.
15/641,948 07/05/2017 David Anthony Hatton 83822242 1991
28395 7590 07/23/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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 ANTHONY HATTON and ANTHONY GERALD KING
Appeal 2020-001074
Application 15/641,948
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
GEORGE R. HOSKINS, Administrative Patent Judges.
GREENHUT, 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 1–5. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
Appeal 2020-001074
Application 15/641,948
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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for a wireless
device application having vehicle interaction. Claim 1, reproduced below,
with emphasis added, is the sole independent claim before us:
1. A system comprising:
a mobile-device processor configured to:
connect to a vehicle computing system responsive to a
dashboard application launch;
retrieve user-controllable function information,
identifying vehicle functions remotely controllable from a mobile
device, from the vehicle computing system;
add controls for the vehicle functions to a user-HMI, or
enable controls already part of the user-HMI, responsive to
retrieving the vehicle functions; and
present the user HMI on the mobile device.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Kramer US 2011/0202862 A1 Aug. 18, 2011
REJECTION
Claims 1–5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kramer. Final Act. 2.
OPINION
Regarding the challenged limitation of claim 1 emphasized above the
Examiner, in the Final Action, provides
[Kramer] retrieve[s] user-controllable function information (see
Kramer et al., para. [0070]: “The audio messages or signals may
be controlled via the radio controls to control the volume or tone
or the like of the audio signal”), identifying vehicle functions
remotely controllable from a mobile device (i.e., controlling
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entry or starting a vehicle - see Kramer et al., para. [0169], or
adjusting a volume, see Kramer et al., para. [0070]), from the
vehicle computing system (see Kramer et al., Fig. 4 ref. 124
“TOUCH SECREEN” for remotely control a docking cellphone
on a vehicle at ref. 114);
Final Act. 3 (emphasis omitted).
[Kramer] retrieve[s] user-controllable function information (see
Kramer et al., para. [0070], [0169], and FIG. 4 ref. 124; e.g.,
displaying information after retrieving: this is obvious),
identifying vehicle functions remotely controllable from a
mobile device, from the vehicle computing system (e.g., using
Bluetooth to obtaining functional information from a memory
stick --- see Kramer, para. [0142]): using Bluetooth to selecting
a song, or an artist or a volume etc. - see Kramer. Para. [0038],
or para. [0051]);
Ans. 4.
Like Appellant, we have difficulty understanding precisely what
aspects of Kramer the Examiner is relying on to meet the challenged
limitation of the claim. In the course of making its administrative
determinations, the PTO must create a record that includes “specific fact
findings for each contested limitation and satisfactory explanations for such
findings.” Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997). Here,
we have paragraph numbers from the Examiner but from those paragraphs it
is not apparent precisely what elements or acts disclosed in Kramer the
Examiner is placing reliance on.
From the Examiner’s Final Office Action, it seems the Examiner is
relying on the processor associated with Kramer’s mirror assembly as the
recited “mobile-device processor.” Final Act. 2–3. In order to satisfy the
claim language, Kramer’s mirror device processor must then be configured
to “retrieve user-controllable function information, identifying vehicle
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functions remotely controllable from a mobile device, from the vehicle
computing system.” One way for a processor to be “configured to” perform
a particular act is for that processor to be associated with software
programmed to perform that act. See, e.g., Typhoon Touch Techs., Inc. v.
Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011). As best we can tell, it
seems that, in the Answer, the Examiner relies on the act of using
BLUETOOTH® to enable artist or song selection on a digital playback
device such as a phone or audio player 15 within a docking station 14, from
Kramer’s mirror assembly 12. Ans. 4; Kramer para. 38. According to
Kramer, the output of that mobile device may be directed back to the
vehicles audio system. Kramer para. 38 (“The mirror assembly 12 and
receiver 22 may receive a communication from the docking station 14, and
may communicate a signal to the radio 16 for playback of the selection on
the playback device through the vehicle audio system.”). The Examiner’s
citation to paragraph 169 (Final Act. 3; Ans. 4), as best we can discern,
seems to be for the purpose of implying that other vehicular functions, such
as starting and door lock toggling, could be controlled from the mirror as
well.
Again, all this is somewhat speculative because the Examiner does not
identify with precision the subject matter relied on for the particular
language recited in claim 1. Even if we have the Examiner’s position
correct, the Examiner does not address, and does not appear to appreciate,
the distinction drawn by Appellant that the simple existence of vehicle
functions remotely controllable from a mobile device, be it mirror 12 or
hand-held device 15, does not, without more, necessarily amount to
“retrieving . . . information, identifying [those] vehicle functions . . . , from
the vehicle computing system.” No step, or software or other structure for,
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performing this function is apparent within the express portions of the
disclosure relied upon by the Examiner and the Examiner does not articulate
any reasoning tending to support a theory of implication, inherency, or
obviousness concerning this subject matter. See MPEP § 2112 (Although
“[t]he express, implicit, and inherent disclosures of a prior art reference may
be relied upon in the rejection of claims under 35 U.S.C. 102 or 103 . . . the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support [such] determination[s].”); see also MPEP § 2142
(“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We do not agree with the Examiner that the Appellant’s citation to
specific embodiments in Appellant’s Specification is an effort to try to
import such limitation into the claims. Ans. 6. Rather, we understand the
examples to have been provided (Appeal Br. 4–5) in an effort to assist the
Examiner in understanding the nature and scope of the subject matter falling
within the disputed limitation. “‘[R]eading a claim in the light of the
specification,’ to thereby interpret limitations explicitly recited in the claim,
is a quite different thing from ‘reading limitations of the specification into a
claim,’ to thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the claim.” In re Prater,
415 F.2d 1393, 1404–05 (CCPA 1969). The Examiner does not indicate any
disagreement, or reasons for disagreement, with the actual claim
construction urged by Appellant and applied hereinabove.
“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless,’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
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the factual basis for its rejection of an application under sections 102 and
103.” In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial
and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94
USPQ2d 1072, 1075–1077 (BPAI 2010) (precedential). For that review to
be meaningful it must be based on some concrete evidence in the record to
support the Examiner’s factual findings and legal conclusions. In re Zurko,
258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132, such as by identifying where or how each limitation of
the rejected claims is met by the prior art references. In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be designated as
nearly as practicable. The pertinence of each reference, if not apparent, must
be clearly explained and each rejected claim specified.”). It is neither our
place, nor Appellant’s burden, to speculate as to the basis for rejecting
claims. In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the
PTO’s obligation to provide timely notice to the applicant of all matters of
fact and law asserted.)
For the foregoing reasons, on the record presently before us, we do
not sustain the Examiner’s rejection.
CONCLUSION
The Examiner’s rejection is REVERSED.

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Application 15/641,948
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5 103(a) Kramer 1–5

REVERSED