Geotab Inc.

Patent Trials and Appeals Board

Oct 30, 2020

2020001106 (P.T.A.B. Oct. 30, 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.
15/530,400 01/11/2017 Neil Charles Cawse G0885.70014US00 1520
23628 7590 10/30/2020
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
TRIVEDI, ATUL
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
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 NEIL CHARLES CAWSE
Appeal 2020-001106
Application 15/530,400
Technology Center 3600
Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, 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 1–19. Appeal Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b). A telephonic hearing was held on
October 8, 2020, a transcript of which was entered October 26, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Geotab,
Inc. Appeal Br. 2.

Appeal 2020-001106
Application 15/530,400

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CLAIMED SUBJECT MATTER
Of the claims on appeal, claims 1, 16, and 17 are independent.
Claim 1 is directed to “an apparatus for determining a VIN based
accelerometer threshold for a vehicular telemetry system.” Appeal Br. 14
(Claims App.). Claim 16 is directed to a similar apparatus, while claim 17 is
directed to a “method for establishing a VIN based accelerometer threshold.”
Id. at 16–17. Claim 1 is reproduced below.
1. An apparatus for determining a VIN based accelerometer
threshold for a vehicular telemetry system comprising:
said apparatus receiving a VIN,
said apparatus decoding said VIN,
said apparatus determining one of a generic vehicle
accelerometer threshold or a specific vehicle accelerometer
threshold based upon said device decoding said VIN,
setting said VIN based accelerometer threshold as said
one of a generic vehicle accelerometer threshold or said specific
vehicle accelerometer threshold and
said apparatus monitoring accelerometer data for
comparing said accelerometer data with said VIN based
accelerometer threshold to provide event indications.

Id. at 14 (emphases added).
EXAMINER REJECTIONS
Claims 1–5 and 8–19 are rejected under 35 U.S.C. § 102 as
anticipated by Nielsen.2 Claims 6 and 7 are rejected under § 103 as
unpatentable over Nielsen and Hodis.3

2 U.S. Patent App. Pub. No. 2011/0093162 A1, published Apr. 21, 2011
(“Nielsen”).
3 U.S. Patent App. Pub. No. 2012/0129544 A1, published May 24, 2012
(“Hodis”).
Appeal 2020-001106
Application 15/530,400

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ANALYSIS
A. Anticipation (Claims 1–5 and 8–19)
The Examiner rejected all but two of the pending claims as anticipated
by Nielsen under 35 U.S.C. § 102(b).4 Final Act. 3–6. Appellant does not
dispute that Nielsen discloses the detection of vehicular events based on
accelerometer readings that exceed a predefined threshold. Appeal Br. 7–8.
Rather, with respect to each of the independent claims, Appellant argues that
Nielsen lacks the limitations relating to “decoding said VIN” and
determining the accelerometer threshold “based upon said device decoding
said VIN.”
As for “decoding” a VIN, the Examiner points to Nielsen’s purported
teaching of a “component string” in which a “VIN” or “Vehicle
Identification Number” is included as part of a “Rel–Cmpnts String.” Final
Act. 2–3 (citing Nielsen ¶¶ 172, 178); see also id. at 5 (citing Nielsen ¶ 172
for the limitation “based upon a decoded VIN” in independent claims 16 and
17). “From these identification steps,” the Examiner explains, “a person of
skill in the art might infer that Nielsen teaches decoding a VIN.” Ans. 4
(emphasis added); see also Final Action 2 (“a person having ordinary skill in
the relevant art might determine a step of decoding a VIN”).
The Examiner’s reasoning falls short. What a skilled artisan “might
infer” from Nielsen is not the proper inquiry. Rather, to make out a prima
facie case of anticipation based on drawing an inference from Nielsen, the
Examiner must provide some factual basis or reasoning for why the disputed

4 Although the final rejection erroneously cites § 102(g) as the ground of
rejection, both Appellant and the Examiner appropriately recognized that
Nielsen is prior art under § 102(b). See Appeal Br. 7; Ans. 3.
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Application 15/530,400

4
limitation necessarily flows from Nielsen’s teachings. Nowhere do we
discern that the Examiner undertakes to make such a finding. See Final Act.
2; Ans. 3–4. Nor do we discern that the record even remotely supports such
a finding.
Rather than describe any decoding of the VIN, Nielson simply
describes the use of a VIN in its typical sense—as a “unique” identifier
included within a data stream for purposes of referencing a particular
vehicle. See, e.g., Nielsen ¶¶ 137–138, 141–142, 172, 231. Indeed, Nielsen
states expressly that “a vehicle identification number typically is included in
the noted input stream so that respective vehicles of the fleet may be
identified.” Id. ¶ 231. Although the Examiner acknowledges that Nielsen
uses the VIN simply as an identifier within a data stream, the Examiner fails
to explain how that simple disclosure amounts to “decoding” the VIN. See
Final Act. 2. Without more, the Examiner’s conclusion as to what a skilled
artisan “might infer” from Nielsen’s use of the VIN is nothing more than
unsupported speculation. As such, we cannot sustain the Examiner’s
rejection of independent claims 1, 16, and 17, each of which includes the
disputed “decoding” limitations. Given that claims 2–15 depend from
claim 1, we likewise do not sustain their rejection. The same is true of
dependent claims 18 and 19, which stem from independent claims 16 and
17, respectively.
B. Obviousness (Dependent Claims 6 and 7)
The Examiner rejected claims 6 and 7, which depend directly or
indirectly from claim 1, as unpatentable over Nielsen and Hodis. Final Act.
6–7. In doing so, the Examiner does not rely on Hodis to remedy Nielsen’s
failure to teach the “decoding” limitation of claim 1. Thus, for the same
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Application 15/530,400

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reason discussed above with respect to claim 1, we reverse the Examiner’s
rejection of dependent claims 6 and 7.
CONCLUSION
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–5, 8–19 102(b) Nielsen 1–5, 8–19
6, 7 103 Nielsen,
Hodis
6, 7
Overall Outcome 1–19

REVERSED