Ex Parte Kleve et al

Patent Trial and Appeal Board

Jan 25, 2017

12727462 (P.T.A.B. Jan. 25, 2017)

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.
12/727,462 03/19/2010 Robert Bruce Kleve 81197147 3325
28395 7590 01/27/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER MUMMALANENI, MRUNALINI YERNENI
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
2699
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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 ROBERT BRUCE KLEVE and JOHN ROBERT
VAN WIEMEERSCH
Appeal 2016-004875
Application 12/727,462
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1,4, 7, 10, 13, 14, 18 and 19. Appellants have canceled
claims 2, 3, 5, 6, 8, 9, 11, 12, 15—17, and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2016-004875
Application 12/727,462
A. INVENTION
According to Appellants, the invention relates to “wireless vehicle
tracking.” (Spec. 11.)
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A computer-implemented method comprising:
selecting a vehicle for tracking using a mobile device;
defining a geo-fence using the mobile device;
transmitting a tracking request to the vehicle, including the geo­
fence;
receiving a message at the mobile device, from the vehicle,
indicating the vehicle has traveled outside the geo-fence; and
displaying an alert on the mobile device, responsive to the
message.
C. REJECTIONS
Claims 1,7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Humphries et al. (US
2005/0159883 Al, pub. July 21, 2005) and Jones (US 2003/0093218 Al,
pub. May 15, 2003). Final Act. 4—8.
Claims 4 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Humphries, Jones and Flick (US
2007/0015548 Al, pub. Jan. 18, 2007). Final Act. 9-10.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Humphries, Jones, and Havinis et al. (US
6,104,931, iss. Aug. 15,2000). Final Act. 10-11.
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Application 12/727,462
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Humphries, Jones, Havinis, and Flick. Final Act. 11—12.
II. ISSUES
The principal issue before us is whether the Examiner erred in
concluding that one of ordinary skill in the art at the time the invention was
made would have found it obvious to modify Humphries’ system with
Jones’s mobile device.
III. ANALYSIS
Appellants merely contend “Humphries expressly criticizes the
system of Jones.” (App. Br. 6).
In particular, Appellants contend:
In Jones, the vehicle merely transmits coordinate data to a central
server, which then does all the determination and message
generation [0045]; [0058] . . . Humphries, on the other hand,
expressly states that "the system (referring to the system of
Humphries, whereby the tracking and message generation is
done at the vehicle) allows for drastic reduction in the amount of
data traffic required within a system, since the tracked device
performs much of the necessary processing."
(App. Br. 6—7).
According to Appellants:
Humphries is literally and expressly stating that when a fleet of
tracked devices are employed within a network (the exact
scenario Jones was designed to address), the proper way to
design the system is to have the tracked device perform the
processing, which is literally the opposite of what is happening
in Jones. Upon reading Humphries, a skilled artisan would
naturally conclude that it directly discourages the system as
taught by Jones, and therefore would have no reason to combine
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Application 12/727,462
the teachings of Jones with Humphries, as Jones' system
represents a system that Humphries characterizes as inferior.
(App. Br. 7).
Appellants contend:
It is precisely because the processing is done at the tracked
device instead of at the data center that Humphries "solves" the
problems with the existing systems (e.g., Jones).
(Id.).
Accordingly, given that Humphries expressly teaches that
Jones’[] system is the wrong way to do things, combination of
these two references is improper.
(App. Br. 8).
We have considered all of Appellants’ arguments and evidence
presented. However, we disagree with Appellants’ contentions regarding the
Examiner’s rejections of the claims. We agree with the Examiner’s findings,
and are unpersuaded of error with the Examiner’s conclusion that the
claimed subject matter would have been obvious over the combined
teachings.
We note Appellants’ contention appear to be based on the premise of
bodily incorporating the entire system of Jones into the entire system of
Humphries. However, Appellants are reviewing the combination from a
different perspective than that of the Examiner. Here, the Examiner finds
Humphries teaches all the limitations of the independent claims 1, 7, and 13
except the use of a mobile device for which the Examiner relies on Jones.
(Ans. 4). That is, the question here is whether one of ordinary skill in the art
would have found it obvious to use a mobile device as taught by Jones in the
system of Humphries.
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Application 12/727,462
We agree with the Examiner’s finding:
Given the teachings of Humphries that the client device can be a
computer workstation (Humphries, 1 [0029]) with a wireless link
to the data center (Humphries, 1 [0026]), it would have been
obvious to one skilled in the art at the time of invention to use
the mobile device of Jones as the client device of Humphries and
have alerts and text messages displayed at the mobile device so
that the user receiving the alerts can receive time-critical
information like the alerts without delay while the user is located
anywhere rather than requiring the user to stay at a fixed location
like the workstation at the data center.
(Ans. 5).
We are not persuaded by Appellants’ arguments that “Humphries
expressly criticizes the system of Jones.” (App. Br. 6). Appellants appear to
be arguing that Humphries teaches away from Jones. (Id.). However,
Appellants admit Humphries addresses and “solves” the problems with the
“existing systems” and Appellants also admit Jones teaches an existing
system. (App. Br. 6—8). That is, Appellants admit Humphries solves the
problem in Jones.
Although Appellants contend “Jones’[] system represents a system
that Humphries characterizes as inferior” (App. Br. 7), “[a] known or
obvious composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.” In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That is, a teaching of
something different is not a teaching away. See Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). Moreover, a reference
does not teach away if it merely expresses a general preference for an
alternative invention from amongst options available to the ordinarily skilled
artisan, and the reference does not discredit or discourage investigation into
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the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
When combining references to establish obviousness, the appropriate
consideration is whether the proposed combination would work for its
intended purpose, not whether the combination is inconsistent with the stated
goal of one of the references, as Appellants argue (App. Br. 6—8). See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed.
Cir. 2009).
Here, the obviousness rejection of the independent claims is based on
Humphries in view of Jones. (Ans. 2). Appellants concede Humphries
addresses and “solves” the problems with the “existing systems” and
Appellants also concede that Jones teaches an existing system. (App.
Br. 6—8). We are unconvinced that Jones’s teaching an alternative or
something different discourages its use as a reference teaching a mobile
device receiving and displaying a message. Instead, we agree with the
Examiner that someone of ordinary skill in the art would recognize that
improving Humphries’ method by using a mobile device is consistent with
reducing delay by displaying an alert on the user’s cell phone instead of his
fixed work station. (Ans. 5). As the Examiner points out, Humphries and
Jones are in the same field of remote vehicle location tracking and
monitoring. (Id.).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Here, we are unconvinced that Humphries discredits or
criticizes use of a mobile device.
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The Supreme Court has clearly stated the “combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). That is, when considering obviousness of a
combination of known elements, the operative question is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” {Id. at 417). The skilled artisan is “a person
of ordinary creativity, not an automaton.” (Id. at 421).
Appellants have presented no evidence that incorporating Jones’
mobile device into Humphries method would have been “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 IJ.S. at 418). We agree with the Examiner’s findings that
“it would have been obvious to one skilled in the art at the time of invention
to use the mobile device of Jones as the client device of Humphries and have
alerts and text messages displayed at the mobile device so that the user
receiving the alerts can receive time-critical information like the alerts
without delay while the user is located anywhere rather than requiring the
user to stay at a fixed location like the workstation at the data center.”
(Ans. 5). We agree with the Examiner that Humphries and Jones are both
“in the field of remote vehicle location tracking and monitoring” and that
“using a mobile device of Jones as a client device of Humphries would not
have altered the processing of Humphries in any way and this combination
would have been obvious to one skilled in the art at the time of the
invention.” (Id.).
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We also note that although Appellants argue the “mobile device” in
connection with the “transmitting” step in claim 1 (App. Br. 7), claim 1
merely recites “transmitting a tracking request to the vehicle.” That is, this
“transmitting” step does not recite using a mobile device, and thus,
Appellants’ contention is not commensurate with the claim language.
On this record, we find no error with the Examiner’s finding the
combination of Humphries and Jones teaches or suggests the contested
limitations recited in independent claim 1, and independent claims 7 and 13
falling therewith. Appellants do not provide substantive arguments for the
dependent claims 4, 10, 14, 18 and 19 depending therefrom. Accordingly,
we also affirm the rejections of these claims.
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1, 4, 7, 10, 13, 14, 18
and 19 under 35 U.S.C. § 103(a).
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
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