Ex Parte Basir et al

Patent Trial and Appeal Board

Aug 31, 2017

12911000 (P.T.A.B. Aug. 31, 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.
12/911,000 10/25/2010 Otman A. Basir 60449-219PUS1 9297
26096 7590 09/05/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTMAN A. BASIR, WILLIAM BEN MINERS, HANI HAWARI
and JASON TOONSTRA
Appeal 2016-000899
Application 12/911,0001
Technology Center 3600
Before JENNIFER D. BAHR, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Otman A. Basir et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1 and 3—18.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Intelligent
Mechatronic Systems Incorporated. Appeal Br. 1 (filed Mar. 2, 2015).
2 Claim 2 has been canceled. Amendment filed May 13, 2014.
Appeal 2016-000899
Application 12/911,000
INVENTION
Appellants’ invention relates to a “system and method of
communicating information over a wireless network indicative of vehicle
operation to a remote location” and, more specifically, “to a method of
reducing usage of a wireless network during communication of information
indicative of vehicle operation to a remote location.” Spec. 12. Claims 1
and 14 are independent. Claim 1, reproduced below, is illustrative of the
claimed invention.
1. A method of gathering and transmitting vehicle
performance information comprising:
gathering information indicative of vehicle operation with
an appliance installed within the vehicle;
analyzing the gathered information indicative of vehicle
operation with the appliance to define a plurality of parameters
that characterize vehicle operation;
transforming the gathered information within each of the
defined plurality of parameters into a summary of values
indicative of vehicle operation with the appliance, wherein the
summary of values are defined by the appliance based on defined
vehicle operating trends detected in the information gathered
indicative of vehicle operation; and
transmitting only the summary of values with the
appliance over a wireless network to a remote processing center.
Appeal Br. 11 (Claims App.).
REJECTIONS
I. The Examiner rejected claims 1, 3, and 4 under 35 U.S.C.
§ 103(a) as unpatentable over Raz (US 2007/0001831 Al, pub.
Jan. 4, 2007) and Basir (US 2008/0294302 Al, pub. Nov. 27,
2008).
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II. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Raz, Basir, and Kruys (US 7,292,645 B2, iss.
Nov. 6, 2007).
III. The Examiner rejected claims 5 and 7—13 under 35 U.S.C.
§ 103(a) as unpatentable over Raz, Basir, and McClellan
(US 2008/0319602 Al, pub. Dec. 25, 2008).
IV. The Examiner rejected claims 14—17 under 35 U.S.C. § 103(a)
as unpatentable over Raz, Basir, and Berkobin
(US 2008/0255888 Al, pub. Oct. 16, 2008).
V. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Raz, Basir, Berkobin, and McClellan.
ANALYSIS
Rejections I—III (Obviousness of Claims 1, 3—13)
Appellants allege several deficiencies with the Examiner’s rejection of
claim 1 warrant a reversal. Appeal Br. 5—6. Based on these alleged
deficiencies with claim 1, Appellants further contend claims 3 and 4 are
patentable. Id. at 7. Regarding claims 5—13 in Rejections II and III,
Appellants likewise argue their patentability rests in the reasons asserted for
claim 1 and that the additional references (i.e., Kruys and McClellan) cited
by the Examiner do not correct the deficiencies with the Examiner’s
rejection of claim 1. Id. Therefore, in this context, we consider claim 1 to
be representative and claims 3—13 will stand or fall with the patentability of
claim 1.
The Examiner finds Raz discloses the structure and steps claim 1
recites, except “Raz does not explicitly disclose transmitting only the
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Application 12/911,000
summary of values with the appliance over a wireless network.” Final Act.
3^4. In view of Basir’s disclosure of “generating summaries and statistics
on the mobile unit 16 and transmitting this data to a server,” the Examiner
determines “[i]t would have been obvious to one of ordinary skill to modify
Raz to include . . . transmitting only the summary of data to a central server
for the purpose of reducing the analyses needed to be done on the server and
reduce the amount of data that is transmitted from the vehicle to the server.”
Id. at 4. Appellants argue this determination is incorrect because “such
reading is contrary to the purpose of Basir” and that a “fair reading” shows
Basir wants to eliminate using the vehicle unit to communicate the
information, as claim 1 requires. Appeal Br. 5—6. Appellants further add
that the Raz system and Basir system are at contrary purposes because Raz
teaches against transmission by a separate mobile phone and it relies on raw
data. Id. at 6.
Appellants’ rebuttal is not persuasive. We do not agree with
Appellants that a “fair reading” of Basir teaches away from using the vehicle
unit to communicate only the summary of data to a central server. Citing
paragraph 17 of Basir, the Examiner shows persuasively that using a
separate mobile phone, instead of the vehicle unit with its own cell
communication circuit, is merely an option Basir teaches. Ans. 2—3. While
we do not dispute Basir discloses a preference and benefit to taking
advantage of a user’s portable communication device, this does not
undermine its evidentiary value as support for the Examiner’s finding that a
skilled artisan also would recognize that the system within the vehicle itself
may include the same functionality. In re Mouttet, 686 F.3d 1322, 1331,
1334 (Fed. Cir. 2012). Appellants notably do not allege error with the
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Examiner’s reliance on Basir as disclosing it was known to have the
communication hardware within the vehicle itself to communicate the
summary information to a remote server, nor are we persuaded Basir would
support such an argument.
Appellants furthermore do not identify any specific teaching from
Basir that suggests a technical problem, or difficulty, is created by having
the communication hardware and functionality within the vehicle itself to
transmit the summary information. In short, Appellants have not shown
persuasively a skilled artisan would view Basir as criticizing, discrediting, or
otherwise discouraging the use of such a configuration. Therefore, we are
not persuaded Basir teaches away from using the vehicle unit to
communicate only the summary of data to a central server. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In addition, we do not find support for Appellants’ assertion that, “any
modification that destroys an intended mode of operation cannot be
supported by a proper rational[e] for that modification.” Appeal Br. 6. We
recognize Federal Circuit precedent establishes that combinations changing
the “basic principles under which the [prior art] was designed to operate,” In
re Ratti, 270 F.2d 810, 813 (1959), or that render the prior art “inoperable
for its intended purpose,” In re Gordon, 733 F.2d 900, 902 (Fed.Cir.1984),
may not support a conclusion of obviousness, but we are unaware of any
legal support for extending this principle to changes to a preferred mode of
operation. Nor have Appellants cited any supportive authority.
Moreover, we find In re Mouttet, instructive. In that case, the
combination supporting an obviousness determination involved eliminating
the optical components for electrical components used in the primary
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reference. In re Mouttet, 686F.3dat 1332. The Federal Circuit held that
such a change would not destroy its principle of operation because it only
changed how the reference accomplished its operability, rather than the
operations themselves. Id. at 1332. Similarly, here, regarding the transfer of
summary information to a remote server, Appellants have not shown Basir
teaches any meaningful difference between using the user’s communication
device or a vehicle’s communication device to transmit the information,
rather the same operations are performed with different means of
transmission.
Similarly, Appellants have not shown persuasively Raz’s “principle of
operation” would be changed by the transmission of summary information,
rather than raw data. In fact, Appellants fail to identify what the alleged
basic principle of operation is in Raz. Moreover, Appellants offer no
evidence regarding how transmitting only summary data to a remote server
would even impact the operation of Raz’s system to analyze and evaluate the
performance and behavior of a driver of a vehicle; let alone, change its
“basic principle of operation.” Accordingly, we do not find Appellants have
successfully rebutted the Examiner’s showing claim 1 would have been
obvious in view of Raz and Basir, which we find to be supported by a
preponderance of the evidence and a rational underpinning.
Therefore, for all of the foregoing reasons, we sustain the Examiner’s
rejection of claims 1 and 3—13.
Rejections IV-V (Obviousness of Claims 14 18)
Appellants allege the Examiner’s rejection of claim 14 is deficient
because “Basir teaches away from the features disclosed in both Raz and
Berkobin.” Appeal Br. 8—9. Appellants argue, similar to claim 1, that Basir
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teaches away because its “intended operation is to eliminate the need for a
separate cellular account for the vehicle and instead rely on a user’s already
existing cellular phone.” Id. at 8. Based on this alleged deficiency,
Appellants further contend claims 15—17 are patentable. Id. at 9. Regarding
Rejection V, Appellants likewise argue the patentability of claim 18 rests in
the reasons asserted for claim 14 and that the additional reference (i.e.,
McClellan) does not correct the deficiencies with the Examiner’s rejection
of claim 14. Id. In this context, we consider claim 14 to be representative
and claims 15—18 will stand or fall with the patentability of claim 14. As
result, because we remain unpersuaded by Appellants’ arguments for the
patentability of claim 14 for the same reasons discussed above for claim 1
(see supra Rejections I—III), we sustain the Examiner’s rejection of claims
14—18.
DECISION
The Examiner’s rejections of claims 1, 3—18 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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