Ex Parte Economos et al

Patent Trial and Appeal Board

Nov 29, 2012

11126596 (P.T.A.B. Nov. 29, 2012)

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.
11/126,596 05/11/2005 George A. Economos GP-306294-OST-ALS 4311
74829 7590 11/30/2012
Julia Church Dierker
Dierker & Associates, P.C.
3331 W. Big Beaver Road
Suite 109
Troy, MI 48084-2813
EXAMINER
CAI, WAYNE HUU
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
11/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE A. ECONOMOS, MICHAEL G. ZAMBO,
CHRISTOPHER L. OESTERLING, and STEVEN J. ROSS
____________

Appeal 2010-006812
Application 11/126,5961
Technology Center 2600
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY L. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 11, 2005. The real party in interest is General
Motors Company
Appeal 2010-006812
Application 11/126,596

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19, which are all of the remaining claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The present disclosure relates generally to customizing vehicle
services. (Spec. 1, ¶ [0001].)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method of customizing vehicle services, the method
comprising:
receiving at least one telecommunication profile parameter at a
telematics unit;
generating, at the telematics unit, a telematics unit user profile
based on the personalization data parameter;
indexing the received telecommunication profile parameters to
a user identification;
storing the indexed telematics unit user profile;
receiving at the telematics unit, a user identification
signal corresponding to the indexed telematics unit user profile;
and

customizing at least one vehicle service based on the
telecommunication profile parameters corresponding to the user
identification signal.

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (Reply Br.)
filed Apr. 1, 2010; and Appeal Brief (“App. Br.”) filed Jul. 15, 2009. We
also refer to the Examiner’s Answer (“Ans.”) mailed Feb. 1, 2010.
Appeal 2010-006812
Application 11/126,596

3
Rejections on Appeal
1. The Examiner rejects claims 1, 7, 8, 14, 15, 18, and 19 under
35 U.S.C. § 102(b) as being anticipated by Fuchs (U.S. Pat. Pub. No.:
2003/0139179 A1, published Jul. 24, 2003).
2. The Examiner rejects claims 2-6, 9-13, 16, and 17 under
35 U.S.C. § 103(a) as being unpatentable over Fuchs and Walby (U.S. Pat.
Pub. No.: 2004/0198466 A1, published Oct. 7, 2004).
Grouping of Claims
Based on Appellants’ arguments in the Briefs, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Under § 102, did the Examiner err in finding that Fuchs discloses or
describes: (1) “generating, at the telematics unit, a telematics unit profile
based on the at least one personalization data parameter” (emphasis added);
and (2) “storing the indexed telematics unit user profile” within the meaning
of independent claim 1 and commensurate language of claims 8 and 15?

ANALYSIS
The § 102 Rejection of Claim 1 - Generating,
at the Telematics Unit
Appellants contend, inter alia,
In sharp contrast to Appellants' claims 1, 8, and 15, Fuchs
further discloses that a user can create a user profile using the
remote device or any other electronic device (e.g., a personal
computer) that can access the communications system.
Appeal 2010-006812
Application 11/126,596

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Appellants submit that using a remote device to create the user
profile is not the same as using the telematics device. The user
profile of Fuchs can be used to personalize or preset the
telematics device, at least one vehicle system, or a service
providing entity via the telematics device (see paragraph [0037]
of Fuchs).
(App. Br. 10-11.) Appellants essentially argue that the term “generating”
should be interpreted as “creating,” and according to claim 1, the user profile
is “created” at the telematics device. (Id.; Reply Br. 8-9.) We disagree.
Fuchs discloses creating a user profile using a remote device. The
user profile is used to personalize or preset a telematics device. (Fuchs, ¶
[0037].) The Examiner determined that the term “generating” is interpreted
as directly receiving the user profile. (Ans. 10-11.) We agree with and
adopt the Examiner’s findings. (Ans. 4, 10-11.)
Appellant’s Specification (Spec. ¶ [0050]-[0053]) does not provide an
explicit definition of “generating” and does not indicate that “generating”
should necessarily be interpreted as “creating” as urged by Appellants.
Therefore, we agree with the Examiner’s broad but reasonable interpretation
in light of Appellants’ Specification.3 As discussed above, the Examiner has
shown that Fuchs would have disclosed that the telematics device directly
receives the user profile, from the remote device.
Based on the Personalization Parameter
Appellants also contend that Fuchs fails to disclose or describe
“generating . . . a telematics unit user profile based on the personalization
data parameter.” (App. Br. 12.) We disagree.

3 See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000))
Appeal 2010-006812
Application 11/126,596

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The Examiner interpreted the “telematics user profile” as the user
profile that is created and stored in the memory of the telematics unit. (Ans.
10.) According to the Examiner, Fuchs discloses that the user profile
contains a personal parameter or information related to the user. (Id.)
Therefore, according the Examiner, the user profile is based on (includes)
the personal parameter or information related to the user (personalization
data parameter). (See Fuchs ¶ [0037].) We agree with and adopt the
Examiner’s findings. (Ans. 4, 10.)
Based on this record, we conclude that the Examiner did not err in
finding that Fuchs discloses or describes generating, at the telematics unit, a
telematics unit user profile based on the personalization data parameter.
Storing the Indexed Telematics Unit User Profile
Appellants contend:
Appellants submit that the Examiner is confusing registering
the remote device with storing the user profile in the telematics
device. As stated in paragraph [0037] of Fuchs, registering the
remote device allows the remote device to gain access to the
telematics device. When such access is established, the already-
generated user profile may be stored in the remote device and
"pushed" to the telematics device, or the already-generated user
profile may be stored in the telematics device and "pulled" to
the remote device. Thus, registering the remote device is clearly
not the same as storing a user profile, or as generating a user
profile.
(App. Br. 13.)

We agree with and adopt the Examiner’s findings with respect to the
limitation at issue. (Ans. 4.) Specifically, the Examiner determined that the
user profile is stored either at the remote device or at the telematics device.
(Id; Fuchs, ¶ [0037].)
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We agree with the Examiner. Claim 1 does not specify where the user
profile is stored. As admitted by Appellants, Fuchs discloses that the user
profile is stored either at the remote device or at the telematics device.
(App. Br. 13.)
Based on this record, we conclude that the Examiner did not err in
finding that Fuchs discloses or describes “storing the indexed telematics unit
user profile.”
Based on the above discussion (supra), we conclude that the
Examiner did not err in rejecting representative claim 1. Accordingly, we
affirm the rejection of representative claim 1, as well as independent claims
8 and 15, which include limitations of commensurate scope, and dependent
claims 7, 14, 18, and 19, not separately argued with particularity. (See App.
Br. 10-13.)
Obviousness Rejection
As noted above, the Examiner rejects claims 2-6, 9-13, 16, and 17 as
unpatentable under 35 U.S.C. § 103. We observe that in the principal Brief,
Appellants did not argue for the patentability of the present claims with
particularity. (App. Br. 14.) We further note that Appellants presented
additional arguments regarding the aforementioned claims for the first time,
in the Reply Brief. (Reply Br. 9-10.) We deem the newly presented
arguments to be waived.
The Reply Brief is properly used to respond to points of argument
raised by the Examiner in the Answer and not as a means for presenting new
arguments. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(“informative”) (absent a showing of good cause, the Board is not required
to address arguments in the Reply Brief that could have been presented in
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Application 11/126,596

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the principal Brief). While we have fully considered Appellants’ responses
in the Reply Brief, we decline to address any new arguments not originally
presented in the principal Brief. With respect to all claims before us on
appeal, arguments which Appellants could have made but chose not to make
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Based on this record, we conclude that the Examiner did not err in
rejecting claims 2-6, 9-13, 16, and 17. Accordingly, we affirm the
Examiner’s § 103 rejection of claims 2-6, 9-13, 16, and 17 for the same
reasons discussed supra.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 7, 8, 14, 15, 18, and 19 under 35 U.S.C. § 102(b).
Appellants have not shown that the Examiner erred in rejecting claims
2-6, 9-13, 16, and 17 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1, 7, 8, 14, 15, 18, and
19 under 35 U.S.C. § 102(b).
We affirm the Examiner’s rejection of claims 2-6, 9-13, 16, and 17
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)(1)(iv).

AFFIRMED
Vsh