Ex Parte Frisch et al

Patent Trial and Appeal Board

Jan 27, 2017

13318421 (P.T.A.B. Jan. 27, 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.
13/318,421 12/12/2011 Thomas Frisch 095309.63911US 3389
23911 7590
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
FANTU, YALKEW
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS FRISCH, MICHAEL KOEHLER,
HOLGER LOCHNER, CHRISTOPH SAALFELD, and
TIM SCHLUESENER
Appeal 2016-001434
Application 13/318,421
Technology Center 2800
Before LINDA M. GAUDETTE, JEFFREY R. SNAY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 11—21. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Daimler AG.
Appeal Br. 3.
Appeal 2016-001434
Application 13/318,421
STATEMENT OF THE CASE
Appellants describe the invention as relating as a method for data
communications between a service provider and a vehicle having an electric
drive. Spec. 11. Claim 11, reproduced below with emphasis added to
certain key recitations, is illustrative of the claimed subject matter:
11. A method for data communication between a service
provider and a vehicle having an electric drive, the method
comprising:
establishing a communication connection between the
vehicle and the service provider via a first wireless connection;
connecting the vehicle having the electric drive to a
charging station via a charging connection for charging an
accumulator provided in the vehicle;
establishing a further communication connection between
the vehicle and the service provider via the charging station; and
performing a data exchange with an application server
located at the service provider, wherein the data exchange is
amalgamated and coordinated via the first wireless
connection and via the communication connection over the
charging station.
Appeal Br.2 13 (Claims App’x).
REFERENCES AND REJECTION
On appeal, the Examiner maintains the rejection of claims 11—21
under 35 U.S.C. § 103 as unpatentable over Mori et al., US 6,794,849 B2,
2 In this decision, we refer to the Final Office Action mailed September 25,
2014 (“Final Act.”), the Appeal Brief filed March 13, 2015 (“Appeal Br.”),
the Examiner’s Answer mailed September 17, 2015 (“Ans.”), and the Reply
Brief filed November 12, 2015 (“Reply Br.”).
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Appeal 2016-001434
Application 13/318,421
September 21, 2004 (hereinafter “Mori”), in view of Kelty et al., US
2009/0021385 Al, January 22, 2009 (hereinafter “Kelty”). Ans. 2.
ANALYSIS
We review the appealed rejection for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellants’
contentions, we are not persuaded that Appellants identified reversible error
for the reasons explained below.
Appellants focus on claim 11 and do not provide distinct arguments
for any other claims. Appeal Br. 11. Therefore, consistent with the
provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to
claim 11, and claims 12—21 stand or fall with that claim.
The Examiner finds that Mori teaches connecting a vehicle having an
electric drive to a charging station to charge its accumulator and establishing
communication between a vehicle and a service provider via a first wireless
connection. Final Act. 3^4; Ans. 5; see also e.g., Mori 2:38—51 (explaining
need for monitoring battery of electric vehicles). Appellants do not dispute
that Mori teaches this first wireless connection. Appeal Br. 6—7; see also
Mori Fig. 14.
The Examiner also finds that Kelty teaches “connection via a charging
connection.” Final Act. 4; Ans. 5; see also Kelty Fig. 2 (illustrating vehicle
management system communicating with Tesla server). We do not assess
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Application 13/318,421
this finding of fact de novo because Appellants do not challenge it. Ex parte
Frye, 94 USPQ2d at 1075 (“the Board need not review . . . uncontested
findings of fact made by the examiner underlying the rejection”).
The Examiner concludes that it would have been obvious to combine
teachings of Kelty with those of Mori so that both a wireless connection and
an alternate network would be available for communication. Final Act. 5;
Ans. 6. Appellants do not persuasively dispute the findings of fact that
underlie this conclusion. See, e.g., Appeal Br. 8 (stating that combination of
Mori and Kelty “would at best disclose the ability to use two different
communication connections”). These underlying findings adequately
support the Examiner’s obviousness conclusion.
Appellants argue that neither Mori nor Kelty disclose two connections
to a single entity “at [a]ny [gjiven [t]ime.” Appeal Br. 5—6; see also Reply
Br. 2 (“Kelty only discloses using a single connection for communication
between two entities at any given time . . . .”). Claim 11, however, does not
require that the first wireless connection and further communication
connection be used at the same time.
Appellants further emphasize claim 1 l’s recitation that a data
exchange occur that “is amalgamated and coordinated via the first wireless
connection and via the communication over the charging station.” Appeal
Br. 5—9. Appellants do not explain, however, why “amalgamated and
coordinated” should be construed so narrowly that simultaneous two path
communication would be required. Moreover, the Specification’s only
reference to these terms does not suggest such a narrow construction. Spec.
112 (referring to the data exchange being “amalgamated, coordinated”
without further elaboration). Thus, we agree with the Examiner that claim
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Application 13/318,421
11 ’s “amalgamated and coordinated” language only requires that the
communications be harmonized or matched; for example, information about
a car’s performance via one communication means will be combined with
information sent via the other communication means. Ans. 5. A person of
skill in the art would have understood that a second connection could be
used at a later time than the first connection and that data exchanged during
a second connection could be harmonized / amalgamated / coordinated with
data previously communicated from a first connection. In particular, the
Examiner finds that “data exchange between starting and destination point
has to be coordinated to make a meaningful communication” (Ans. 5), and
Appellants do not persuasively dispute this point.
Appellants also argue that there is insufficient motivation to combine
Mori and Kelty to arrive at the method of claim 11. A preponderance of the
evidence, however, supports the Examiner’s findings that a person of skill in
the art would have been motivated to combine the teachings of Mori and
Kelty to arrive at an electric vehicle that communicates both via a wireless
connection and via charging station so that “alternative communication”
would be available. Final Act 5. Mori, for example, teaches that a
maintenance service system having monitoring and communications is
valuable in avoiding battery abnormalities that could lead to vehicle
inoperability. See, e.g., Mori 2:38—51; 3:18—4:27; 5:36—64. Kelty similarly
indicates a need for such monitoring. See, e.g., Kelty | 6. In view of the
references’ teachings, a person of skill would have recognized the value in a
system that communicates both via a wireless connection (for use when, for
example, a vehicle is moving and a wired connection is not feasible) and via
a charging station (for use when, for example, a wireless connection is
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Application 13/318,421
unavailable, slower, or more expensive). Utilizing each communication path
is no more than a predictable use of a prior art element according to their
established function, and improving, for example, Mori by adding the
additional communication path of Kelty would improve Mori in the same
way it improves Kelty. KSR Int 7 v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Moreover, as explained above, such a two path communication would have
made use of data exchange that is “amalgamated and coordinated” in order
to achieve meaningful communication.
Appellants also argue that the Examiner erred by finding that Figure 2
of Mori establishes that Mori uses two connections in an amalgamated and
coordinated data exchange. Appeal Br. 6—7. We agree with Appellants with
respect to this point because the large dashed line rectangle of Figure 2 is
best understood as representing the boundaries of PC 2. Mori 10:23—31.
This error is harmless, however, because, as explained above, Appellants do
not dispute that Mori and Kelty collectively disclose the two communication
paths recited by claim 11 and do not persuasively dispute the Examiner’s
conclusion that it would have been obvious to use both of those paths.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
11-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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