Ex Parte Laghrari

Patent Trial and Appeal Board

Feb 17, 2016

11618222 (P.T.A.B. Feb. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111618,222 12/29/2006
60770 7590 02/17/2016
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
FIRST NAMED INVENTOR
Fahd Laghrari
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GP-307979-3-0ST-ALS 5466
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAILDATE DELIVERY MODE
02/17/2016 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 FAHD LAGHRARI
Appeal2013-006463
Application 11/618,222 1
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BA YAT, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is General Motors
LLC. Appeal Brief filed August 13, 2012, hereafter "App. Br.," 2.
Appeal2013-006463
Application 11/618,222
BACKGROlH-.JD
The invention relates to mobile communications systems for notifying
a user of a service given the location of the user and the service desired.
Specification, hereafter "Spec.," i-f 2. The invention uses integration with a
navigation system, so that a user may be informed of locations of various
service facilities capable of providing required service. Id. i-f 3.
Representative claim 1 is reproduced from page 14 of the Appeal
Brief (Claims App'x) as follows, with emphasis added to relevant claim
limitations:
1. A method of enrolling a subscriber into a vehicle notification
message system, comprising the steps of:
(a) receiving a request from a subscriber to enroll into a
vehicle notification message system;
(b) creating a customer account;
( c) accessing vehicle data using a telematics unit of the
vehicle based on the creation of the customer account;
( d) transmitting the vehicle data from the telematics unit
to a central data system;
( e) constructing an initial notification message for the
subscriber at the central data system that confirms the
subscriber's enrollment in the vehicle notification
message system, which includes at least some of the
vehicle data; and
(f) sending the notification message to the subscriber via
an electronic messaging system.
In a Final Rejection, the Examiner rejected claims 1 and 3-5 under 35
U.S.C. § 103(a) as obvious over Smith2 and Abrahm.3 Claims 2, 9, 10 and
2 US Publication 2004/0128067 Al, published July 1, 2004.
3 US Publication 2002/0082961 Al, published June 27, 2002.
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Application 11/618,222
12-14 were rejected under 35 U.S.C. § 103(a) as obvious over Smith,
Abrahm, and Mazzara.4 Claims 6 and 7 were rejected under 35 U.S.C. §
103(a) as obvious over Smith, Abrahm, and Treyz. 5 Claim 8 was rejected
under 35 U.S.C. § 103(a) as obvious over Smith, Abrahm, and Lightner.6
Claim 11 was rejected under 35 U.S.C. § 103(a) as obvious over Smith,
Mazzara, Abrahm, and Lightner. Claims 15-17 were rejected under 35
U.S.C. § 103(a) as obvious over Smith, Mazzara, and Stark.7 Claims 18-20
were rejected under 35 U.S.C. § 103(a) as obvious over Mazzara, Diaz,8
Treyz, and Stark. Final Action, hereafter "Final Act.," 2-33, mailed
February 15, 2012; see also Answer, hereafter "Ans." 3, mailed February 13,
2013.
DISCUSSION
Claims 1, 9, 15, and 18 are independent claims. The Appellant argues
the rejection of independent claim 1, with its dependent claims, claims 2-8,
generally standing or falling with it. The Appellant, however, presents
additional arguments for claim 7. The Appellant argues the rejection of
claim 9, with its dependent claims, claims 10-14, standing or falling with it.
The Appellant argues issues related to claim 15, with its dependent claims,
claims 16 and 17, standing or falling with it. Finally, the Appellant argues
issues related to claim 18, with its dependent claims, claims 19 and 20,
standing or falling with it. See, App. Br. 6-13. We will address the claims
in a similar manner.
4 US Publication 2003/0211854 Al, published November 13, 2003.
5 US Patent 6,526,335 Bl, issued February 25, 2003.
6 US Patent 7,174,243 Bl, issued February 6, 2007.
7 US Publication 2006/0094473 Al, published May 4, 2006.
8 US Publication 2002/0184062 Al, published December 5, 2002.
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Appeal2013-006463
Application 11/618,222
Claims 1--8
The Examiner finds that Smith teaches the ability to construct and
send a notification message to a subscriber, but it does not teach that the
message sent confirms enrollment. Final Act. 4--5 (citing Smith i-f 25). The
Examiner further finds, however, that Abrahm discloses a welcome email to
confirm enrollment that includes some relevant subscriber data. Id. at 5
(citing Abrahm i-f 767). The Examiner determines that it would have been
obvious for one of ordinary skill
to use this enrollment-confirmation concept of Abrahm in
combination with the registration concept disclosed by Smith [],
such that an email is sent confirming the enrollment once the
subscriber account has been set up and including relevant
subscriber details [] because it enables the enrollment process to
confirm the relevant details of the registration.
Id. The Examiner further determines that because the problem is directed to
the process of how to enroll a subscriber, "[ o ]ne of ordinary skill in the art
who is dealing with an enrollment process for a subscriber would be
interested in finding out how other enrollment processes are performed in
other fields of use by others in the art, regardless of what the enrollment is
actually for." Ans. 4.
The Appellant argues that the prior art does not teach some of the
steps of claim 1 because Abrahm does not send a message that confirms
enrollment in a vehicle notification message system or include some of the
vehicle data. App. Br. 6-8. The Appellant contends that Abrahm is not
analogous art nor pertinent to the present problem because it is relevant only
to the management of the documentation and information exchange
necessary for property exchanges. Id. at 7. The Appellant argues that
"[e]ven thought [sic] Appellant's claim language may call for enrolling
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Application 11/618,222
subscribers, that does not conclusively identify the problem Appellant
attempts to solve," and Abrahm is not directed to addressing the problem of
enrolling subscribers. Reply Brief, hereafter "Reply Br.," 2, mailed April
15, 2013.
In KSR, the Supreme Court stated "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). "If a person of ordinary skill can implement a
predictable variation,§ 103 likely bars its patentability." Id. at 417. And, as
the Appellant recognizes, a reference is analogous if it is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011).
Upon consideration of the evidence presented on this record in light of
the arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 1 is
unpatentable. Under the preamble of the claim 1, the steps of the claims are
directed to "enrolling a subscriber," and Smith's teachings include creating a
customer account by a registration system (see Smith i-f 20), with Abrahm
disclosing registration of customers that use its system (see Abrahm i-f 767).
In light of claim 1 's express language and the prior art teachings, we view
the Examiner's findings that the prior art teachings are "reasonably pertinent
to the particular problem with which the inventor is involved," that is,
enrolling subscribers. Thus, we find that the Examiner has demonstrated
articulated reasoning sufficiently showing rational underpinnings of the
findings.
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Application 11/618,222
Additionally, some of Appellant's arguments are directed to
differences between the claim and specific teachings of Smith and Abrahm.
However, one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Claim 7 includes the same steps of claim 1, but also requires that
"steps (b) through (t) are carried out within twenty four hours of step (a)."
Claims App 'x 15. The Examiner finds that "Treyz discloses setting a time-
based periodic trigger on the vehicle that can be more frequent than 24
hours." Final Act. 11 (citing Treyz 38: 5-20). The Examiner further finds
that it is well-known in the art that a registration process "is usually
completed within a matter of seconds or minutes" and determines that it
would have been obvious for one of ordinary skill to complete the
registration process within 24 hours "because it would improve the quality
of service delivered to the customer." Id. The Appellant argues that
although Treyz discloses that information gathered at the vehicle can be sent
periodically, nothing in the prior art suggest that initial notification messages
are constn1cted within 24 hours. App. Br. 8.
Upon consideration of the evidence on this record, we find that the
Appellant has not identified reversible error in the Examiner's findings as to
claim 7 because there is no evidence presented to rebut those findings that it
is a well-known practice to complete the enrollment process within 24 hours.
We therefore sustain the rejection of independent claim 1, and
dependent claims 2-8, which fall with claim 1.
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Application 11/618,222
Claims 9-14
The Appellant argues that Smith, Mazzara, and Abrahm fail to teach
the limitation of claim 9: "initiating an electronic message notification
program for the subscriber based on the customer delivery record." App. Br.
8-9.
The Appellant characterizes this argument based on the view that
Mazzara's disclosures do not teach an electronic message notification
program, and that the Examiner erroneously "equates the provisioning of a
telematics unit with initiating an electronic message notification program."
Id. at 9. The Examiner explains that "reli[ance] upon Mazzara [is] to teach
that it is known in the art for a dealer to gather enrollment information that is
then sent to enroll a customer in a service and create their account," but
Mazzara is not relied upon for the initial customer notification, because
Smith instead is relied upon for that teaching. Ans. 7, see also Final Act.
14--15 (citing Smith i-f 25, Mazzara i-f 37).
Upon consideration of the evidence on this record, we concur with the
Examiner's findings concerning the combined teachings of Mazzara and
Smith disclosing the claim elements at issue, with their respective teachings
on the same. We find that the Appellant has not identified reversible error in
the Examiner's findings because the Appellant attempts to impermissibly
argue the prior art references separately.
We therefore sustain the rejection of claims 9-14.
Claim 15
Claim 15 recites a method of automatically enrolling a subscriber into
a vehicle notification message system. Claim App'x 16. The Appellant
argues that Stark fails to teach the limitations of "receiving a call from the
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Application 11/618,222
telematics unit over a wireless communication system in response to
occurrence of the mileage trigger in the vehicle and the determination" of
step (t) "that the customer has not initiated enrollment into the vehicle
notification message system." App. Br. 11. More specifically, the
Appellant argues that Stark does not teach receiving a call from the
telematics unit that is in response to a determination that a customer has not
initiated enrollment and a mileage trigger. Id. at 11-12.
The rejection of claim 15 is based in part on Smith's teachings of a
mileage trigger. Final Act. 22. The Examiner relies upon Smith and
Mazzara for the teaching of dealer involvement in the automatic enrollment
process. Id. at 23-25. The Examiner further relies upon Stark for its
disclosures related to determining the status of whether the customer has
initiated enrollment and receiving a call in response to this determination.
Id. at 25 (citing Stark i-fi-f 17, 18).
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d at 425. One of ordinary skill can use his or her ordinary
skill, creativity, and common sense to make the necessary adjustments and
further modifications to result in a properly functioning device. See KSR,
550 U.S. at 418 (2007) ("the [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ").
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Application 11/618,222
Upon consideration of the evidence on this record, we find that the
Appellant has not identified reversible error in the Examiner's findings
because the Appellant attempts to impermissibly argue the prior art
references separately. Additionally, the determination of the status of a
customer's enrollment, as found in Stark (see supra), necessarily involves a
determination of whether enrollment had not been initiated.
We therefore sustain the rejection of independent claim 15, and
dependent claims 16 and 1 7, which fall with claim 15.
Claims 18-20
With respect to independent claim 18, the Appellant relies on
arguments presented for the patentability of independent claim 9. App. Br.
12-13.
Therefore, we sustain the rejection of claim 18, for the same reasons as
claim 9, and dependent claims 19 and 20 fall with claim 18.
SUMMARY
The rejections of claims 1-20 under 35 U.S.C. § 103(a) 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)(l).
AFFIRMED
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