Ex Parte Mathur et al

Patent Trial and Appeal BoardMay 17, 2016

12715771 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121715,771 03/02/2010 80748 7590 05/19/2016 Cantor Colburn LLP-General Motors 20 Church Street, 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Bhavna Mathur 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. P00883 l-GMVE-CD 9423 EXAMINER LOUIE, W AE LENNY ART UNIT PAPER NUMBER 3661 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): usptopatentmail @cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BHA VNA MATHUR, ANDREW W. GELLATLY, CODY R. HANSEN, JOHN P. WEISS, MATTHEW M. HIGHSTROM, and ROBERT D. SIMS Appeal2014-004581 Application 12/715,771 1 Technology Center 3600 Before STEFAN STAICOVICI, AMANDAF. WIEKER, and FREDERICK C. LANEY, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mathur et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1 and 4--18 under 35 U.S.C. Â§ 103(a) as unpatentable over Geelen (US 2007/0213092 Al, pub. Sept. 13, 2007)2. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). According to Appellants, the real party in interest is GM Global Technology Operations, Inc. Appeal Br. 1 (filed July 29, 2013). 2 Claims 2 and 3 are cancelled. Appeal Br., Claims App. Appeal2014-004581 Application 12/715,771 SUMMARY OF DECISION We AFFIRM-IN-PART. INVENTION Appellants' invention relates to "controlling the delivery operation of an infotainment system in an automobile" Spec. i-f 1. Claims 1, 11, and 15 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An infotainment system for an automobile, the system compnsmg: a navigation system; an entertainment system; an audio output device; and a control system coupled to the navigation system, the entertainment system and the audio output device, the control system controlling access by the navigation system and the entertainment system to the audio output device, the control system including a conversation recognizer that determines if a conversation is being conducted, the control system varying operation of the audio output device in the event a conversation is being conducted, wherein the control system varies operation of the audio output device by delaying a navigation prompt from being played on the audio output device during at least a portion of the conversation. ANALYSIS Appellants have not presented arguments for the patentability of claims 5-12, 15, and 16 apart from claim 1. See Appeal Br. 4--5. Therefore, in accordance with 37 C.F.R. Â§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 5-12, 15, and 16 standing or falling with claim 1. In view of 2 Appeal2014-004581 Application 12/715,771 Appellants' arguments, we will address the rejection of claims 4, 13, 14, 17, and 18 separately. Claims 1, 5-12, 15, and 16 The Examiner finds that Geelen discloses most of the limitations of claim 1, but is silent as to "delaying a navigation prompt from being played on the audio output device during at least a portion of the conversation." See Final Act. 2-3 (transmitted Feb. 7, 2013). Nonetheless, the Examiner finds that Geelen discloses that during a voice call, music is paused or volume is reduced, and navigation instructions are replaced by simple non-distracting notifications or are completely suppressed. Ans. 6 (transmitted Dec. 5, 2013) (citing Geelen i-fi-1 77-85). The Examiner concludes that [i]t would have been obvious to one of ordinary skill in the art at the time of invention to Geel en [to] utilize teaching of pauses, reduced volumes, and beeps to implement with the navigation instruction since these are known techniques found in Geelen to improve audio output to obtain similar results of increased safety. Final Act. 3. Appellants argue that it would not have been obvious to a person of ordinary skill in the art to pause a navigation prompt during a call, as Geelen discloses pausing music during a voice call "for the entire duration of the call." See Appeal Br. 4. According to Appellants, because the prompt "would be 'paused' (e.g., delayed) until the end of the call" the navigation system would fail to provide directions in a timely manner and thus, would fail to operate in its intended manner. See id.; see also Reply Br. 2. We are not persuaded by Appellants' arguments because the arguments are premised on a limited duration of the conversation, namely, a 3 Appeal2014-004581 Application 12/715,771 conversation that ends before playing a navigation prompt. However, claim 1 does not limit the duration of the conversation, as Appellants urge. It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In this case, claim 1 requires "delaying" the navigation prompt for "at least a portion of the conversation." See Appeal Br., Claims App. Thus, claim 1 encompasses the situation when the navigation prompt is delayed for the entire conversation. As Geelen discloses pausing music during a voice call, the Examiner's modification of Geelen discloses delaying the navigation prompt for "at least a portion of the conversation," that is, the entire conversation, as called for by claim 1. We thus agree with the Examiner that "suppression of the volume is clearly delaying the navigation prompt of the passenger as to not interrupt the conversation." Ans. 6. We further disagree with Appellants' argument that the Examiner's modification of Geelen's navigation system would modify the system such that it would fail to operate in its intended manner. Although we appreciate that in the modified Geelen navigation system the navigation prompt is delayed for the entire voice call, nonetheless, the predictable result is that Geel en's modified navigation system would function as intended when the conversation ends before a navigation prompt is played. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that the "predictable result" discussed in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), also means "that the combination would have worked for its intended purpose"). 4 Appeal2014-004581 Application 12/715,771 In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) of claim 1, and claims 5-12, 15, and 16 falling with claim 1, as unpatentable over Geelen. Claims 4, 13, 14, 17, and 18 Appellants argue that claims 4, 13, and 17 are patentable because Geelen does not disclose a "teaching of delaying anything until a location- based limit is reached." Appeal Br. 5. The Examiner provides no findings that the modified system of Geelen discloses delaying a navigation prompt until a "location-based limit" (as per claim 4) or a "navigation-based limit" (as per claims 13 and 17) is reached. See Final Act. 3-5. Thus, the Examiner has not made the initial factual findings required to demonstrate a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). In conclusion, for the foregoing reasons, we do not sustain the rejection of claims 4, 13, 14, 17, and 18 under 35 U.S.C. Â§ 103(a) as unpatentable over Geelen3. 3 We note that claims 14 and 18 are dependent from claims 13 and 1 7, respectively. 5 Appeal2014-004581 Application 12/715,771 SUMMARY The Examiner's decision to reject claims 1 and 4--18 is affirmed as to claims 1, 5-12, 15, and 16, and reversed as to claims 4, 13, 14, 17, and 18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 6