Ex Parte Oesterling et al

Patent Trial and Appeal BoardSep 18, 2015

12164494 (P.T.A.B. Sep. 18, 2015)

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. 12/164,494 06/30/2008 Christopher L. Oesterling P005272-OST-ALS 1446 60770 7590 09/18/2015 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER FANG, PAKEE ART UNIT PAPER NUMBER 2642 MAIL DATE DELIVERY MODE 09/18/2015 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 CHRISTOPHER L. OESTERLING and RICHARD F. HEINES ____________ Appeal 2013-007805 Application 12/164,4941 Technology Center 2600 ____________ Before JOHN G. NEW, TERRENCE W. McMILLIN, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3, and 16–18. Claims 4–15 and 19–21 are withdrawn. Final Act. 2. Claim 2 is cancelled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is General Motors LLC. App. Br. 2. Appeal 2013-007805 Application 12/164,494 2 STATEMENT OF THE CASE Appellants’ invention relates to inhibiting transmission of location information outside of a geographic region in which such transmission is prohibited. Abstract. Claims 1 and 18 are exemplary of the matter on appeal: 1. A method for inhibiting transmission of location information by a telematics unit of a vehicle to a call center located in a different geographic region, the method comprising: identifying vehicle location; determining a geo-political boundary that the vehicle is within based on the vehicle location; determining if the call center is within the geo-political boundary; and inhibiting the transmission of vehicle location information to the call center if the call center is determined to be outside the geo- political boundary, wherein the inhibiting step further comprises determining whether transmission of location information outside of the geo-political boundary is legally prohibited and, if so, inhibiting the transmission of vehicle location information from the telematics unit to the call center. 18. A method as set forth in claim 16, wherein the step of inhibiting the transmission of the location information includes the step of replacing the location information with data void of location information. App. Br. 10, 13 (Claims Appendix). REJECTION Claims 1, 3, and 16–18 stand rejected under 35 U.S.C. § 103(a) over Oesterling et al. (US Pub. 2005/0096020 A1) in view of Ichimura et al. (US Pub. 2003/0084119 A1). Ans. 3. Appeal 2013-007805 Application 12/164,494 3 ANALYSIS The rejection of claims 1, 3, 16, and 17 Appellants argue the combination of Oesterling and Ichimura does not teach the claim limitation “determining whether transmission of location information outside of the geo-political boundary is legally prohibited and, if so, inhibiting the transmission of vehicle location information from the telematics unit to the call center.” App. Br. 5; Reply Br. 1–4. According to Appellants, Oesterling “monitor[s] a vehicle’s current GPS location for a match with a service center GPS location” and “[t]he boundary of such a service center has no geo-political attribute and is unrelated to the legal prohibition of transmissions.” Id. Appellants contend Ichimura’s geographical regions “have no geo-political attributes and do not teach geo- political boundaries” nor “determining whether its areas are affected by the legality of transmitting location information.” Id. at 6. The Examiner determines a “legally prohibited geo-political boundary” is “just a region of territory that restricts transmission.” Ans. 3 (citing Spec. ¶¶ 24, 25; Fig.2, step 110). Regarding “legally prohibited,” the Examiner determines: “Furthermore, if an area allows transmission of wireless signals within the geographical limits, this can be reasonably interpreted as an area includes legal wireless transmission; likewise, if an area prohibits transmission of wireless signals within the geographical limits, this can be reasonably interpreted as an area includes forbidding legal wireless transmission.” Ans. 3. With these interpretations, the Examiner finds Oesterling teaches a call center located in a different geo-political boundary as different Appeal 2013-007805 Application 12/164,494 4 areas/regions include different geo-political boundaries. Final Act. 3 (citing ¶9; See also Figs. 1–5, ¶¶ 180, 190); Ans. 3–4. The Examiner finds Ichimura’s teaches inhibiting transmission (disabling transmission) of location information (position information) based on different geo-political boundaries. Final Act. 4 (citing Figs. 8–14, ¶¶ 96–100); Ans. 4. We agree with the Examiner’s claim interpretations and findings and are not persuaded by Appellants’ arguments. The terms “geo-political” and “legally prohibited” are not defined in the Specification and one of ordinary skill in the art would not necessarily consider these terms to have the narrow meanings now asserted by Appellants. Oesterlings’ vehicle location (and Ichimura’s position location) is not limited to any specific location and Appellants have not persuaded us the Examiner’s interpretations are unreasonable. Regarding “legally prohibited,” we are not persuaded Ichimura’s location information and inhibiting (disabling transmission) do not meet the term “legally prohibited.” A claim in a patent application is given the broadest reasonable interpretation consistent with the Specification, as understood by one of ordinary skill in the art. In re Crish, 393 F.3d at 1256 (Fed. Cir. 2004). Great care should be taken to avoid reading limitations of the Specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). We are not persuaded by Appellants’ argument of error by the Examiner finding the terms “call center” and “service center” are used interchangeably in the art. App. Br. 7 (citing Final Act. 3). According to Appellants, Oesterling distinguishes these terms, does not teach “determining if the call center in within a boundary,” and the Examiner provides no support for such “interchangeability.” App. Br. 7. Instead, we Appeal 2013-007805 Application 12/164,494 5 agree with the Examiner’s finding one of ordinary skill in the art would obtain location information of the call center to improve tracking and “it is common knowledge a service center can be next to the call center in the same geographic location or a service center can incorporate a call center as one.” Final Act. 3. In view of the above, we sustain the rejection of claim 1. Independent claim 16 recites the same limitation, is argued together with claim 1 and, therefore, we sustain its rejection. Claims 3, 17, and 18 depend from claims 1 and 16, are not separately argued and, therefore, we sustain the rejection of these claims. The rejection of claim 18 We are persuaded of error by Appellants’ argument that the references do not teach the limitation “the step of inhibiting the transmission of the location information includes the step of replacing the location information with data void of location information,” as recited in claim 18. App. Br. 8. The Examiner finds Ichimura teaches if position information is not transmittable, the location information will be void from transmitting, thus it is obvious when position information is not transmittable, then any data being transmitted will not contain location information. Ans. 5. According to Appellants, “if location information is not available, Ichimura ends its method and does nothing. As can be appreciated from Figure 8 of Ichimura, after it is determined that no position information is transmittable (step 124), the method ends.” App. Br. 8. See also Reply. Br. 4–5. We agree with Appellants and, in view of the above, we do not sustain the rejection of claim 18. Appeal 2013-007805 Application 12/164,494 6 DECISION The Examiner’s decision rejecting claims 1, 3, 16, and 17 is affirmed. The Examiner’s decision rejecting claim 18 is reversed. 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)(1)(iv). AFFIRMED-IN-PART dw