Ex Parte Peeters et al

Patent Trial and Appeal Board

May 24, 2016

13059402 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/059,402 02/16/2011
49443 7590 05/26/2016
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
FIRST NAMED INVENTOR
Michael Peeters
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.
P-77883-US 9972
EXAMINER
ALKAFAWI,EMAN A
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
USPTO@PearlCohen.com
Arch-USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PEETERS, CLAUDE DEBAST, and
TIM FROIDCOEUR
Appeal2014-004776
Application 13/059,402 1
Technology Center 2800
Before CHUNG K. PAK, ROMULO H. DELMENDO, and JULIA HEANEY,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action2 rejecting
claims 1 through 14 and 16 through 21. We have jurisdiction pursuant to
35 U.S.C. § 6. We reverse.
1 Application 13/059,402 (Application '402), filed February 16, 2011, under
35 U.S.C. § 371, is the national stage of PCT application PCT/IB2009/053695,
filed on August 21, 2009.
2 Final Action mailed September 13, 2013 ("Final Act.").
Appeal2014-004776
Application 13/059,402
INTRODUCTION
The appealed subject matter relates to a location tracking unit, such as a
vehicle "On Board Unit" (OBU), for use in a location tracking system for vehicles
on toll highways, for example. Embodiments of the location tracking unit are said
to provide "a high level of security and tamper resistance at low cost."
'402 Specification ("Spec.") 3, 11. 3-4, 9-10, and 24-25; 5, 11. 8-17; and 6, 11. 30-31.
Figure 3, an embodiment of a location tracking system, is reproduced below.
GNSS GSM
Host
Ctrl
4
·-
FIG. 3
Figure 3 is a schematic diagram of an Advanced Technologies and Oceanic
Procedures (ATOP) system that is a "System-in-package component," i.e., OBU 12.
Spec. 4, 11. 17-19; and 6, 11. 27 and 31. OBU 12 comprises GNSS [(Global
Navigation Satellite System)](40, i.e., "a GPS [(Global Positioning System)] front-
end," GSM [(Global System for Mobile Communication)] 42, i.e., a "2.5G mobile
modem," host controller 44, i.e., a "baseband controller," and "a very secure
tamper-resistant controller" 46. Spec. 6, 11. 27-30. OBU 12 sends data to "back-end
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Application 13/059,402
road tolling" server 4, which "is able to reconstruct out of this data the journeys that
are driven" and compute the total price of the journey. Spec. 5, 11. 13-20.
Figure 4, which is reproduced below, shows a flow diagram of an
embodiment of a method implemented according to the system of Figure 3. Spec.
4, 11. 20-21.
FIG. 4
Host computer 44 collects GNSS data from GNSS 40 at regular intervals 410 and
then in map-matching step 420, matches the GNSS data with road sections, which
are contained in Map database 48. Matching step 420 provides a list of "road
section IDs, or similar." Spec. 7, 11. 7-11. Secure controller 46 checks the integrity
of the submitted GNSS data in verification step 430, using techniques generally
known in the art, e.g., verifying that the GNSS data has been collected at regular
intervals, and that the distance and time stamp delay between two subsequent GNS S
fixes of the GNSS data are below threshold values. Id., at 11. 12-17. Secure
controller 46 then verifies, in verification step 440:
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Application 13/059,402
(a) that the submitted list of road sections IDs are indeed connected to each
other (and connected to previously submitted road sections IDs); and
(b) whether this list of road sections IDs correspond to the GNSS data.
"For this purpose ... [the secure controller 46] has access to a dedicated set of
trusted data stored in a Verification Map database 50, which in tum is stored in the
secure controller 46. In other words, the secure controller [ 46] executes a mini
process as mirror to the map matching process to check whether or not the results
are consistent. If the results are not consistent with those expected, there is
evidence of tampering of the remote process." Id. at 11. 18-27.
If verification step 440 fails, secure controller 46 notifies its internal fraud
manager in step 460. The notification is forwarded (not shown in Figure 4) to the
server 4, which takes "appropriate action." If verification 440 succeeds, then secure
controller 46 computes, with the help of database of fare data 52 securely stored in
secure controller 46, the total cost that corresponds to the list of road IDs submitted
to secure controller 46. Secure controller 46 signs the total cost to indicate that the
cost has been securely computed, and forwards the signed cost to server 4 in
step 460. Server 4 then aggregates all costs for a given car after proper verification
of their validity in step 470, and proceeds with billing step 480. Spec. 7, 11. 28-31;
and 8, 11. 6-10.
Details of the appealed subject matter are recited in representative
independent claims 1, 10, and 16 of Application '402, which are reproduced below
from the Claim Appendix in the Appeal Brief 3 (bracketed reference characters of
'402 Specification Figures 3 and 4, indentations, and emphasis added):
3 Appeal Brief filed on December 06, 2013 ("App. Br.").
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Application 13/059,402
1. A location tracking unit [12] configured for use with a
location based service system comprising:
a navigation receiver [ 40] configured to implement a
location tracking function;
a first data processor [ 44] configured to determine an
occupied location according to a first location matching process
[ 420], the first location matching process using navigation data
from the navigation receiver [ 40, 41 OJ and a first set of
geographic data [ 48]; and
a second data processor [ 46] configured to verify
integrity of the first location matching process [ 420] based on a
second location matching process [ 440] using the navigation
data [ 430] and a second set of geographic data [50] wherein the
first data processor [ 44] is a host controller and the second data
processor [ 46] is a secure controller.
10. A method of implementing a location tracking function in a
location tracking unit [12], the method comprising:
determining in a host controller [44], an occupied
location according to a first location matching process [ 420], the
first location matching process using navigation data from a
navigation receiver [ 40, 410] and a first set of geographic
data [ 48]; and
verifying in a secure controller [ 46], integrity of the first
location matching process [ 420] based on a second location
matching process [ 440] using the navigation data [ 430] and a
second set of geographic data [50].
16. A non-transitory medium comprising:
instructions for determining, in a host controller [ 44], an
occupied location according to a first location matching
process [ 420], the first location matching process using
navigation data from a navigation receiver [ 40, 410] and a first
set of geographic data [ 48];
instructions for verifying, in a secure controller [ 46],
integrity of the first location matching process [ 420] based on a
second location matching [ 440] using the navigation data [ 430]
and a second set of geographic data [ 50].
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Application 13/059,402
In the Examiner's Answer, 4 the Examiner maintains the following grounds
of rejection, which are before us on appeal:
1. Claims 1through5, 7, 8, 10 through 14, and 16 through 18 under
35 U.S.C. § 103(a) as being unpatentable over Francis5.
2. Claims 6 and 19 under 35 U.S.C. § 103(a) as being unpatentable over the
collective teachings of Francis and Michaelson6.
3. Claim 9 under 35 U.S.C. § 103(a) as being unpatentable over the
collective teachings of Francis and Dare7.
4. Claims 20 and 21under35 U.S.C. § 103(a) as being unpatentable over the
collective teachings of Francis and Perafa8.
ISSUE
The dispositive issue before us is the proper interpretation of the terms
"location tracking unit," as recited in claims 1 and 10, and "secure controller"
(emphasis added), as recited in claims 1, 10, and 16.
4 Examiner Answer mailed on February 14, 2014 ("Ans.") 2. Final Act. 2 through
16.
5 United States Patent Publication No. 2002/0070862 Al by Robert C. Francis et
al., published on June 13, 2002.
6 United States Patent 6,469,664 Bl, issued to Dave Michaelson et al. on
October 22, 2002.
7 United States Patent 7,869,940 B2, issued to Peter Roy Dare on January 11,
2011.
8 United States Patent Publication No. 2011/0196647 Al by Tommi Perafa et
al., published on August 11, 2011.
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PRINCIPLES OF LAW
In making a patentability determination, analysis must begin with the
question, "what is the invention claimed?" because "[ c ]laim interpretation ...
will normally control the remainder of the decisional process." Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987). The
words of a claim are generally given their broadest reasonable meaning
during their ordinary usage consistent with the Specification. In re Morris,
127 F.3d 1048, 1054-55 (Fed. Cir. 1997) ("[T]he PTO applies to the verbiage
of the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification."). "[The] broadest reasonable [meaning of the
words in their ordinary usage (ordinary and customary meaning)] ... cannot
be divorced from the specification and the record evidence." Irz re lvTP, Inc.;
654 F3d 1279, 1288 (Fed. Cir. 2011) (citing In re Suitco Surface, 603 F.3d
1255, 1259 (Fed. Cir. 2010)). "The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective
filing date of the application." Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005)(en bane).
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ANALYSIS
Rejection 1, Obviousness over Francis
The Examiner holds that Francis would have rendered obvious a location
tracking unit as recited in independent claim 1. The Examiner finds that Figure 1 of
Francis discloses a location tracking unit comprising:
( 1) host computer 190, as the first data processor recited in claim 1 (Final
Act. 4, citing Francis, i-fi-1 [0040] and [0045]);
(2) interrogator 120 as the navigation receiver recited in claim 1 (Final
Act. 3, citing reference claim 2); and
(3) "second data processer [160]" that is connected to interrogator 120, where
the second processor is a "secure controller" as recited in claims 1 (id. at. 4, citing
Francis, i-fi-1 [0023] and [0024]).
Francis Figure 1 is shown below:
In Francis Figure 1, RFID (radio-frequency identification) tags are affixed to both
objects and locations. Francis, i1 [0029]. Object tracking and warehouse
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management system 100 tracks object 132, such as a load or pallet. System 100
includes transportation vehicle 110, which can be, for example, a pallet truck, fork
truck, or reach truck. On vehicle 110, mounted RFID interrogator 120 is "linked to
a processor . .. [e.g.,] a computer that includes a central processing unit (CPU) 160,
a display 170 and an input device 180, such as a keyboard, pointing device, and/or
touch-panel display" (emphasis added). RFID tag 130 is attached to object 132 as
an object marker. RFID tags 140 and 150 serve as location markers, which are
positioned in various locations, such as warehouse clock 142 and loading dock 152.
Processor 160 on board vehicle 110 may be linked to "remote host computer" 190
by a RF link or other suitable communications system that provides a continuous
link between vehicle 110 and host computer 190. Remote host computer 190 "may
also be linked to the RFID interrogators and processors on other transport vehicles."
Francis, i-f [0040].
The Examiner finds that Francis teaches that the second processor is
"configured to verify the integrity of the first location matching process based on a
second location matching process using navigation data and a second set of
geographic data ... wherein the encoding/decoding data reads on 'verifying
integrity' ... based on the transmitted and received encoded signal the
processor/interrogator determines the correctness of the first location which reads
on the 'integrity of the first location' as in [0047], and second location as well as
in, [0023]." Final Act. 3, 4, citing Francis, i-fi-1 [0004], [0018], [0020], [0023],
[0024], [0026], and [0047]. The Examiner concludes that it would have been
"obvious to one of ordinary skills [sic] in the art that a secure controller is a
controller that deals with and operates coded information." Final Act. 4, citing
Francis, i-fi-1 [0004], [0020], and [0024],
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The Examiner holds that it would have been "obvious to one of ordinary
skills in the art to consider applying any desired set of data to any or both set[ s]
[sic] as desired see [0040], wherein any set of data to be processed either by the
[Francis] processor 120 [sic: 160] or 190 or both, including plurality or
instructions/functions to apply." Id. at 4, 5.
The Examiner further holds that Francis would have rendered obvious a
method of using the above location device as recited in independent claim 10 for
reasons similar to those discussed above regarding claim 1. Final Act. 5, 6. The
Examiner also holds that Francis would have rendered obvious a "non-transitory
medium" as recited in independent claim 16, for reasons similar to those discussed
above regarding claim 10. Final Act. 6, 7.
Appellants urge that "Francis fails to disclose first and second data
processors located within a single location tracking unit" as recited in claims 1
and 10. App. Br. 5. According to Appellants (id.), in Francis Figure 1, "RFID
interrogator 120 and its associated processor 1609 are on a vehicle 110. The
[remote] host computer 190 is clearly separate from vehicle 110."
In response to Appellants' arguments, the Examiner holds that the language
in claims 1 and 10 does not mention "the single component aspect" (i.e., the single
location tracking unit) alleged by Appellants. Ans. 5.
However, the Examiner has not directed our attention to any disclosure in the
'402 Specification, which defines the term location tracking "unit" so broadly as to
9 Contrary to Appellants' arguments that the Examiner fails to identify in Francis a
second processor, the Examiner found, in Francis Figure 1, that RFID interrogator
120 is connected to a processor. Final Act. 4. Appellants also recognize that
Francis RFID interrogator 120 is connected to processer 160. App. Br. 5.
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encompass the tracking system disclosed by Francis. According to Webster's New
World Dictionary, Third College Edition, (1988), p. 1459, the term "unit" may be
defined as "a single, distinct part of object, esp. one used for a specific purpose [the
lens unit of a camera]." This definition is consistent with the '402 Specification
which refers to a location tracking unit as an OBU ("on-board unit"). In the '402
Specification Figure 3, the OBU ("on-board unit") 12 comprises both host
controller 44 and secure controller 46. Thus, given the broadest reasonable
ordinary meaning of the term "unit" in light of the Specification, a person having
ordinary skill in the art would have understood that the location tracking "unit"
recited in claims 1 and 10 refers to a single object or component. Microsoft Corp.
v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). ("A construction that is
unreasonably broad and which does not reasonably reflect the plain language and
disclosure will not pass muster."); accord Morris, 127 F.3d at 1054 ("[I]t would be
unreasonable for the PTO to ignore any interpretive guidance afforded by the
applicant's written description.").
In contrast, as urged by Appellants, in the Francis system 100, processer 160,
but not "remote" host computer 190, is mounted on vehicle 110.
Appellants further urge that Francis does not disclose a "'secure' controller"
as recited in claims 1, 10, and 16. App. Br. 5. In response to the Examiner's
holding (Final Act. 4) that it would have been "obvious to one with ordinary skills
in the art that a secure controller is a controller that deals with and operates coded
information," Appellants urge that "'secure' is not the same as 'coded.' For
example, many communications protocols encode information for transmission in a
communication channel, but this information is not secure." Id. at 6.
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In response to Appellants' arguments, the Examiner holds that the claim
language in claims 1, 10, and 16 "neither specifies what kind or what level of
security, nor mention a specific technique of security, thus any type/level/technique
of secure controller/communication is valid based on the claim language."
Ans. 3, 6. The claimed language of "a secure controller ... has no further
limitation of a specific type or technique of security." Ans. 3. The Examiner finds
that Francis teaches "two aspects of a secure controller, first in claim 2, wherein the
encoded data reads on a certain level of security; second [0047] the interrogator to
investigate the correctness of the information and confirm its correctness is another
type of security." Ans. 6.
However, the '402 Specification discloses that "the portion of the
system/process which is required to be secured may be made small-enough to be
implemented in a secure controller, such as those found in smartcards, thereby
offering high level of tamper-resistance ... ". Spec. 6, 11. 19-22; emphasis added.
The '402 Specification (id. at 6, 11. 29-30) describes the Figure 3 controller 46 as "a
very secure tamper-resistant controller" (emphasis added). The '402 Specification
further discloses that "[i]t is paramount importance that the integrity of the data
inside the [secure] database . . . be protected and assured, since modifying such
data may enable an attacker to eventually influence a trip cost for example. A
solution to this problem is to store the database within the secure controller." Id.
at 8, 11. 14-16; and 8, 1. 31, to 9, 1. 2. Consistently, Webster's New World
Dictionary, Third College Edition, (1988), p. 1214, defines the term "secure" as
"free from danger; not exposed to damage, attack, etc.; safe." Thus, given the
broadest reasonable ordinary meaning of the term "secure" in light of the
Specification, a person having ordinary skill in the art would have understood that
the "secure" controller recited in claims 1, 10, and 16 refers to a controller that is
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not exposed to attack, e.g., tamper-resistant. This interpretation is consistent with
the disclosure in the '402 Specification. Proxyconn, Inc., 789 F.3d at 1298; Morris,
127 F.3d at 1054.
In contrast, as urged by Appellants, Francis does not disclose or suggest that
processor 160 associated with RFID interrogator 120 is tamper-resistant, or that the
integrity of the data is protected, i.e., "secure" as recited in claims 1, 10, and 16.
Notwithstanding the Examiner's finding, there is no description in either Francis
claim 2 or paragraph [0047] that processor 160 is tamper-resistant, or that the
integrity of the transmitted RFID tag encoded signals processed by processor 160 is
protected. The Examiner has not directed our attention to any disclosure in Francis
that describes or would have suggested processor 160 as being free from attack or
tamper-resistant, i.e., "secure." Nor has the Examiner directed our attention to any
disclosure in the '402 Specification that defines the term "secure controller" so
broadly as to encompass a processer that merely processes encoded signals
transmitted by RFID tags; as disclosed by Francis.
Accordingly, we find that Appellants have shown reversible error in the
Examiner's findings that the teachings of Francis would have prompted a person
having ordinary skill in the art to arrive at the subject matter recited in the claims
on appeal within the meaning of 35 U.S.C. §103(a).
Rejection 1 is reversed 10.
10 When the case is returned to the Examiner, the Examiner should consider
rejecting claim 16 under 35 U.S.C. § 101, for nonstatutory subject matter, an
"abstract idea." See the "2014 Interim Guidance on Patent Subject Matter
Eligibility," issued December 16, 2014, 79 FR 74618, and the July 2015 Update:
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Rejections 2 through 4, Obviousness
Dependent claims 6, 9, and 19 through 21 include each and every limitation
recited in claim 1. However, the additional prior art references used in rejecting
the dependent claims on appeal in Rejections 2 through 4 were not relied upon by
the Examiner to remedy the deficiencies of Francis, discussed supra.
Accordingly, Rejections 2 through 4 11 are also reversed.
ORDER
In view of the foregoing, we REVERSE the rejections of claims 1
through 14 and 16 through 21under35 U.S.C. § 103(a).
REVERSED
Subject Matter Eligibility (July 2015 Update),
http://www.uspto.gov/ sites/ default/files/ documents/ieg-july-2015-update.pdf.
11 In Rejection 4, in rejecting claim 21, the Examiner fails to address all the
limitations recited in claim 21. Final Act. 15, 16. The Examiner holds that
because there is no support in the '402 Specification, p. 10, for the presence of
both maps as recited in claim 21, the Specification "negates the alleged
requirement" recited in clam 21. Ans. 7. This analysis is improper, because every
word in a claim must be considered. According to the Manual of Patent
Examining Procedure (MPEP, Original Ninth Edition, March 2014, revised
November 2015 [R- 07-2015]) § 2163.06.I."[i]fnew matter is added to the claims,
the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.
112, first paragraph-written description requirement ... The examiner should still
consider the subject matter added to the claims in making rejections based on prior
art since the new matter rejection may be overcome by applicant" (emphasis
added).
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