Ex Parte Rogö et al

Patent Trial and Appeal BoardJan 29, 2018

14411027 (P.T.A.B. Jan. 29, 2018)

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. 14/411,027 12/23/2014 Johan Rogo H04.0006US00 7500 68242 7590 01/31/2018 FIALA & WEAVER P.L.L.C. C/O CPA GLOBAL 900 Second Avenue South Suite 600 MINNEAPOLIS, MN 55402 EXAMINER ALSOMIRI, MAJDI A ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 01/31/2018 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): DOCKETING@CPAGLOBAL.COM docketing@fwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHAN ROGO, ROBERT POVOLNY, MARKUS KRAPFENBAUER, and HEINZ LIEBHART Appeal 2017-010529 Application 14/411,02V1 Technology Center 3600 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Johan Rogo et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision (entered July 1, 2016, hereinafter “Non-Final Act.”) rejecting claims 1-20 as anticipated by Wood (US 6,104,333, iss. Aug. 15, 2000). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants represent in their Appeal Brief (entered Dec. 21, 2016, hereinafter “Appeal Br.”) the Real Party in Interest is Kapsch TrafficCom AB. Appeal Br. 1. Appeal 2017-010529 Application 14/411,027 INVENTION Appellants’ invention relates to “a method to control an on board unit (OBU) within a communication zone of a road side unit (RSU).” Spec. para. 2. Claims 1, 9, and 17 are independent. Claim 1 is reproduced below with added emphasis to highlight the claim language at the center of this dispute and is illustrative of the claimed subject matter. 1. A method to control an on board unit (OBU) within a communication zone of a road side unit (RSU), said OBU operable to be set into an active mode and a sleep mode, wherein the OBU is set into: said sleep mode when said OBU receives a release command from said RSU, and the electronics of said OBU thereby is shut down and at least a portion of a communication unit of said OBU is operable, such that no or a minimum of power is consumed, and said active mode when said OBU is entering said communication zone, whereby the communication unit of said OBU thereby is powered such that the OBU can communicate with said RSU, wherein said OBU is operable to be set into a tracking mode by said RSU responsive to receiving a command from said RSU, whereby in said tracking mode at least said communication unit is shut down and a timer is activated in said OBU, such that said OBU can restart said communication unit within a specified time limit from when said communication unit is shut down. Appeal Br. A1 (Claims App.). 2 Appeal 2017-010529 Application 14/411,027 ANALYSIS Appellants contend the Examiner’s finding Wood discloses each limitation of claim 1 is flawed because Wood “fails to disclose at least the tracking mode that is set responsive to receiving a command from said RSU, whereby in the tracking mode the communication unit is shut down and a timer is activated in said OBU.” Appeal Br. 7. Wood, Appellants assert, fails to disclose using the RSU to place the OBU into a tracking mode. Id. at 8. Instead, Appellants represent that the OBU of Wood relies completely on internal command signals to place the OBU into the various modes of operation. Id. at 6-9. To show Wood discloses the limitation of “OBU is operable to be set into a tracking mode by said RSU responsive to receiving a command from said RSU,” the Examiner cites column 6, lines 5-58, column 10, lines 31- 56, column 16, lines 30-64, and column 18, lines 1-39. Non-Final Act. 3. The Examiner emphasizes that Wood’s statement, “various other intervals can be selected by radio frequency by sending a message from the interrogator 26 to the device 12. [... ] the interval is selectable as being 0.5, 16, 64 or 256 milliseconds,” means that “the specified time interval/limit is set by RSU by sending a message with RF from the RSU (interrogator 26) to the OBU (device 12).” Ans. 2-3 (quoting Wood col. 10, 11. 40 43). Thus, the Examiner determines that, because after the specified time interval/limit the device restarts communications with interrogator 26, “Wood meets the scope of the claimed limitations as presented.” Id. at 4; see Non-Final Act. 9. Appellants argue the Examiner misapprehends what Wood discloses. Appeal Br. 6-10. Appellants argue the signal used to establish the time 3 Appeal 2017-010529 Application 14/411,027 interval of the timer in the OBU of Wood is not evidence of a command signal sent by the RSU to instruct the OBU to enter into a tracking mode. Id. at 9. Appellants note that, in Wood, the OBU timer is deactivated when it receives a signal from the RSU, including the signal setting the time interval, which is contrary to the recitation in claim 1 that, as a result of the command received from the RSU to send the OBU into a tracking mode, the OBU activates its timer. See id. at 8-9. Appellants point to column 10, lines 52-56, as support, because it states the OBU timer activates only after it determines “no frequency signal [from the RSU] is present.” Id. at 9. Thus, since the timer in the OBU of Wood is activated only by the OBU in the absence of any signal from the RSU, Appellants argue that Wood discloses that the OBU must control the activation of the timer itself. Id. Appellants’ representations of Wood are persuasive. The Examiner agrees with Appellants that column 10, lines 52-56, discloses a RSU that sets the specified time interval/limit for the timer in the OBU. Ans. at 2-3. Nevertheless, the Examiner fails to explain why a skilled artisan would view a signal that establishes the time interval an OBU waits to activate “communications” to be a command signal that directs an OBU to enter into a tracking mode. Although the Examiner states Wood is within the scope of claim 1, it is notable that the Examiner does not explain why this is the case. It is not clear what interpretation the Examiner is applying to the limitation, “said OBU is operable to be set into a tracking mode by said RSU responsive to receiving a command from said RSU.” Nor is it readily apparent an interpretation, which is also reasonable, exists that would extend the coverage to include a signal that simply defines the amount of time set for the timer in the OBU. Thus, on this record, a preponderance of 4 Appeal 2017-010529 Application 14/411,027 the evidence fails to support Wood discloses an RSU that sends, or an OBU that is operable to receive, a communication setting the OBU into a tracking mode, which activates a timer. Therefore, for the foregoing reasons, we do not sustain the Examiner’s rejection of claim 1. Because the Examiner relies on the same reasoning and support to reject claims 9 and 17 (see Non-Final Act. 5-7), we also do not sustain the Examiner’s rejection of those claims. As a result, finally, we do not sustain the rejection of claims 2-8, 10-16, and 18-20 because they depend from claims 1, 9, and 17, respectively. DECISION We reverse the Examiner’s rejection of claims 1-20. REVERSED 5