Ex Parte Samolinski et al

Patent Trial and Appeal BoardAug 28, 2014

11967347 (P.T.A.B. Aug. 28, 2014)

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. 11/967,347 12/31/2007 Steven J. Samolinski P001171-OST-ALS 6809 60770 7590 08/29/2014 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 08/29/2014 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 STEVEN J. SAMOLINSKI, MICHAEL MATEN, JOHN J. CORREIA, and KELLEY J. KETTENBEIL ___________ Appeal 2012-001793 Application 11/967,347 Technology Center 3600 ___________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MICHAEL W. KIM, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE This is a decision on a request for rehearing for Appeal No. 2012- 001793. We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. Appeal 2012-001793 Application 11/967,347 2 ISSUES ON REHEARING Appellants raise three issues in the Request for Rehearing. The first issue is whether our statement of issues represents an incomplete analysis. The second issue is whether our analysis considered all the claimed features of claim 1. The third issue is whether our decisions regarding claims 13 and 14 are supported in the cited prior art. ANALYSIS First issue – Claim 1 Appellants argue that our summary of issues, on page 3 of our Decision, is an incomplete analysis and “does not address the additional limitations found in claim 1 and identified in the Appeal Brief.” (Req. 2). The issues summary section, however, is not intended to present a complete analysis of the issues on appeal, but is instead merely a summary of the most important issues. The Analysis section of the Decision is where the panel’s complete analysis resides. Second Issue – Claim 1 Next, Appellants contend that our analysis of the arguments directed to claim 1 overlooks the “additional features of claim 1” and did not address, specifically, “leveraging the call to also obtain data related to vehicle maintenance and providing additional maintenance information to the caller based on that data.” (Req. 3). However, the only two arguments set forth, other than the arguments directed to “verbal responses” (App. Br. 7–10), are about “transferring calls to technicians” (App. Br. 9), and “receiv[ing] diagnostic data from a vehicle over such a phone call” (App. Br. 10). Appeal 2012-001793 Application 11/967,347 3 First, there is no recitation in claim 1 about transferring calls to technicians, which, in contrast, is recited in independent claim 13. Second, claim 1 also does not recite a step for receiving data over a telephone call. Instead, claim 1 recites steps of retrieving “operational condition data” and “other data,” receiving a telephone call, and providing a verbal response over the telephone call. Claim 1 does not recite or require the retrieving of data to take place as part of the received telephone call, because the limitations are not necessarily related to a single telephone call. (In contrast, claim 13 more precisely recites “retrieving operational condition data during the telephone call.” Data during a call was addressed in response to arguments directed to claim 13, at pages 6–7 of our Decision.) According to the language of claim 1, the data could be received outside of a voice telephone call. Therefore, both of these arguments made in the Appeal Brief are unpersuasive because they are outside the scope of claim 1. Third Issue – Claim 13 Appellants contend “the prior art does not include any teaching that connects the caller to a second, different advisor that is a live diagnostic advisor or suggest that such a step is done.” (Req. 3). We are not persuaded by Appellants. In our Decision, we stated that the step of connecting the caller to a second, different advisor “represents an aspect ‘that would occur in the ordinary course without real innovation . . .’ and is an obvious improvement.” (Dec. 7). In addition, we stated “McCutchen discloses ‘communication with WAS center 170 and dealer 180.’” (Dec. 6). McCutchen thus discloses communication with both a first advisor, at the WAS center 170, and a second advisor, dealer 180. The Appeal 2012-001793 Application 11/967,347 4 claim language merely connects the caller to each advisor, which encompasses this connecting on two separate calls. Because McCutchen discloses connecting to two advisors, and the shared experience of having this happen on a single call transferred to a second advisor, the alleged improvement of connecting with the second caller is predictable. Third Issue – Claim 14 Appellants assert that “a number of other actions take place as part of these different modes that are not addressed by the Decision.” (Req. 4). Specifically, Appellants assert, switching between voice and data mode on a call, and transferring a call to a second advisor, are not addressed by our Decision. (Req. 4–5). In our Decision we stated “McCutchen discloses both voice and data communications over a wireless call,” citing to Fact 8, which sets forth a portion of McCutchen’s paragraph 41. (Dec. 4, 7). Claim 14 recites a system, with structural components of a call center, wireless carrier system, vehicle, and a computer configured to function to switch back and forth between voice and data, and to transfer a phone call. As functional language, we are required to give this language weight to the extent that the prior art is or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). McCutchen discloses a phone system that utilizes both data and voice modes, and is therefore able to switch back and forth between these modes. (McCutchen, para. 41). McCutchen also discloses computer components to connect together vehicle drivers making calls, live advisors that handle those calls, data unit 160 for handling vehicle data, and call center facilities. (McCutcheon, para. 47). McCutchen discloses it is capable of handling voice and data together, and one of Appeal 2012-001793 Application 11/967,347 5 ordinary skill would understand that call center telephone facilities have the capability of transferring telephone calls to other individuals. CONCLUSION Nothing in Appellants’ request has convinced us that we have overlooked or misapprehended features of these claims or arguments directed to the claims. Accordingly, we deny the request. DECISION To summarize, our decision is as follows: We have considered the REQUEST FOR REHEARING. We DENY the request that we reverse the Examiner as to claims 1–17. DENIED mls