Ex Parte Shuart

Patent Trial and Appeal BoardSep 15, 2014

11944897 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/944,897 11/26/2007 Kristen M. Shuart P002180-OST-ALS 6384 60770 7590 09/16/2014 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER YACOB, SISAY ART UNIT PAPER NUMBER 2684 MAIL DATE DELIVERY MODE 09/16/2014 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 KRISTEN M. SHUART ____________ Appeal 2012-004419 Application 11/944,897 Technology Center 2600 ____________ Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and DANIEL N. FISHMAN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2012-004419 Application 11/944,897 2 STATEMENT OF THE CASE Appellant’s claimed invention is directed to communicating messages within a vehicle telematics system (Spec. ¶ 1). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of automatically communicating a reminder message at a vehicle, comprising the steps of: (a) receiving a user-established reminder message inputted by the user, and receiving playback instructions for playing the user-established reminder message; (b) generating a trigger based on the playback instructions; (c) setting the trigger; (d) monitoring for occurrence of one or more conditions that satisfy the trigger; and (e) determining whether the one or more conditions have occurred and, if so, then: (f) accessing the user-established reminder message associated with the trigger; and (g) communicating the user-established reminder message to an occupant in a vehicle. REFERENCE and REJECTION The Examiner rejected claims 1–14 under 35 U.S.C. § 102(b) as anticipated by Treyz (US 6,526,335 B1; issued Feb. 25, 2003). ANALYSIS Appellant asserts the Examiner erred in finding Treyz discloses all of the limitations in Appellant’s claimed invention (App. Br. 6–9). Particularly, Appellant contends Treyz does not teach “receiving a user- established reminder message inputted by the user, and receiving playback instructions for playing the user-established reminder message” as recited in Appeal 2012-004419 Application 11/944,897 3 claim 1 (App. Br. 6–7; Reply Br. 2), and “a computer configured to provide a website having at least one web page that enables a user to enter a user- established reminder message and specify one or more conditions under which the user-established reminder message will be presented at the vehicle” as recited in claim 10 (App. Br. 7–8; Reply Br. 3). We agree. The Examiner finds Treyz discloses a voice memo as a user- established reminder message and emails for disclosing action taken when alerting a user (Ans. 5 and 16–17). However, as Appellant contends, the claims recite “receiving a user-established reminder message” and “playback instructions for playing the user-established reminder message” (emphasis added) (App. Br. 6). The voice clip or audible alert notification in Treyz, and relied on by the Examiner, merely provides notification that a new message, email or otherwise, has arrived and does not provide instructions for playback of the user-established reminder message (App. Br. 6; Reply Br. 2). Claim 10 similarly recites, “specify one or more conditions under which the user-established reminder message will be presented at the vehicle.” The Examiner rejects this feature applying the same portions of Treyz as relied upon in addressing the “playback instructions” of claim 1 (see, e.g., Ans. 5, 8). Thus, we understand the conditions of claim 10 to be equivalent to the playback instructions of claim 1. Therefore, we also agree with Appellant that Treyz does not disclose the conditions recited in claim 10 (App. Br. 8; Reply Br. 3). Appeal 2012-004419 Application 11/944,897 4 In light of the above, we conclude the Examiner erred in finding Treyz anticipates independent claims 1 and 10, and dependent claims 2–9 and 11–14, not separately argued (see App. Br. 7, 9).1 DECISION The Examiner’s decision rejecting claims 1–14 is reversed. REVERSED rwk 1 We have reviewed the claims as anticipated under 35 U.S.C. § 102. We have not considered a 35 U.S.C. § 103 rejection, as an obviousness rejection is not before us. However, upon any further prosecution, the Examiner may wish to consider such a rejection.