OMEGA PATENTS, L.L.C. (PATENT OWNER) et al.

Patent Trials and Appeals Board

Jan 28, 2020

90014121 - (D) (P.T.A.B. Jan. 28, 2020)

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.
90/014,121 04/10/2018 7671727 17926.0004USRX 2810
27975 7590 01/28/2020
ADD&G - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE
P.O. BOX 3791
ORLANDO, FL 32802-3791
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/28/2020 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 OMEGA PATENTS, L.L.C.
Patent Owner and Appellant
____________

Appeal 2020-000387
Reexamination Control 90/014,121
U. S. Patent 7,671,727 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–10 and 12–25. We have jurisdiction under 35
U.S.C. §§ 134 and 306, and we heard the appeal on January 13, 2020.2
We AFFIRM.

1 Appellant identifies the real party in interest as Omega Patents, L.L.C.
Appeal Br. 4.
2 Throughout this opinion, we refer to the transcript of this oral hearing filed
Jan. 22, 2020 (“Tr.”).
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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on April 10, 2018 of United States Patent 7,671,727 (“the ’727 patent”),
issued to Kenneth E. Flick on March 2, 2010.
The ’727 patent describes a vehicle speed exceeded notification
device including a controller for reading data related to vehicle speed from a
vehicle data communications bus, and determining when a vehicle speed
exceeds a speed threshold for a first time period. See Abstract. Claim 1 is
illustrative of the invention and is reproduced below:
1. A speed exceeded notification device for a vehicle
of a type comprising a vehicle data communications bus
extending throughout the vehicle, and at least one vehicle
device generating data related to vehicle speed on the vehicle
data communications bus, the speed exceeded notification
device comprising:
a wireless communications device; and
a controller to be coupled to the vehicle data
communications bus for reading the data related to vehicle
speed from the vehicle data communications bus, and
determining when a vehicle speed exceeds a speed
threshold for a first time period and based thereon cooperating
with said wireless communications device to send a remote
vehicle speed exceeded notification, and
wherein the remote vehicle speed exceeded notification
comprises a vehicle position.

RELATED PROCEEDINGS
This appeal is said to be related to various pending proceedings. First,
Appellant informs us of eight related reexamination proceedings involving
various patents as follows:
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Reexamination Control Corresponding U.S. Patent
90/013,741 6,756,885
90/014,038 6,756,885
90/013,832 7,671,727
90/013,587 8,032,278
90/013,851 8,032,278
90/014,309 8,032,278
90/013,659 6,346,876
90/014,122 6,346,876

See Appeal Br. 4, 6–7; Reply Br. 3–4. We rendered decisions in connection
with appeals in reexamination proceedings 90/013,851 and 90/014,122. See
See Ex parte Omega Patents, L.L.C., Appeal No. 2018-008119 (PTAB Nov.
13, 2018); see also Ex parte Omega Patents, L.L.C., Appeal No. 2019-
006299 (PTAB Dec. 3, 2019).
Appellant also informs us of related litigation involving Appellant and
Requester (CalAmp Corporation) (“CalAmp litigation”). Appeal Br. 4–5;
Reply Br. 4. This litigation includes a case where the U.S. Court of Appeals
for the Federal Circuit (“Federal Circuit”), among other things, affirmed a
jury’s verdict in a case from the Middle District of Florida that the ’727
patent’s asserted claims were valid.3 See Omega Patents, LLC v. CalAmp
Corp., 920 F.3d 1337, 1353 (Fed. Cir. 2019).

3 Although the court set aside the infringement judgment regarding the ’727
patent’s original claims 1 and 10, it nonetheless affirmed the lower court’s
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Also, Appellant notes that a second trial involving Appellant and
Requester was held the week of September 30, 2019 with a Jury Verdict
finding that Requester infringed the’727 patent. Reply Br. 2.
Lastly, Appellant informs us that the parties settled in connection with
an infringement trial involving Enfora, Inc. and Appellant. Appeal Br. 6;
Reply Br. 3.

THE REJECTION
The Examiner rejected claims 1–10 and 12–25 under 35 U.S.C.
§ 102(e) as anticipated by McClellan (US 7,859,392 B2; issued Dec. 28,
2010; filed May 22, 2007). Ans. 3–33.4

SUBSTANTIAL NEW QUESTION OF PATENTABILITY (SNQ)
Appellant argues that the present reexamination was improperly
granted due to the alleged inequities of multiple reexamination requests that
are said to not only waste USPTO resources, but are also said to be unfair to
Appellant. Appeal Br. 46–51; Reply Br. 14–15. According to Appellant, we
should apply a standard similar to that used by the Board in deciding to
institute trials for follow-on petitions in inter partes review proceedings.
See Appeal Br. 47–51.

judgment that CalAmp directly infringed the ’727 patent’s original claim 11
that corresponds to amended claim 1. See Omega Patents, 920 F.3d at 1353,
1355 (noting that the ’727 patent’s original claim 1 was amended during ex
parte reexamination to incorporate the limitations of dependent claim 11).
4 Throughout this opinion, we refer to (1) the Appeal Brief filed July 12,
2019 (“Appeal Br.”); (2) the Examiner’s Answer mailed August 13, 2019
(“Ans.”); and (3) the Reply Brief filed October 15, 2019 (“Reply Br.”).
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Appellant’s arguments, however, are untimely and are, therefore, not
before us. Notably, Appellant must first request reconsideration of the SNQ
before the Examiner before we can review that issue. Manual of Patent
Examining Procedure (MPEP) § 2274(VI) (9th ed. Rev. 08.2017, Jan. 2018).
That was not done here.
To be sure, in a response after final rejection filed May 13, 2019,
Appellant included a section entitled “The Reexamination was Improperly
Granted” on pages 49 to 53 with arguments similar to those raised on pages
46 to 51 of the Appeal Brief. These arguments, however, did not
specifically request that the Examiner reconsider the SNQ issue, nor were
they identified in the Appeal Brief as a communication in which Appellant
first requested reconsideration before the Examiner in accordance with
MPEP § 2274(VI). But leaving these defects aside, Appellant’s “improper
grant” arguments are untimely, for they were first presented after final
rejection and, consequently, after prosecution closed. See MPEP § 2272 (“It
is intended that prosecution before the examiner in a reexamination
proceeding will be concluded with the final action. Once a final rejection
that is not premature has been entered in a reexamination proceeding, the
patent owner no longer has any right to unrestricted further prosecution.”).
As Section 2272 of the MPEP explains, both the Examiner and
Appellant should identify and develop all issues before the final Office
action, including presenting evidence. Therefore, even if Appellant’s
arguments regarding the alleged improper reexamination grant could
somehow be construed as a request for the Examiner to reconsider the SNQ
issue, such a request was nevertheless untimely and runs counter to MPEP
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procedure that, by encouraging identifying and developing all issues before
final rejection, promotes compact prosecution. This practice is especially
important where, as here, the proceeding is treated with special dispatch.
See 35 U.S.C. § 305; see also Ethicon, Inc. v. Quigg, 849 F.3d 1422, 1426
(Fed. Cir. 1988) (noting that “special dispatch” envisions some type of
unique, extraordinary, or accelerated movement).
The procedural mandates of MPEP § 2274(VI) only bolster this
notion. As noted previously, MPEP § 2274(VI) requires that Appellant
request reconsideration of the SNQ issue before the Examiner before we can
review that issue. Although MPEP § 2274(VI) provides two non-limiting
examples of when this reconsideration can be requested, namely in a patent
owner’s statement or response under 37 C.F.R. §§ 1.530 and 1.111,
respectively, this request must nevertheless be made not only before the
Appeal Brief, but also during prosecution before the Examiner—not after
prosecution closes—particularly when MPEP § 2274(VI) is interpreted in
light of the limitations of after-final practice noted in MPEP § 2272. See
MPEP § 2274(VI) (requiring that a patent owner first request consideration
before the Examiner, and then seek review of the Examiner’s SNQ
determination before the Board); see also id. (requiring a patent owner
identify in its Appeal Brief the communication in which the owner first
requested reconsideration of the SNQ before the Examiner); MPEP § 2272
(discussing after-final practice). To the extent that Appellant contends that
MPEP § 2274(VI) permits requesting reconsideration of the SNQ before the
Examiner in the first instance after prosecution closes, as is the case here,
such a belated request runs counter to any reasonable interpretation of (1)
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MPEP § 2274(VI) that requires the request to be made before appeal, and (2)
MPEP § 2272 that indicates that prosecution is closed in the reexamination
proceeding when the Examiner enters a final rejection.
That is not to say, however, that despite an Appellant not complying
with the procedural mandates of MPEP § 2274(VI), the Board cannot review
the Examiner’s SNQ determination that is so facially improper that no
reasonable mind could accept it such that there is no substantial evidence to
support the determination. See In re Gartside, 203 F.3d 1305, 1312 (Fed
Cir. 2000). One such circumstance would be when it is indisputably clear
from the record that a patentability question deemed as an SNQ was already
decided in the original examination, for no procedural rule can enable
reexamination under those circumstances. See In re Recreative
Technologies Corp., 83 F.3d 1394, 1396–98 (Fed. Cir. 1996).
But that is not the case here. Although the patentability question at
issue in Recreative Technologies involved the same prior art reference as the
question decided in the original examination—not different references as is
the case here—cumulative references that repeat the teachings of previously-
considered prior art nonetheless preclude an SNQ, for they do not raise a
patentability question different from that considered in an earlier
examination. See MPEP §§ 2242, 2247. These situations, however, are rare
as noted in the following guidance from the MPEP:

For purposes of reexamination, a cumulative reference that is
repetitive is one that substantially reiterates verbatim the
teachings of a reference that was either previously relied upon
or discussed in a prior Office proceeding even though the title
or the citation of the reference may be different. However, it is
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expected that a repetitive reference which cannot be considered
by the Office during reexamination will be a rare occurrence
since most references teach additional information or present
information in a different way than other references, even
though the references might address the same general subject
matter.

MPEP § 2258.01
Therefore, because Appellant did not preserve the SNQ issue for
appeal by first requesting reconsideration of the SNQ before the Examiner,
that issue is not before us.
But even if the SNQ issue was before us—which it is not—we are still
unpersuaded that the Examiner’s SNQ determination is erroneous. Not only
are Appellant’s procedural grievances petitionable matters,5 Appellant does
not specifically show error in the Examiner’s SNQ determination. Rather,
Appellant merely contends that serial and sequential reexamination requests
are allegedly unfair and waste resources, and, therefore, we should apply a
standard similar to that used by the Board in deciding to institute trials for
follow-on petitions in inter partes review proceedings. See Appeal Br. 47–
51. We decline to do so here.
Accordingly, we are unpersuaded of error in the Examiner’s SNQ
determination.

5 See MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining
to objections and formal matters which are not properly before the Board.”);
see also MPEP § 1201 (“The Board will not ordinarily hear a question that
should be decided by the Director on petition . . . .”).

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THE ANTICIPATION REJECTION
The Examiner finds that McClellan discloses every recited element of
claims 1–10 and 12–25. Ans. 3–33.
Appellant does not dispute these findings, but rather argues that
McClellan is unavailable as prior art due to the ’727 patent’s priority that is
based on, among other things, U.S. Patent 7,720,597 (“’597 patent”) whose
corresponding application 11/076,259 (“’259 application” or “’259 Appl.”)
is a parent to the ’727 patent’s underlying application (11/804,703). See
Appeal Br. 15–46; Reply Br. 5–14. According to Appellant, the ’597 patent
supports Appellant’s possession of the recited (1) vehicle device generating
data related to vehicle speed on a vehicle data communications bus; and (2)
reading that data from the bus, particularly when the ’597 patent is
considered in light of Appellant’s U.S. Patent 6,011,460 (“’460 patent”) that
the ’597 patent references. See Appeal Br. 15–46; Reply Br. 5–14.

ISSUE
Under § 102, has the Examiner erred in rejecting claims 1–10 and 12–
25 by finding that McClellan discloses every recited limitation? This issue
turns on whether McClellan qualifies as prior art to the ’727 patent.

ANALYSIS
As noted above, the Examiner’s findings regarding McClellan’s
anticipating the recited limitations (Ans. 3–9) are undisputed; rather, this
dispute turns solely on whether McClellan qualifies as prior art to the ’727
patent. Accordingly, we confine our discussion to that issue.
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The ’727 patent that is the subject of the present reexamination
proceeding issued from U.S. Application 11/804,703 (“’703 application”)
filed August 24, 2007. The ’703 application is a continuation-in-part of U.S.
Application 11/076,259 (“’259 application” or “’259 Appl.”), filed March 9,
2005, now U.S. Patent 7,720,597.6
The McClellan reference issued on December 28, 2010, but was filed
on May 22, 2007, which is before the ’703 application’s filing date.
McClellan’s filing date, however, is after the filing date of the ’259
application in the ’727 patent’s priority chain.7 Therefore, it is crucial that

6 Although the ’727 patent’s priority is also based on other U.S. applications,
they are irrelevant to the issue before us.
7 McClellan is also based on U.S. provisional application 60/802,478 filed
May 22, 2006. Although the Examiner cites this provisional application in
the rejection (see Ans. 4–8), its filing date—like that of McClellan’s
corresponding utility application—is after the ’259 application’s filing date.
We, therefore, need not refer to McClellan’s provisional application, for it is
irrelevant to the issue before us. Accordingly, we need not address the
related issue of whether McClellan’s provisional application adequately
provides (1) support for the subject matter of McClellan’s claimed invention
in McClellan’s patent under 35 U.S.C. § 112, first paragraph, and (2) similar
§ 112, first paragraph support for the particular subject matter from
McClellan relied on in the rejection—findings that must be made for
McClellan to be entitled to the filing date of its provisional application.
See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380
(Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of
the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112, ¶ 1.”) (emphasis added) (citing In re
Wertheim, 646 F.2d 527, 537 (CCPA 1981)); see also Dynamic Drinkware
at 1382 (“A provisional application’s effectiveness as prior art depends on
its written description support for the claims of the issued patent of which it
was a provisional.”) (emphasis added). Accord Amgen v. Sanofi, 872 F.3d
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the ’259 application supports possession of the claimed invention to antedate
the McClellan reference.
Turning to the ’727 patent’s claim 1, the claim recites, in pertinent
part, (1) at least one vehicle device generating data related to vehicle speed
on a vehicle data communications bus extending throughout the vehicle; and
(2) a controller for reading that data from the bus. Independent claims 13
and 19 recite commensurate limitations. Our emphasis underscores that the
data that is generated on—and read from—the bus need not be vehicle
speed, but rather merely be related to speed. The ’727 patent explains that
this data may include (1) a vehicle speed signal; (2) geographical position
data, such as based on Global Positioning System (GPS) position data; or (3)
engine revolutions per minute (RPM) in combination with transmission
gearing that may be used to calculate vehicle speed. ’727 patent, col. 4, ll.
9–17.
Another key aspect of the claimed invention is that this speed-related
data is not only generated on the bus, but is also read from that bus, where
the bus extends throughout the vehicle. This functionality is shown in the
’727 patent’s Figure 1, reproduced below, where vehicle device 22 generates
speed-related data on vehicle data communications bus 21, and controller 24
reads this data from that bus. See ’727 patent, col. 4, ll. 3–9, 20–22.

1367, 1380 (Fed. Cir. 2017); MPEP § 2136.03(III); Robert W. Bahr,
Memorandum to Patent Examining Corps, Critical reference date under pre-
AIA 35 U.S.C. § 102(e) of a U.S. patent or U.S. published application
claiming the benefit of a prior U.S. provisional application during
examination of an application, USPTO, Apr. 5, 2018 (citing Amgen).
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’727 patent Figure 1 showing vehicle device generating speed-related
data on bus, and controller reading data from that bus

This functionality that is disclosed clearly and unambiguously in the
’727 patent is, however, not disclosed in the parent ’259 application that best
reflects the corresponding ’597 patent’s disclosure as originally filed.8
Leaving aside the fact that the ’259 application lacks a figure similar to the
’727 patent’s Figure 1 and its associated description noted above, we find
Appellant’s reliance on the ’259 application’s Figures 2 and 6 and associated
description unavailing to show possession of the speed-related data
generation and reading functions of the claimed invention—even when
considered in light of Appellant’s ’460 patent that the ’259 application
references in paragraph 149. See Appeal Br. 15–46; Reply Br. 5–14.

8 Although Appellant and the Examiner refer to the ’597 patent regarding
whether it supports possession of the claimed invention, we nonetheless
refer to the ’597 patent’s corresponding ’259 application because it best
reflects the disclosure as originally filed.
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The ’259 application’s Figure 1 shows a vehicle 21 with vehicle
tracking unit 25 connected to vehicle devices 26 and vehicle security system
27. As shown below, Figure 2 of the ’259 application shows vehicle
tracking unit 25 includes, among other things, controller 40 connected to
position determining device 42 that may be provided by a GPS receiver.
’259 Appl. ¶ 34.

Figure 2 of the ’259 application showing vehicle tracking unit’s
controller 40 connected to position determining device 42

Notably, position determining device 42 generates data that is at least
related to vehicle speed given its GPS data that is used in connection with
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generating a vehicle speeding alert in the flowchart of Figure 6. See ’259
Appl. ¶ 92 (noting that GPS detection is used in connection with (1)
indicating vehicle speed, (2) the location where speeding started, and (3)
how long speeding occurred). Therefore, the position determining device is
a device that generates data related to vehicle speed. But we cannot say that
the positioning determining device is a “vehicle device” consistent with the
’259 application’s parlance, particularly in view of paragraph 29 indicating
that vehicle tracking unit 25 interfaces with various vehicle devices, such as
security sensors, door locks, etc.—devices that are distinct from the
positioning determining device that is part of the vehicle tracking unit.
Accord Ans. 36 (finding that “other” vehicle devices are connected to the
controller’s input/output circuitry 53).
But even assuming, without deciding, that the position determining
device 42 could somehow be considered a “vehicle device,” we cannot
say—nor has Appellant shown—that the position determining device
generates speed-related data on a vehicle data communications bus as
claimed, let alone on a bus that extends throughout the vehicle, to show
possession of that feature. Notably, the ’259 application’s Figure 2 shows
both the controller and position determining device located within the
vehicle tracking unit 25 with a double-arrow connecting those contained
components. Accord Declaration By Joseph C. McAlexander, III Under
37 C.F.R. § 1.132 dated Oct. 27, 2018 (Evid. App. Ex. 1) (“McAlexander
Decl.”) ¶ 15 (acknowledging that the controller and positioning determining
device are in the vehicle tracking unit). Nor does the ’259 application’s
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Figure 2 show a data communications bus, let alone one that extends
throughout the vehicle as claimed.
To be sure, the ’259 application’s paragraph 149 indicates that, in all
embodiments, the “tracking device”—which the Examiner equates to vehicle
tracking unit 25 (Ans. 36)—may communicate with other vehicle devices
via a vehicle data communications bus. But the ’259 application does not
specify what these “other” vehicle devices are, despite indicating in
paragraph 29 that vehicle tracking unit 25 interfaces with various vehicle
devices, such as security sensors, door locks, etc. Nor does the ’259
application show or describe a vehicle data communications bus with
sufficient particularity to show possession of functionality of the recited
components that generate and read speed-related data to and from that bus,
let alone one that extends throughout the vehicle as claimed.
The ’259 application’s paragraph 149, however, notes that further
aspects of interfacing with a vehicle data communications bus are described
in U.S. Patents 5,719,551 and 6,011,460. According to Appellant, the ’460
patent provides the requisite support for the disputed limitations, particularly
in light of the ’460 patent’s reference to various Society of Automotive
Engineers (SAE) documents that describe an associated data bus standard.
See Appeal Br. 26–28 (quoting ’460 patent, col. 2, ll. 31–53).
As shown below, the ’460 patent’s Figure 1 illustrates a vehicle
security system with a central processing unit (CPU) 15 connected to a data
communications bus interface 15 that is connected to (1) ten vehicle input
devices 20–28, and (2) 14 output devices 30–46. See ’460 patent, col. 4, l.
44 – col. 5, l. 31.
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Figure 1 of the ’460 patent showing vehicle devices connected to data
communications bus interface

Although the 24 vehicle devices in the ’460 patent are connected to a
data communications bus as shown above, none of them generate data
related to vehicle speed. Accord Ans. 45 (noting that none of the 24 listed
devices that communicate with the CPU in the ’460 patent include position
determining or “speed type” devices).
Given these shortcomings, the ’460 patent does not provide the
requisite support to show possession of the recited vehicle device that
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generates data related to vehicle speed on a data communications bus, let
alone such a bus that extends throughout the vehicle as claimed. Nor does
the ’460 patent support possession of a controller for reading the data related
to vehicle speed from that bus.
To be sure, the ’460 patent contemplates other inputs to the controller
11, as well as receiving an input signal from a remote transmitter 50 which
can be a handheld unit such as that shown in Figure 2 or a central station.
See ’460 patent, col. 5, ll. 6–10, 32–65. These alternatives, however, do not
change our conclusion. First, Appellant’s reliance on the ’460 patent’s
remote transmitter’s functionality, including its implementation as a central
station, for ostensibly supporting possession of the claimed invention was
not raised in the Briefs, but rather was raised for the first time on appeal in
the oral hearing. Compare Appeal Br. 26–27, 34–36; Reply Br. 10–12
(discussing the ’460 patent) with Tr. 9–10. As such, these particular
arguments, which were not presented to the Examiner, are waived as
untimely, nor has Appellant shown good cause to present them in the first
instance at the oral hearing. See MPEP § 1209 (“At the oral hearing,
appellant may only rely on evidence that has been previously entered and
considered by the primary examiner and present arguments that have been
relied upon in the brief or reply brief.”) (emphasis added).
But even if these particular arguments were timely presented—which
they were not—we still find them unpersuasive to show possession of the
claimed invention. Even assuming, without deciding, that the central station
in the ’460 patent’s column 5, lines 59 to 63 can be the central station 88
shown in the embodiment of Figure 6A that is connected to a satellite link as
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described in column 7, lines 31 to 48, ordinarily skilled artisans would still
have to infer that this functionality could somehow be applied in connection
with the position determining device 42 in the ’259 application that receives
signals from satellites 38 or can be based on “other satellite transmissions.”
See ’259 Appl. ¶¶ 34–35. Leaving aside the fact that central station 88 is not
connected directly to bus 62 in the ’460 patent’s Figure 6A, and that the ’259
application does not specify these “other satellite transmissions” with
particularity, applying the ’460 patent’s functionality regarding the ability of
a remote transmitter, such as a central station, to provide input signals to a
bus that extends throughout the vehicle in connection with the functionality
of the controller and positioning determining device in the ’259 application’s
Figure 2 would have, at best, been obvious from the collective disclosures
cited by Appellant.
Although the written description requirement does not demand any
particular form of disclosure or require a verbatim recitation, a description
that merely renders the invention obvious does not satisfy the requirement.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
(en banc). Therefore, to the extent that Appellant contends that it would
have been obvious to provide (1) a vehicle device that generates vehicle
speed-related data on a data communications bus that extends throughout the
vehicle, and (2) a controller that reads data from that bus, based on the ’259
application’s disclosure considered in light of the other cited documents,
such a position is unavailing in light of Ariad. Nor has Appellant shown that
the other patent that the ’259 application’s paragraph 149 references for
describing data communications bus interfacing aspects, namely U.S. Patent
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5,719,551, provides the requisite support to show possession of the disputed
limitations.
That the ’460 patent refers to various SAE documents, including
“‘Surface Vehicle Standard, Class B Data Communications Network
Interface,’ SAE J1850, July 1995” (“SAE J1850”) in column 2, lines 44 to
53 as Appellant indicates (Appeal Br. 26–28, 30–31), does not change our
conclusion. Despite Appellant’s arguments to the contrary (Appeal Br. 26–
28; Reply Br. 11–14), Appellant does not persuasively rebut the Examiner’s
finding that the SAE J1850 document and the related SAE J1979 document
do not support possession of the recited (1) vehicle device that generates
data related to vehicle speed on a data communications bus, and (2)
controller that reads that data from that bus, let alone a bus that extends
throughout the vehicle as claimed. See Ans. 41–42. As the Examiner
explains, these documents pertain to off-vehicle test equipment, albeit
involving speed data. See Ans. 41. Despite this reference to speed data in
connection with the diagnostic test data in the SAE documents, that is still
insufficient to show possession of the disputed limitations, even when
considered with the teachings of the other cited documents, including the
’259 application.
That is, even assuming, without deciding, that the SAE documents
teach that vehicle speed data can be transmitted over a vehicle data bus as
Appellant contends (Reply Br. 12), ordinarily skilled artisans would still
have to infer that this capability for diagnostic test equipment could
somehow be applied to a data communications bus that extends throughout a
vehicle, where a controller and vehicle devices are connected to that bus,
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such that speed-related data is not only generated on the bus, but is also read
from that bus. In short, applying such a capability to a bus that extends
throughout the vehicle in connection with the functionality of the controller
and positioning determining device in the ’259 application’s Figure 2 would
have, at best, been obvious from the collective disclosures cited by
Appellant.
Therefore, to the extent that Appellant contends that it would have
been obvious to provide (1) a vehicle device that generates vehicle speed-
related data on a data communications bus that extends throughout the
vehicle, and (2) a controller that reads data from that bus, based on the ’259
application’s disclosure considered in light of the other cited documents,
such a position is unavailing in light of Ariad.
We reach this conclusion despite Mr. Alexander’s view that, in Figure
2 of the ’259 application, any connection between the tracking unit 25 and
vehicle devices, including door lock actuator 62, remote start device 63,
ignition switch 65, starter interrupt device 66, alarm indicator 67, or security
controller 28, could be via a vehicle data communications bus.
McAlexander Decl. ¶ 18. Although we appreciate Mr. Alexander’s insight
as to what variations to the ’259 application’s disclosed configuration might
be possible, such undisclosed alterations would have, at best, been obvious
from the ’259 application’s teachings, even when considered in light of the
other cited documents. But as noted previously, obviousness is insufficient
to show possession of these features. See Ariad, 598 F.3d at 1352.
We reach a similar conclusion regarding Mr. Alexander’s view that
the position determining device 42 in Figure 2 of the ’259 application could
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be located remote from the controller 40 and, therefore, use the vehicle data
bus for communications in a manner similar to the above-noted vehicle
devices if a bus were so provided. See McAlexander Decl. ¶ 18. But here
again, these undisclosed alterations would have, at best, been obvious from
the ’259 application’s teachings, even when considered in light of the other
cited documents and are, therefore, unavailing to show possession of these
features in light of Ariad. See Ariad, 598 F.3d at 1352.
To be sure, in some embodiments, the position determining device can
be provided based on (1) communications with a cellular telephone network
or (2) other satellite transmissions. ’259 Appl. ¶ 35. But even assuming,
without deciding, that the position determining device could somehow be
located remote from the vehicle tracking unit in these embodiments as
Appellant seems to suggest (see Appeal Br. 30–31; Reply Br. 8–9), the ’259
application still does not support possession of the disputed limitations, even
when considered in light of the other cited documents. That is, these
documents’ collective teachings do not support possession of connecting the
position determining device to a vehicle data communications bus to which
the controller is attached such that the controller reads the position
determining device’s generated data from that bus, let alone such a bus that
extends throughout the vehicle as claimed. At best, such undisclosed
alterations would have been obvious from the ’259 application’s teachings,
even when considered in light of the other cited documents. But as noted
previously, obviousness is insufficient to show possession of these features.
See Ariad, 598 F.3d at 1352.
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We reach this conclusion despite the ’259 application’s paragraph 149
indicating that, in all embodiments, the “tracking device”—which the
Examiner equates to vehicle tracking unit 25 (Ans. 36)—may communicate
with other vehicle devices via a vehicle data communications bus. As noted
previously, the ’259 application does not specify what these “other” vehicle
devices are, despite indicating in paragraph 29 that vehicle tracking unit 25
interfaces with various vehicle devices, such as security sensors, door locks,
etc. Nor does the ’259 application show or describe a vehicle data
communications bus with sufficient particularity to show possession of
functionality of the recited components that generate and read speed-related
data to and from that bus, let alone one that extends throughout the vehicle
as claimed.
In short, to suggest that the position determining device 42 in the ’259
application’s Figure 2 could somehow be considered one of the “other”
unspecified vehicle devices in paragraph 149 that communicate with the
“tracking device” via a vehicle data communications bus would have, at
best, been obvious from the ’259 application’s teachings, even when
considered in light of the other cited documents. But as noted previously,
obviousness is insufficient to show possession of these features. See Ariad,
598 F.3d at 1352. Appellant’s arguments in this regard (Appeal Br. 29–32;
Reply Br. 9) are, therefore, unpersuasive.
We reach a similar conclusion regarding Mr. McAlexander’s view
that vehicle speed determined in the ’259 application could be provided by
another device connected to the vehicle data bus, such as that shown in a
prior art reference cited by the Examiner. McAlexander Decl. ¶ 19.
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Although we appreciate Mr. McAlexander’s insights as to what variations to
the ’259 application’s disclosed configuration might be possible, such
undisclosed alterations would have, at best, been obvious from the ’259
application’s teachings, even when considered in light of the other cited
documents. But as noted previously, obviousness is insufficient to show
possession of these features. See Ariad, 598 F.3d at 1352.
On this record, then, we find that the parent ’259 application does not
provide written description support for (1) at least one vehicle device
generating data related to vehicle speed on a vehicle data communications
bus extending throughout the vehicle; and (2) a controller for reading that
data from the bus as claimed. Accordingly, the McClellan reference
qualifies as prior art to the ’727 patent.
Because the Examiner’s findings regarding McClellan are otherwise
undisputed, we are unpersuaded of error in the Examiner’s anticipation
rejection of claims 1–10 and 12–25 based on that reference.

CONCLUSION
The Examiner’s decision rejecting claims 1–10 and 12–25 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 12–25 102(e) McClellan 1–10, 12–25

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REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

sl
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