REISSUE OFFICE ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This is a reissue office action for US Patent 8,816,837, which included original patent claims 1–12. Applicant amended the claims on 8/11/2025. The pending claims are 1–8, 10–12, 14–16, 21, 23, 25–26, 28–32, 34, 41, 43, and 46–48.
Consent of Assignee
Applicant on 9/18/2019 submitted a statement under 37 CFR 3.73(c) indicating the assignment of US Patent 8,816,837 to ACHAL WORLDWIDE ENTERPRISES A.G. Consent for this reissue submitted 9/18/2019 was signed by Edward Stauffer who has been identified as CEO of assignee, per the declaration submitted 9/18/2019 (at p. 2).
Declaration and Reason for Reissue
This Reissue has been filed pursuant to the original patent being at least partly inoperative or invalid by reason of “claiming more or less than he had the right”, specifically:
“Claim 1 was too broad in that it did not recite that the the message server comprises a filter unit configured to select messages stored on the message server and to select at least one stored message based on the speed and/or the location of the vehicle and/or the preference of the user and to transmit the at least one selected message over the wireless communication network dependent on the speed of the vehicle to the vehicle and/or to the user interface without any user interaction during motion of the vehicle to minimize distraction of the driver.” (2/19/2021 declaration p. 2).
Claim Interpretation
Claims 4, 25–26, 28–29, 31–32, 34 and 46 claim the particular content of messages for example (not an exhaustive list): point of interest messages, traffic flow disruption messages, emergency type messages, social media messages healthcare messages, diary and appointment messages, news messages, email messages, text message, social media account entry message, etc. These limitations are taken to represent non-functional descriptive material. The content of this material is not functionally or structurally related to the claimed invention. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994). See also MPEP 2111.05.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following phrases are being interpreted as invoking 35 USC 112 § 6th. They do not use the term “means”, but they do use “unit” as a generic placeholder:
Claim
112 6th phrase
Potential Corresponding Structure
1, 6–8, 12, 30
location and speed determination unit for determining location and speed of a vehicle
GPS receiver (2:32, 51), speed sensor in communication with an engine management system (2:52–53)
1, 12, 30
communication unit for transmitting information to a message server and receiving information from the message server over a wireless communication network
on-board computer 15 . . . a wireless communication network 12 which enables communication between the on-board computer 15 and a message server 20 (3:45–49).
1, 12, 21, 30, 43, 47–48
filter unit configured to select messages . . . and to derive an amount of information from the at least one selected message . . . and to transmit the at least one selected message
message server with filter criteria and matching capability and database (4:56–5:6)
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1–8, 10–12, 14–16, 21, 23, 25–26, 28–32, 34, 41, 43, and 46–48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 30 now claim that the message server is “configured to control the location information and/or the speed information communicated over the wireless communication network to the vehicle and/or to the user interface”. There is no support in the original disclosure for such claim language. The patent indeed supports sending certain information to the vehicle (or to the UI), yet it does not support “controlling” (or communicating) this particularly claimed information to the vehicle (or to the UI). The claims include a unit for determining “location and speed of a vehicle”, and require that the server is adapted to receive “location information and speed information of the vehicle”. This particular information is not then communicated or controlled back to the vehicle.
Claims 1, 11, 12 and 30, there is no support for the ability/step to derive content of a selected message “based on different magnitudes of moving speeds of the vehicle”. Applicant fails to provide an explanation of support for this claim limitation. The disclosure does not support multiple levels of deriving. The disclosure describes a limited version of the selected message (a notification for an email or an icon for a social media entry) for a moving speed close to the speed limit or the full version of the selected message (the entire email contents or the entire social media message entry) for a static vehicle. See 5:44–60 as an example. The disclosure mentions deriving “dependent on the velocity” which is consistent with this single stair-step deriving functionality, but falls short of describing multiple levels of deriving based on velocity. There is no teaching that multiple moving speeds results in multiple levels of derived content. The disclosure is limited to a single derived quantify of information or the entire information.
Claim 23, there is no support for the selecting step to be responsible for limiting the information received. The limiting of information appears to be due to the deriving step.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1–8, 10–11, 14–16, 21, 23, 25–26, 28–32, 34, 41, 43, and 46–48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 and 30, there is no antecedent basis for “the location and/or the speed information communicated over the wireless communication network to the vehicle and/or to the user interface”.
Claims 1 and 30 recite unclear claim scope. It is not clear what the ability to “control” this information (i.e. “the location information and/or the speed information”) entails.
Claims 46–47 are rejected under pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 46 and 47 are not further limiting. They each specify that the filter unit is configured to transmit the derived content in the same manner as already specified in the parent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
35 USC § 251 Rejections
Claims 1–8, 10–11, 14–16, 21, 23, 25–26, 28–32, 34, 41, 43, and 46–48 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period.
35 U.S.C. 251 states in part that:
“No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent”.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claims 1 and 30 no longer require the server to be configured to “communicate the location and/or the speed information over the wireless communication network to the vehicle and/or to the user interface”.
Claims 1–8, 10–12, 14–16, 20, 21, 23, 25–34, 36, 40, 41, 43 and 46–48 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is detailed elsewhere in this office action, see “Claim Rejections - 35 USC § 112”.
Response To Arguments
Applicant states:
“Claims 1 and 30 have also been amended to recite that the message server is configured to control the location information and/or the speed information communicated over the wireless communication network to the vehicle and/or to the user interface. This is supported by…[multiple citations] also the Fourth Declaration of V. Thomas Rhyne III [¶ 33–34]” (8/11/2025 Remarks p. 13–14).
The citations to the disclosure broadly supporting bi-directional communication are not commensurate with the claims requiring the location information and/or the speed information to be communicated to the vehicle/UI. Nor is there support for server to “control” such information communicated to the vehicle/UI. The declaration likewise asserts broad bi-directional communication which is not disputed. The declaration points to information sent to the car that is based on the speed or location information but it is not communication of the claimed information. This is consistent with the 9/1/2023 findings of the PTAB.
Notification of Proceedings and Material Information
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this patent is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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