Ex Parte Flick

Board of Patent Appeals and Interferences

Jul 30, 2007

10626969 (B.P.A.I. Jul. 30, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH E. FLICK
____________

Appeal 2007-1535
Application 10/626,9691
Technology Center 2600
____________

Decided: July 30, 2007
____________

Before JAMES D. THOMAS, JEAN R. HOMERE, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

1 The present application is a continuation-in-part of U.S. Patent Application
Ser. No. 10/264,917 filed Oct. 4, 2002, which, in turn, is a continuation-in-
part of U.S. Patent Application Ser. No. 09/583,333 filed on May 31, 2000,
which, in turn, is a continuation-in-part of U.S. Patent Application No.
6,275,147, which, in turn, is a continuation of U.S. Patent Application No.
6,011,460, which, in turn, is a continuation-in-part of U.S. Patent
Application No. 5,719,551 (Specification ¶ 0001).

Furthermore, Appeal No. 2002-1784 (non-precedential) was decided in
connection with the parent 09/583,333 application noted above. Unless
otherwise indicated, however, the issues decided in that case are not
germane to the issues before us in the present appeal.
Appeal 2007-1535
Application 10/626,969

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-8 and 12-40. Claims 9-11 have been indicated as
containing allowable subject matter (Supp. Answer 2). We have jurisdiction
under 35 U.S.C. § 6(b). We reverse. However, we enter new grounds of
rejection under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellant invented a vehicle security system with a sensor that can
generate a pre-warning signal or an alarm signal depending on a sensed
threat level. The security system can be interfaced with a vehicle data
communications bus that extends throughout the vehicle.2 Claim 1 is
illustrative:
1. A vehicle security system for a vehicle of a type comprising a
vehicle data communications bus extending throughout the vehicle and
connected to a plurality of vehicle devices, the data communications bus
carrying data and address information thereover, the vehicle security system
comprising:

at least one vehicle security sensor interfacing with the vehicle data
communications bus extending throughout the vehicle and carrying data and
address information for generating a pre-warning signal or an alarm signal
depending upon a sensed threat level;

an alarm indicator; and

a vehicle security controller interfacing with the vehicle data
communications but extending throughout the vehicle and carrying data and

2 See generally Specification ¶¶ 0013-14.
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address information for causing said alarm indicator to generate a pre-
warning indication based upon the pre-warning signal, or for causing said
alarm indicator to generate an alarm indication based upon the alarm signal.

The Examiner relies on the following prior art references to show
unpatentability:
Hwang ‘697 US 5,084,697 Jan. 28, 1992
Hwang ‘407 US 5,216,407 Jun. 1, 1993
Nykerk US 5,315,285 May 24, 1994
Suman US 5,469,298 Nov. 21, 1995
Issa US 5,990,786 Nov. 23, 1999
Boreham US 6,005,478 Dec. 21, 1999

In addition, we rely on the following additional prior art references to
show unpatentability in a new grounds of rejection under 37 C.F.R.
§ 41.50(b):

Appellant’s admitted prior art in ¶¶ 0006-0012 of the Specification.

Voss, Wolfgang et al., In-Vehicle Data Bus Systems - The Key for New
Concepts in Comfort and Convenience Electronics, Int’l Cong. & Expo.,
SAE Int’l, Detroit, MI, Feb. 26-29, 1996 (“Voss”).3

Leen, Gabriel et al., Expanding Automotive Electronic Systems, IEEE
Computer, Vol. 35, Issue 1, pp. 88-93, Jan. 2002, available at
http://wotan.liu.edu/docis/lib/goti/rclis/dbl/ieecom/(2002)35%253A1%253C
88%253AEAES%253E/www.cs.umd.edu%252Fclass%252Fspring2002%25

3 This reference was previously made of record. See Information Disclosure
Statement filed Mar 8, 2004.
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2Fcmsc818m%252Fdoc%252F0220%252Fexpanding.pdf (last visited Jul.
13, 2007) (“Leen”).4

1. Claims 1-3, 6, 8, 12-14, 17, 19-23, 25, 28-32, 35, 37, and 40 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Hwang ‘407 in
view of either Suman or Nykerk and further in view of Boreham.
2. Claims 4, 15, 26, 33, and 38 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hwang ‘407 in view of either Suman or Nykerk,
Boreham, and further in view of Hwang ‘697.
3. Claims 5, 7, 16, 18, 24, 27, 34, 36, and 39 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hwang ‘407 in view of either
Suman or Nykerk, Boreham, and further in view of Issa.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answers5 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

4 A copy of this reference is provided in the Evidence Appendix of this
opinion.
5 An Appeal Brief was first filed on Aug. 14, 2006. On Sept. 11, 2006,
however, a second Appeal Brief was filed to correct various informalities.
Also, an Examiner’s Answer was mailed Oct. 2, 2006 which was followed
by a Supplemental Examiner’s Answer mailed Nov. 15, 2006 to clarify the
status of the claims on appeal. Throughout this opinion, we refer to the Sept.
2006 Brief.
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Application 10/626,969

OPINION
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727,
82 USPQ2d 1395 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness can
be based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” Id., 127 S. Ct. at1740-41,
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82 USPQ2d at 1396. Such a showing requires “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id., 127 S. Ct. at 1741, 82 USPQ2d
at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding representative claim 1,6 the Examiner's rejection
essentially finds that Hwang ‘407 teaches a prealarm warning system with
every claimed feature except for carrying out communications using a data
bus extending throughout the vehicle. Although the Examiner concedes that
Hwang ‘407 fails to indicate that the data communication line between
emulator 102 and alarm controller 103 is a bus, the Examiner nonetheless
contends that a bus is a well-known type of communication line in vehicle
security systems (Answer 3-4).
The Examiner also cites Suman as teaching the “desirability of using
data bus 111 for communicating data for indication of vehicle security.” In

6 Appellant argues the independent claims together as a group. See Br. 8 and
12. Accordingly, we select independent claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
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addition, the Examiner relies on Nykerk for teaching the “desirability in a
vehicle security system of interfacing security alarm sensing data to data bus
64” which, according to the Examiner, extends “throughout the vehicle”
giving the limitation its broadest reasonable interpretation (Answer 4-5).
The Examiner asserts that because the data buses in both Suman and Nykerk
communicate with their respective wiring harnesses, the wiring harnesses
effectively act as a portion of the bus (Answer 5).
In addition, the Examiner cites a fourth reference, Boreham, for
teaching the desirability in a vehicle alarm system that, among other things,
can address devices other than a siren unit on a single serial data bus (Id.).
The Examiner then concludes that it would have been obvious to one
of ordinary skill in the art at the time of the invention to connect a prealarm
warning system disclosed by Hwang ‘407 over a vehicle data bus suggested
by either Suman or Nykerk and further use addressing over the data bus and
allow a bus to extend further throughout the vehicle as suggested by
Boreham to, among other things, utilize existing vehicle wiring (Answer 5-
6).
Appellant argues that the secondary references to Suman and Nykerk
teach away from using a data communications bus that extends throughout
the vehicle and carrying data and address information as claimed.
First, Appellant notes that the data bus 111 in Suman does not extend
throughout the vehicle as claimed, but rather is connected to various inputs
and the microcontroller on driver circuit 75. Appellant emphasizes,
however, that this driver circuit is confined within a housing 63 attached to
the vehicle roof. That is, the data bus in Suman is said to extend within the
driver circuit -- not throughout the vehicle (Br. 8; Reply Br. 8). With regard
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to Nykerk, Appellant notes that the data bus 64 likewise does not extend
throughout the vehicle as claimed, but is confined within the control module
57 of the self-contained alarm system 55. According to Appellant, Nykerk’s
data bus extends throughout the control module -- not throughout the vehicle
(Br. 8-9; Reply Br. 3-5).
The Examiner argues that both Suman and Nykerk disclose a data bus
means that extend through a vehicle between points of connection (i.e.,
between the microprocessor 60 and interface 88 in Nykerk or between an
interface means and a conductor in Suman) (Answer 8).
Appellant further argues that there is no motivation to selectively
discard the hardwired connections of Hwang ‘407 and replace them with the
confined data bus suggested by either Nykerk or Suman (Br. 10-12). The
Examiner responds that the skilled artisan would have found it obvious to
use a conventional bus connected to a vehicle alarm system as suggested by
Suman, Nykerk, or Boreham in conjunction with an alarm system using a
prealarm function to, among other things, employ the well-known
advantages of data buses, such as bi-directional communication with various
components (Answer 8-9).
We will not sustain the Examiner’s rejection of representative claim 1
essentially for the reasons noted by Appellant. As shown in Figures 6A and
6B, Suman’s data bus 111 is part of driver circuit 75. Specifically, the data
bus 111 is connected between input interface circuitry 100 and
microcontroller 77 (Suman, Figs. 6A-6B). Driver circuit 75, however, is
mounted on a circuit board 71 in housing 63 -- a housing that is attached to
the vehicle roof (Suman, col. 4, ll. 21-23 and 52-54; Fig. 2). Therefore, the
8
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data bus 111 is confined within the housing 63 and hardly extends
throughout the vehicle as claimed.
Nykerk fares no better in this regard. As shown in Figure 4, the data
bus 64 is part of the control module 57 of the self-contained alarm system 55
(i.e., the “INVISIBEAM” system) (Nykerk, col. 9, ll. 59-63; col. 11, ll. 11-
21; Fig. 4). Significantly, the control module portion of the INVISIBEAM
system can be positioned in a suitable out-of-the-way location such as under
the dash or seat, or in the trunk area (Nykerk, col. 10, ll. 7-10). Because the
control module is relatively small to enable its placement in these confined
locations, the extent of the data bus 64 confined within this control module
in Nykerk is likewise limited. In short, Nykerk’s data bus 64 -- like the data
bus of Suman -- hardly extends throughout the vehicle as claimed.
We also disagree with the Examiner that merely interfacing the data
bus to the wire harness 30 via interface 88 in Nykerk effectively extends the
data bus throughout the vehicle as claimed. The wire harness 30 is a distinct
component from the data bus 64. (See Nykerk, col. 11, ll. 53-62; Fig. 4).
Although selected data signals can be amplified and buffered by interface 88
and then presented to the wire harness for routing to various devices, the
wire harness 30 is not a data bus as the term is understood by skilled artisans
(i.e., a data bus that carries data and address information to multiple devices
via the same set of wires). Simply put, a wire harness connects various
devices using dedicated, point-to-point wiring. A data bus, however, does
not require such dedicated wiring since each device can be separately
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addressed using the same wiring for all devices.7 In any event, the very
labels used by Nykerk to identify the data bus 64 and wiring harness 30
respectively further suggest that they are distinct in structure and operation.
Boreham, however, is a closer question. Boreham discloses a siren
unit 2 with a CPU 4 that provides signals that activate an audible siren
responsive to trigger signals received on control input 10 via serial interface
12. The control input 10 is connected to a vehicle security control unit that
is able to (1) monitor the vehicle, (2) determine when an alarm condition
occurs, and (3) issue the appropriate trigger signal (Boreham, col. 2, ll. 41-
53; Fig. 1).
Depending on the siren unit’s configuration, the siren unit is triggered
in either of two ways: (1) the contents of a control data packet received by
the serial interface 12, or (2) a trigger signal on the control input 10
(Boreham, col. 4, ll. 28-31). If serial interface control is enabled, the CPU
must regularly receive (e.g., every second) a 24-bit control packet 54 from
the vehicle security control unit to prevent the siren from being activated
(Boreham, col. 4, l. 55 - col. 5, l. 12).
The details of this 24-bit control packet are provided in the table in
column 5 and Figure 6. Significantly, a four-bit address field is provided
(Bits 0-3) which enables the vehicle security control unit to address devices
other than the siren unit 2 on a single serial data bus (Boreham, col. 5, ll. 15-
60; col. 6, ll. 20-23; Fig. 6).

7 See Appeal No. 2002-1784 (BPAI 2002) (non-precedential), at 6 (“[A] bus
is a communications link that uses one set of wires to connect multiple
subsystems.”).
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Although the exact extent of this serial data bus is unclear from the
reference, Boreham nevertheless provides some indication of the ability of
the vehicle security control unit to communicate with vehicle devices other
than the siren unit. The vehicle security control unit can generate a warning
signal by causing an LED on the instrument panel to flash (Boreham, col. 7,
ll. 14-23). Moreover, in an alternative embodiment shown in Figure 8, the
vehicle security control unit can monitor the state of the ignition line 28 and
report its status to the siren unit’s CPU via the control packet (Boreham, col.
7, ll. 52-56; Fig. 8).
We recognize that Boreham does not expressly state that the vehicle
security control unit communicates with the vehicle’s instrument panel and
ignition line via the serial data bus. Nevertheless, the collective teachings of
Boreham strongly suggest that this is the case given the stated ability to
address multiple devices using the bus, or, at the very least, a viable
alternative to point-to-point wiring.
In any event, the fact that four data bits are provided in the control
packet for addressing various vehicle devices suggests that 16 different
devices can be addressed.8 In our view, the skilled artisan would have
reasonably inferred that addressing 16 different devices on a vehicle on a
single serial bus would reasonably involve extending the bus throughout the
vehicle to facilitate such communication. Even if we assume that these 16
devices could be within the same general vicinity in the vehicle, the clear
import of Boreham is that such devices could likewise be installed at various
locations throughout the vehicle, particularly in view of Boreham’s specific

8 Since there are four bits in the Address Field, 24 (or 16) unique addresses
can be accommodated in this field.
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references to communicating with the instrument panel and the ignition line.
In short, we see no reason why the serial data bus could not extend
throughout the vehicle to facilitate data communication with various vehicle
devices using the bus.
Notwithstanding these teachings in Boreham, we cannot sustain the
Examiner’s rejection of representative claim 1 based on the record before us,
particularly in light of the shortcomings of the other cited prior art and the
Examiner’s rationale in combining the four cited references in the manner
proposed. We are therefore constrained by the record before us to reverse
the Examiner’s rejection of representative claim 1 and claims 2, 3, 6, 8, 12-
14, 17, 19-23, 25, 28-32, 35, 37, and 40 which fall with claim 1. Since the
teachings of either Hwang ‘697 or Issa do not cure the deficiencies noted
above, we likewise reverse claims 4, 15, 26, 33, and 38 and claims 5, 7, 16,
18, 24, 27, 34, 36, and 39 for similar reasons.
The Examiner, however, has cited two references, Boreham and
Nykerk, which provide strong evidence of unpatentability for the reasons
indicated below. Accordingly, we enter new grounds of rejection under 37
C.F.R. § 41.50(b) on these and other prior art teachings.

New Grounds of Rejection Under 37 C.F.R. § 41.50(b)

At Least the Independent Claims are Unpatentable Over the Teachings of
Nykerk In View of Appellant’s Admitted Prior Art, Voss, or Leen

Claims 1, 12, 20, 25, 30, and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Nykerk in view of Appellant’s admitted prior art in the
Specification or Voss or Leen.
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Nykerk discloses an alarm system that issues a preliminary warning
before sounding an alarm (Nykerk, col. 1, ll. 19-29; col. 2, l. 64 - col. 3, l. 2).
To this end, a self-contained alarm system 55 (i.e., the “INVISIBEAM”
system) detects the presence of an intruder in a zone of protection. In
response to such detection, a preliminary warning vocally informs the user
that a protected region has been entered (i.e., a pre-warning signal). The
intruder is then given a predetermined time to move out of the protected area
before sounding the alarm (i.e., alarm signal) (Nykerk, col. 3, ll. 49-67; col.
6, l. 48 - col. 7, l. 10). Also, the INVISBEAM system can be used with
other conventional alarm systems (Nykerk, col. 7, ll. 32-63).
The alarm system 55 is connected to a control unit which is, in turn,
connected to a wire harness 30 (Nykerk, Fig. 1; col. 8, ll. 14-17; col. 9, ll.
59-63). The alarm system 55 is also connected to the wire harness via
interface/driver 88 (Nykerk, col. 11, ll. 53-62; Fig. 4). Significantly, the
wire harness 30 extends substantially the entire length of the vehicle with
various components (e.g., headlights, taillights, horn, sensors, etc.)
connected thereto as shown in Figure 1 (Nykerk, Fig. 1; col. 7, l. 64 - col. 8,
l. 23).
The claims differ from Nykerk in calling for a data communications
bus to extend throughout the vehicle. But replacing wiring harnesses in
vehicles with data communication buses to, among other things, reduce
weight, cost, and complexity, is well-known in the vehicle manufacturing
industry.
For example, Appellant indicates in the Specification that vehicle
manufacturers have attempted to reduce the amount of wiring within
vehicles to reduce weight, wiring problems, decrease costs, and reduce
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complications which may arise during troubleshooting. To this end,
manufacturers have adopted multiplexing schemes to reduce cables to three
or four wires and simplify the exchange of data among various onboard
electronic systems.9
Voss also documents similar efforts. See, e.g., Voss, at 1 (noting that
in-vehicle data bus (IVDB) technology met design goal of 20% wiring
harness reduction); see also id. (“Multiplex technology should decrease the
number of connections and reduce wire harness variants.”); id., at 5
(“Wiring harness reduction and simplification of sub-system installation are
main targets of multiplex- and data bus technology.”).
In fact, since the early 1980s, centralized and distributed networks
have replaced point-to-point wiring. See Leen, at 88; see also id. (“[I]n a
1998 press release, Motorola reported that replacing wiring harnesses with
LANs in the four doors of a BMW reduced the weight by 15 kilograms
while enhancing functionality.”). Moreover, Leen notes that one of the first
and most enduring automotive control networks, the “controller area
network” (CAN), was developed in the mid-1980s. Id.
In view of the clear trend in the industry for replacing wiring
harnesses with data communications buses in vehicles as evidenced above, it
would have been obvious to the skilled artisan at the time of the invention to
replace the wiring harness 30 in Nykerk that extends throughout the vehicle
with a data communications bus carrying data and address information
thereover to, among other things, reduce weight, cost, and complexity by

9 See Specification ¶ 0007 and 0009 (citing an article from 1996 describing
such efforts); see also id. ¶ 0010 (citing other references detailing
multiplexing systems in vehicles); ¶ 0011 (listing standards for vehicle
multiplex networks).
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precluding the need for dedicated, point-to-point wiring for communicating
with the various vehicle electrical components.
In this regard, one having ordinary skill, facing the wide range of
needs created by developments in the vehicular manufacturing industry (e.g.,
the increased demand for electronic devices in vehicles while at the same
time reducing cost and complexity), would have seen a benefit to upgrading
the wire harness 30 with a data communications bus.10 Moreover, the
effects of demands known to the design community (i.e., reducing vehicle
weight while accommodating increased demand for on-board electronic
devices), along with the prior art teachings noted above and the background
knowledge of the skilled artisan (an electrical engineer with several years of
related industry experience), would have reasonably motivated the skilled
artisan to utilize a data communications bus as a suitable replacement for a
wire harness.11

At Least the Independent Claims are Unpatentable Over the Teachings of
Boreham and Nykerk

Claims 1, 12, 20, 25, 30, and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Boreham in view of Nykerk.

10 See KSR, 127 S. Ct. at 1744 (“The proper question to have asked was
whether a pedal designer of ordinary skill, facing the wide range of needs
created by developments in the field of endeavor, would have seen a benefit
to upgrading Asano with a sensor.”).
11 See id., at 1740-41 (“Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.”).
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Boreham discloses a siren unit 2 with a CPU 4 that provides signals
that activate an audible siren responsive to trigger signals received on
control input 10 via serial interface 12. The control input 10 is connected to
a vehicle security control unit that is able to (1) monitor the vehicle, (2)
determine when an alarm condition occurs, and (3) issue the appropriate
trigger signal (Boreham, col. 2, ll. 41-53; Fig. 1).
Depending on the siren unit’s configuration, the siren unit is triggered
in either of two ways: (1) the contents of a control data packet received by
the serial interface 12, or (2) a trigger signal on the control input 10
(Boreham, col. 4, ll. 28-31). If serial interface control is enabled, the CPU
must regularly receive (e.g., every second) a 24-bit control packet 54 from
the vehicle security control unit to prevent the siren from being activated
(Boreham, col. 4, l. 55 - col. 5, l. 12).
The details of this 24-bit control packet are provided in the table in
column 5 and Figure 6. Significantly, a four-bit address field is provided
(Bits 0-3) which enables the vehicle security control unit to address devices
other than the siren unit 2 on a single serial data bus (Boreham, col. 5, ll. 15-
60; col. 6, ll. 20-23; Fig. 6).
Although the exact extent of this serial data bus is unclear from the
reference, Boreham nevertheless provides some indication of the ability of
the vehicle security control unit to communicate with vehicle devices other
than the siren unit. The vehicle security control unit can generate a warning
signal by causing an LED on the instrument panel to flash (Boreham, col. 7,
ll. 14-23). Moreover, in an alternative embodiment shown in Figure 8, the
vehicle security control unit can monitor the state of the ignition line 28 and
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report its status to the siren unit’s CPU via the control packet (Boreham, col.
7, ll. 52-56; Fig. 8).
Boreham does not expressly state that the vehicle security control unit
communicates with the vehicle’s instrument panel and ignition line via the
serial data bus. Nevertheless, the collective teachings of Boreham strongly
suggest that this is the case given the stated ability to address multiple
devices using the bus, or, at the very least, a viable alternative to point-to-
point wiring.
In any event, the fact that four data bits are provided in the control
packet for addressing various vehicle devices suggests that 16 different
devices can be addressed.12 The skilled artisan would have reasonably
inferred that addressing 16 different devices on a vehicle on a single serial
bus would reasonably involve extending the bus throughout the vehicle to
facilitate such communication. Even assuming that these 16 devices could
be within the same general vicinity in the vehicle, the clear import of
Boreham is that such devices could likewise be installed at various locations
throughout the vehicle, particularly in view of Boreham’s specific references
to communicating with the instrument panel and the ignition line.
In short, nothing precludes extending the serial data bus throughout
the vehicle to facilitate data communication with various vehicle devices
using the bus. In any event, Nykerk teaches extending a wire harness 30
substantially the entire length of the vehicle with various components (e.g.,
headlights, taillights, horn, sensors, etc.) connected thereto as shown in
Figure 1 (Nykerk, Fig. 1; col. 7, l. 64 - col. 8, l. 23). In view of this

12 Since there are four bits in the Address Field, 24 (or 16) unique addresses
can be accommodated in this field.
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teaching, the skilled artisan would have ample reason to extend the data bus
in Boreham to facilitate communication with electrical devices located at the
front and rear of the vehicle.
The claims also differ from Boreham in calling for a pre-warning
signal. But Nykerk discloses an alarm system that issues a preliminary
warning before sounding an alarm (Nykerk, col. 1, ll. 19-29; col. 2, l. 64 -
col. 3, l. 2). To this end, a self-contained alarm system 55 (i.e., the
“INVISIBEAM” system) detects the presence of an intruder in a zone of
protection. In response to such detection, a preliminary warning vocally
informs the user that a protected region has been entered (i.e., a pre-warning
signal). The intruder is then given a predetermined time to move out of the
protected area before sounding the alarm (i.e., alarm signal) (Nykerk, col. 3,
ll. 49-67; col. 6, l. 48 - col. 7, l. 10). Also, the INVISBEAM system can be
used with other conventional alarm systems (Nykerk, col. 7, ll. 32-63).
In view of Nykerk, it would have been obvious to the skilled artisan at
the time of the invention to provide a pre-warning signal in conjunction with
the system of Boreham so that the intruder was warned prior to issuing the
alarm thus encouraging the intruder to leave prior to sounding the alarm.

DECISION
We have reversed the Examiner’s rejection for all claims on appeal.
However, we have entered new grounds of rejection under 37 C.F.R.
§ 41.50(b) for independent claims 1, 12, 20, 25, 30, and 37. Although we
decline to reject every claim under our discretionary authority under 37
C.F.R. 41.50(b), we emphasize that our decision does not mean the
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remaining claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (amended effective Sept. 13, 2004, by final rule notice 69
Fed. Reg. 49,960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7,
2004)). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or new
evidence relating to the claims so
rejected, or both, and have the matter
reconsidered by the examiner, in
which event the proceeding will be
remanded to the examiner. . . .

(2) Request that the proceeding be
reheard under § 41.52 by the Board
upon the same record. . . .

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REVERSED
37 C.F.R. § 41.50(b)

eld

ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST P.A.
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE P.O. BOX 3791
ORLANDO, FL 32802-3791

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EVIDENCE APPENDIX

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