Ex Parte Kleve et al

Patent Trial and Appeal Board

Jul 22, 2016

12565214 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/565,214 0912312009
28395 7590 07/26/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Robert Bruce Kleve
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
81197148 1043
EXAMINER
KHATIB, RAM!
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
07/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BRUCE KLEVE and
JOHN ROBERT VAN WIEMEERSCH
Appeal2014-006481
Application 12/565,214
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Bruce Kleve and John Robert Van Wiemeersch (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims
1-9 and 21-30. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 10-20 have been cancelled. Br., Claims App. 2.
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Application 12/565,214
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A computer-implemented method comprising:
receiving at a computer a first diagnostic request signal
including at least one instruction for performing a diagnosis of
one or more vehicle components;
retrieving one or more threshold parameters to be met at
the vehicle before requested diagnosis can begin;
transmitting a diagnostic signal to a vehicle receiver
together with one or more threshold parameters and the at least
one diagnostic instruction;
receiving at least one second signal including one or more
diagnostic status identifiers identifying a diagnostic status of the
one or more vehicle components;
generating a message including at least one diagnostic
status of the one or more vehicle components based on the one
or more diagnostic status identifiers; and
displaying the message on a graphical display for vehicle
diagnosis and service.
REJECTIONS2
I. Claims 1, 2, 4--6, 21, 22, 24--26, and 30 stand rejected under
35 U.S.C. § 102(b) as anticipated by Sonnenrein '124
(US 2004/0112124 Al, pub. June 17, 2004).
2 The Examiner withdrew a rejection of claim 30 under 35 U.S.C. § 101 as
directed to non-statutory subject matter in view of the Amendment (dated
April 26, 2013) submitted by Appellants with the Appeal Brief. Ans. 3; see
Amendment 5. We find no formal indication in the record that the
Amendment was entered. However, in view of the Examiner's
acknowledgement of the Amendment in the Answer, we understand the
Examiner to have intended for it to be entered and, for the purposes of this
appeal, we treat it as having been entered. Should there be further
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Application 12/565,214
IL Claims 3 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sonnenrein '124 and Triphathi
(US 2003/0208309 Al, pub. Nov. 6, 2003).
III. Claims 7 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sonnenrein '124 and Sonnenrein '17 4
(US 2006/0095174 Al, pub. May 4, 2006).
IV. Claims 8 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sonnenrein '124, Sonnenrein '174, and Nagy
(US 2008/0082221 Al, pub. Apr. 3, 2008).
V. Claims 9 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sonnenrein '124 and Johnson
(US 2003/0004741 Al, pub. Jan. 2, 2003).
DISCUSSION
Rejection I -Anticipation
In contesting this rejection, Appellants argue for patentability of
claims 1, 2, 4---6, 21, 22, 24--26, and 30 as a group. Br. 5-6. We select claim
1 as representative, with claims 2, 4---6, 21, 22, 24--26, and 30 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Sonnenrein '124 discloses a computer-
implemented method satisfying all of the limitations of claim 1. Final Act.
4--5.
Appellants argue that Sonnenrein '124 does not disclose "retrieving
one or more threshold parameters to be met at the vehicle before requested
prosecution of this application, the Examiner may wish to clarify the
status of the Amendment.
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Application 12/565,214
diagnosis can begin," as recited in claim 1. Br. 5---6; see id., Claims App. 1.
Although Appellants acknowledge that Sonnenrein '124 "does discuss both
diagnostic parameters and initiation of a diagnosis, [Appellants assert that]
these two teachings alone are insufficient" to meet the claim limitation. Id.
at 5. According to Appellants, "the Examiner has provided no teaching or
suggestion of Sonnenrein [' 124] that points to the diagnostic parameters ...
being something that must be 'met at the vehicle before the diagnosis can
begin."' Id.
In response, the Examiner asserts that Sonnenrein '124 discloses that
"all the parameters that need to be met during a diagnostic process
performed onboard of a vehicle are gathered or retrieved from a remote
server and sent to the vehicle prior to sending the diagnostic request, i.e.
starting the diagnostic process." Ans. 3 (quoting Sonnenrein '124, para. 45).
Additionally, the Examiner asserts that "the statement of 'to be met at the
vehicle before requested diagnosis can begin' is essentially a statement of
intended or desired use" that does not serve to patentably distinguish the
claims from the prior art. Id. at 3--4.
The language in claim 1 reciting that the one or more threshold
parameters are "to be met" pertains to how the threshold parameters will be
used at some point in the future, such as in a step of meeting the threshold
parameters. However, steps or acts intended "to be" done at some point in
the future are not necessarily required to be done. Although Appellants'
Specification describes instances in which the threshold parameters are met, 3
3 Appellants' Specification describes that "[t]he parameter(s) may identify a
threshold level for activating one or more service or engineering functions."
Spec., 16, 11. 28-29. For example, "upon reaching the threshold, the
recording and/or collecting of diagnostic information from one or more
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Application 12/565,214
claim 1 does not recite any step in which the one or more parameters are
actually met or in which a determination is made of whether the parameters
are met. Accordingly, the language specifying that the threshold parameters
are "to be met" cannot be regarded as a positive limitation and, thus, cannot
be relied on to distinguish the claim from the prior art.
Sonnenrein '124 discloses a method for carrying out a remote
diagnosis in a vehicle that includes "determining diagnostic data in the
vehicle as a function of diagnostic mechanisms and/or diagnostic parameters
available in the vehicle at the time of the diagnostic data determination."
Sonnenrein '124, paras. 1, 3. In particular, Sonnenrein '124 discloses that
"[o]nce all the diagnostic mechanisms and diagnostic parameters required
for performing or at least for initiating the remote diagnosis have been
successfully transferred to the vehicle, in step SS the service center sends a
diagnostic command to the vehicle." Id., para. 45 (emphasis added). Thus,
in Sonnenrein '124, the parameters required for initiating a remote diagnosis
are retrieved and transferred to the vehicle and, once transferred, the remote
diagnosis is initiated. Accordingly, this feature of Sonnenrein '124
reasonably appears to satisfy the positive limitations in claim 1 directed to
retrieving threshold parameters at the vehicle before a diagnosis can begin.
For the above reasons, Appellants do not apprise us of error in the
Examiner's finding that Sonnenrein '124 anticipates the subject matter of
claim 1. Accordingly, we sustain the rejection of claim 1, as well as claims
vehicle components may commence." Id., 11. 30-32. The Specification also
describes "monitor[ing] for when [a] threshold parameter is reached" and
that "a determination is made as to whether the threshold has been met." Id.
at 14, 11. 31-32; 14, 1. 33-15, 1. 1. These additional steps, however, are not
required by claim 1.
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Application 12/565,214
2, 4---6, 21, 22, 24--26, and 30, which fall with claim 1, under 35 U.S.C.
§ 102(b) as anticipated by Sonnenrein '124.
Rejections 11-V - Obviousness
In contesting these rejections, Appellants rely on the arguments
presented for patentability of claims 1, 2, 4---6, 21, 22, 24--26, and 30, and
assert that Triphathi, Sonnenrein '174, Nagy, and Johnson do not cure the
purported deficiencies ofSonnenrein '124. Br. 6-7. For the reasons
discussed above, Appellants' arguments fail to apprise us of deficiencies in
Sonnenrein '124. Accordingly, we sustain the rejections of claims 3 and 23
as unpatentable over Sonnenrein '124 and Triphathi; claims 7 and 27 as
unpatentable over Sonnenrein '124 and Sonnenrein '174; claims 8 and 28 as
unpatentable over Sonnenrein '124, Sonnenrein '174, and Nagy; and claims
9 and 29 as unpatentable over Sonnenrein '124 and Johnson.
DECISION
The Examiner's decision rejecting claims 1-9 and 21-30 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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