Ex Parte Kleve et alDownload PDFPatent Trial and Appeal BoardJul 22, 201612565214 (P.T.A.B. Jul. 22, 2016) Copy Citation 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. Appeal2014-006481 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 2 Appeal2014-006481 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. 3 Appeal2014-006481 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 4 Appeal2014-006481 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. 5 Appeal2014-006481 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 6 Copy with citationCopy as parenthetical citation