ROBERT BOSCH GMBH

Patent Trials and Appeals Board

Apr 2, 2021

2020005542 (P.T.A.B. Apr. 2, 2021)

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.
14/899,266 12/17/2015 Eberhard KUEMMEL BOSC.P9457US/1000343057 3775
24972 7590 04/02/2021
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
New York, NY 10019-6022
EXAMINER
EVANS, GARRETT F
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EBERHARD KUEMMEL
Appeal 2020-005542
Application 14/899,266
Technology Center 3600
Before JENNIFER D. BAHR, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–36. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Robert Bosch
GmbH. Appeal Br. 1.
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Application 14/899,266

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CLAIMED SUBJECT MATTER
The claims are directed to a module usable in mobile fashion, and a
system, for vehicle diagnosis, in particular for motor vehicle diagnosis,
which uses a wireless data transfer system. Spec. 1, ll. 3–5. Claim 13,
reproduced below, is illustrative of the claimed subject matter:
13. A diagnostic module for vehicle diagnosis, comprising:
a) a communication unit configured for data transfer with
a control unit of a motor vehicle;
b) a diagnostic unit configured to:
i) perform a diagnosis of the motor vehicle based on
diagnostic data transferred from the control unit to the
communication unit; and
ii) read out first data from the control unit into the
diagnostic module, wherein the first data includes a vehicle
identification number that is uniquely associated with the motor
vehicle;
c) a transmitting unit configured to:
i) transfer diagnostic data of the diagnostic module from
the diagnostic module to a server via at least one of a mobile
radio network and the internet; and
ii) transfer the first data from the diagnostic module to the
server; and
d) a diagnostic module receiving unit configured to
receive, after transfer of the first data to the server, a diagnostic
software program transferred from the server to the diagnostic
module, wherein the diagnostic software program is transferred
from the server to the diagnostic module based on the vehicle
identification number uniquely associated with the motor
vehicle;
wherein the diagnostic unit is further configured to:
i) carry out the diagnosis of the motor vehicle on the basis
of the transferred diagnostic data, using the received diagnostic
software;
ii) generate diagnostic results based on the diagnosis of the
motor vehicle, using the received diagnostic software; and
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iii) transmit the diagnostic results to the server via the at
least one mobile radio network and the internet; wherein
information is imprinted on the diagnostic module, the
information being associated with the server from which the
diagnostic software program is received.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Newport US 2002/0103577 A1 Aug. 1, 2002
Snow US 6,434,455 B1 Aug. 13, 2002
Elcock US 2007/0156311 A1 July 5, 2007
McClellan US 2009/0177336 A1 July 9, 2009
Tsai US 2009/0222161 A1 Sept. 3, 2009
Kolb US 2010/0199080 A1 Aug. 5, 2010
Lundsgaard US 2014/0195100 A1 July 10, 2014

Mark Trumper, “How to Create an Effective Product Label,” Creative
Pro, August 12, 2012.
REJECTIONS
Claims 13, 14, 18, and 21–24 are rejected under 35 U.S.C. § 103 as
being unpatentable over Snow, Newport, Kolb, and McClellan. Final Act. 3.
Claims 15 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Snow, Newport, Kolb, McClellan, and the Examiner's
Official Notice. Final Act. 5.
Claims 17 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Snow, Newport, Kolb, McClellan, and Tsai. Final Act. 6.
Claims 19 and 28–30 are rejected under 35 U.S.C. § 103 as being
unpatentable over Snow, Newport, Kolb, McClellan, and Lundsgaard. Final
Act. 7.
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Claims 25–27 are rejected under 35 U.S.C. § 103 as being
unpatentable over Snow, Newport, Kolb, McClellan, and Elcock. Id.
Claims 31–36 are rejected under 35 U.S.C. § 103 as being
unpatentable over Snow, Newport, Kolb, McClellan and Trumper. Final
Act. 8.
OPINION
Obviousness
Regarding the contents of the prior art, Appellant’s sole argument is
that “McClellan does not discuss that message 300 is ‘imprinted on’ a
diagnostic device, wireless device 202, or computer 209.” Reply Br. 2; see
also Appeal Br. 5–6 (arguing same). Appellant takes issue with the
Examiner’s interpretation of “imprinted” stating that “the term ‘imprinted’ is
not the mere knowledge of addressing information.” Id. Appellant points to
the Specification as describing imprinting in stating:
A telephone number and/or e-mail address, to which the SMS
message or e-mail message is respectively to be sent so that it
can be received by server 12, can be imprinted for this purpose
on diagnostic module 6 or on the accessories, e.g. the operating
instruction and/or packaging, of diagnostic module 6.
Reply Br. 1–2.2 Appellant’s Specification appears to be referring to the fact
that the desired information is somehow physically printed on packaging or
the like, so that the user may reference the information in order to address
the message at issue. Nevertheless, this description is not a definition that
specifically excludes the Examiner’s interpretation. As the Examiner points
out, “‘[o]perating instructions’ are reasonably interpreted as the logic

2 Appellant does not cite to a specific portion of the Specification, but the
quoted portion corresponds to page 6, lines 26–31.
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programming instructions of the diagnostic module. Thus the interpretation
that the diagnostic module merely has knowledge of addressing information
to communicate messages with a server even aligns with the specific
example given in the specification.” Ans. 3–4.
Appellant fails to persuasively distinguish the claims from McClellan.
McClellan teaches that the address information, i.e., the server from which
the message is received, is contained within the message itself. As the
Examiner states, “the diagnostic module knowing and using an address
associated with the server necessitates ‘wherein information is imprinted on
the diagnostic module.’” Ans. 5. At the very least, the message itself is
contained within the diagnostic module’s software and the address
information is coded into the message such that it is imprinted. Again,
Appellant merely asserts that McClellan does not “imprint,” but provides no
example of what an actual imprint of information entails and without such a
distinguishing explanation we are not persuaded of error in the Examiner’s
rejection.
Moreover, even if “imprinted” requires physical printing of the
information onto the diagnostic module (e.g., the information printed on a
label), such a limitation would amount to printed matter that would be given
no patentable weight. In order to be patentable, such printed matter must
have a new and unobvious functional relationship between the printed matter
and the substrate. See MPEP § 2111.05. Here, there is no functional
relationship between the information and the substrate and even if there
were, simply printing contact information on a device is neither new nor
unobvious. Accordingly, Appellant’s entire argument revolves around
subject matter that should be given no patentable weight.
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Appellant’s only other argument against the Examiner’s rejection is
that it amounts to impermissible hindsight. Reply Br. 2; Appeal Br. 5.
Appellant asserts that “without the present disclosure, one skilled in the art
would not pick and choose the various alleged ‘teachings’ of the three cited
references and combine them in the way indicated by the Examiner.” Reply
Br. 2. The Examiner, however, provides specific motivations for each of the
proposed combinations without reference to Appellant’s Specification. See
Final Act. 4–5. Without some specific explanation as to how the Examiner’s
motivations are gleaned only from Appellant’s Specification, we are not
persuaded of error.
Appellant provides no separate argument for any of the dependent
claims. Accordingly, our disposition of the claims stands or falls with claim
13. Given that we are not persuaded of error in the Examiner’s rejection of
claim 13, we sustain the Examiner’s rejection of claims 13–36.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
More specifically,

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 14, 18,
21–24
103 Snow, Newport,
Kolb, McClellan
13, 14, 18,
21–24

15, 16 103 Snow, Newport,
Kolb, McClellan,
Official Notice
15, 16
17, 20 103 Snow, Newport,
Kolb, McClellan,
Tsai
17, 20
19, 28–30 103 Snow, Newport,
Kolb, McClellan,
Lundsgaard
19, 28–30
25–27 103 Snow, Newport,
Kolb, McClellan, and
Elcock
25–27
31–36 103 Snow, Newport,
Kolb, McClellan,
Trumper
31–36
Overall
Outcome
13–36

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED