Secured Mobility, LLC

Patent Trials and Appeals Board

May 7, 2021

2020000356 (P.T.A.B. May. 7, 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.
14/211,722 03/14/2014 Emmanuel Enrique Lopez 18954-0018001 1074
26201 7590 05/07/2021
FISH & RICHARDSON P.C. (AU)
P.O BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
WU, ZHEN Y
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
05/07/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EMMANUEL ENRIQUE LOPEZ
____________________

Appeal 2020-000356
Application 14/211,722
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR.,
DAVID J. CUTITTA II, Administrative Patent Judges.

MacDONALD, 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 1–6, 15–20, 24, 26, and 28–39. Claims
7–14, 21–23, 25, and 27 have been cancelled. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest is Secured Mobility, LLC.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
A. Background
Wireless signal transmitter-receiver systems are employed
in a variety of security systems and remote activation systems.
Remote access devices are generally used in the automotive
industry to activate and deactivate vehicle access systems.
Remote access devices can also perform other tasks including
remote starting, locking and unlocking doors, unlatching trunk
decks or tail gates, opening windows or doors and operating
convertible top mechanisms.
Remote access devices may use a code generator capable
of generating a very large number of base codes to operate with
a vehicle access system. For example, the very large number can
be in the thousands, millions, billions, or higher. Furthermore,
each generated base code can be combined with a function
code, effectively multiplying the already large number of base
codes.
3rd parties might want to build replacement remote access
devices, but they might not know the code generator’s algorithm
or seed. Many vehicle access systems protect against direct
copying of previously used wireless signals by enforcing ranges
or windows of valid access codes and rejecting access codes
outside of the windows.
Spec. ¶¶ 3–5 (emphasis added).
B. Invention Summary
Appellant’s invention “relates to remote keyless vehicle access
systems, and more particularly to access codes of the remote keyless vehicle
access systems.” Spec. ¶ 2. In particular, Appellant explains that:
One aspect of the invention features capturing a subset of
output codes from a rolling code sequence device. This is done
by actuating a first function of the device to use a first base value
of the rolling code sequence to generate a first output code. After
the actuation of the first function but before actuating any other
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function, the first function is actuated again to generate a second
output code. Then, other functions may be actuated to generate
more output codes. The output codes are stored into a memory
as a new sequence of access codes in the order of output, namely
the first output code, the second output code, and then the third
output code.
Spec. ¶ 6 (emphasis added).
Another aspect of the invention features a remote
transmitter for sending codes to a receiver. The remote
transmitter can have a memory storing a subset of output codes,
the subset of output codes comprising, in sequential order, a first
code, a second code, and then a third code. It may have an input
system configured to receive a selected function of among a
plurality of functions operable on the receiver.
Spec. ¶ 12 (emphasis added).
C. Figure 1

FIG. 1 is a block diagram that shows an example remote
access device 110 containing codes from an original generator
150. The original generator can be, for example, a key fob
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originally provided by a manufacturer for use with a vehicle
type. The original code generator may contain a rolling code
generator. The remote access device can be a replacement key
fob that can be made without a rolling code generator. The
original generator 150 has inputs 151[a-c] for lock 151a, unlock
151b, and trunk 151c functions. A rolling code generator 153
generates an output code based on the actuated function. An
index counter 157 can change, such as by incrementing, every
time an output code is generated.
Spec. ¶ 38 (emphasis added).
The replacement remote access device 110 has inputs 111
[a-c] for the same functions lock, 111a, unlock 111b, and trunk
111c. Control logic such as a microcontroller unit 113 registers
a user’s input and looks up data in memory 115. The memory
may contain a series of output codes 119 and a series of functions
121 that correspond to certain output codes in the series 119. The
output codes are a subset of the output codes that can be output
by the code generator.
Spec. ¶ 40 (emphasis added).
D. Illustrative Claims
Claims 1 and 15 are illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
1. A method of capturing a subset of output codes from a rolling
code sequence device having a plurality of independently
actuatable features for performing respective functions in use,
including a first function typically performed more frequently than
a second function, the method comprising:
[A.] actuating a first feature of the device to generate a first
output code configured to operate the first function,
[i.] the first output code including
[a.] a first function code corresponding to the first
function and
[b.] a first sequential value;
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[B.] in response to the actuation of the first feature, capturing the
first output code to be stored in a memory;
[C.] after the actuation of the first feature but before actuating
any other feature, again actuating the first feature of the
device to generate a second output code configured to
operate the first function,
[i.] the second output code including
[a.] a first function code and
[b.] a second sequential value numerically adjacent to
the first sequential value;
[D.] in response to the actuation of the first feature again,
capturing the second output code to be stored in the memory;
[E.] after the actuation of the first feature again, actuating a
second feature of the device to generate a third output code
configured to operate the second function,
[i.] the third output code including
[a.] a second function code corresponding to the
second function and
[b.] a third sequential value numerically adjacent to
the second sequential value,
[ii.] the second function code being different from the first
function code;
[F.] in response to the actuation of the second feature, capturing
the third output code to be stored in the memory; and
[G.] storing into the memory the captured subset of output codes
comprising the first output code, the second output code, and
then the third output code, wherein the first output code, the
second output code, and the third output code are listed in
sequential order in the stored subset of output codes.

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15. A method, performed by a transmitter, of transmitting codes to a
receiver, the method comprising:
[A.] upon receiving an input to a specific input feature of a
plurality of input features of the transmitter to operate a
specific function of a plurality of functions operable by the
receiver, transmitting a specific code
[i.] from a sequence of codes stored in a memory on the
transmitter and
[ii.] configured to operate the specific function; and
[B.] upon receiving a sequential next input to a next input feature
of the plurality of input features to operate a next function of
the plurality of functions and before receiving any other input
following the next input, transmitting the earliest code in the
sequence of codes after the specific code that operates the
next function of the plurality of functions,
[C.] wherein the receiver is configured to use a rolling code
generator to verify codes received from the transmitter;
[D.] wherein each code of the sequence of codes comprises
[i.] a function code corresponding to one of the input
features, and
[ii.] a sequential index code; and
[E.] wherein the sequence comprises more output codes with
function codes corresponding to a first of the input features
than function codes corresponding to a second of the input
features,
wherein
[i.] the first of the input features corresponds to a first
function of the plurality of functions and
[ii.] the second of the input features corresponds to a
second function of the plurality of functions,
[iii.] the first function typically performed more
frequently than the second function.

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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Dykema US 5,661,804 Aug. 26, 1997
Witkowski US 2007/0152798 A1 July 5, 2007
Blaker US 2007/0176735 A1 Aug. 2, 2007
Yamamoto US 2010/0052845 A1 Mar. 4, 2010

During prosecution, Appellant cited the following reference on a
March 18, 2015 Information Disclosure Statement (IDS):
Name Reference Date
Tsui US 6,956,460 B2 Oct. 18, 2005

REJECTIONS
A.
The Examiner rejects claims 15–17, 20, 31, 32, 34, 35, 37, and 38,
under 35 U.S.C. § 103(a) as being unpatentable over Witkowski. Final
Act. 5–16.
Appellant argues separate patentability for claim 15. Appeal Br. 7–9.
We select claim 15 as the representative claim for this rejection. Except for
our ultimate decision, we do not address the merits of the § 103(a) rejection
of claims 16, 17, 20, 31, 32, 34, 3, 37, and 38 further herein.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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B.
The Examiner rejects claims 1–3, 5, 6, 24, and 28–30 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Witkowski,
Yamamoto, and Blaker. Final Act. 20–30.
Appellant argues separate patentability for claim 1. Appeal Br. 9–11.
We select claim 1 as the representative claim for this rejection. Except for
our ultimate decision, we do not address the merits of the § 103(a) rejection
of claims 2, 3, 5, 6, 24, and 28–30 further herein.
C.
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Witkowski, Yamamoto, Blaker, and
Dykema. Final Act. 30–31.
To the extent that Appellant discusses claim 4, Appellant merely
references the arguments directed to claim 1. Appeal Br. 12. Such a
referenced argument (or repeated argument) is not an argument for “separate
patentability.” Thus, the rejection of these claims turn on our decision as to
claim 1 (from which claim 4 depends). Except for our ultimate decision, we
do not address the merits of the § 103(a) rejection of claim 4 further herein.
D.
The Examiner rejects claims 18, 19, 33 and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Witkowski and
Dykema. Final Act. 17–18.
To the extent that Appellant discusses claims 18, 19, 33, and 36,
Appellant merely references the arguments directed to claim 15. Appeal
Br. 12. Such a referenced argument (or repeated argument) is not an
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argument for “separate patentability.” Thus, the rejection of these claims
turn on our decision as to claim 15. Except for our ultimate decision, we do
not address the merits of the § 103(a) rejection of claims 18, 19, 33, and 36
further herein.
E.
The Examiner rejects claims 26 and 39 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Witkowski and Yamamoto.
Final Act. 18–20.
Appellant’s arguments do not separately discuss claims 26 and 39.
Thus, the rejection of these claims turn on our decision as to claim 15 (from
which claim 26 depends). Except for our ultimate decision, we do not
address the merits of the § 103(a) rejection of claims 26 and 39
further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A. Claim 15.
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 15 under 35 U.S.C. § 103(a).
[T]he cited portions of Witkowski do not teach that there are two
or more buttons on the transmitter corresponding to two or more
different functions. Instead, in the method taught by Witkowski,
the user presses the same transmitter button every time, on the
original transmitter, to transmit a radio frequency signal to the
receiver.
Appeal Br. 8.
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We are not persuaded by Appellant’s argument. Appellant overlooks
that Witkowski at paragraph 14 includes or reasonably suggests three or
more functions (“to lock or unlock a vehicle [remote keyless entry] RKE
system, to create a panic/alarm condition at a vehicle, or to cause some other
function or effect”) and Witkowski at paragraph 17 includes or reasonably
suggests three or more buttons (“[u]ser input device(s) 210 may be, for
example, push buttons”). The Examiner’s cited to paragraphs 14 and 17 of
Witkowski at pages 6–7 of the Final Action.
Also, Appellant acknowledges that including three or more functions
on a transmitter/remote is known. “Remote access devices can also perform
other tasks including remote starting, locking and unlocking doors,
unlatching trunk decks or tail gates, opening windows or doors and
operating convertible top mechanisms. Spec. 3 (emphasis added).
Further, Appellant acknowledges that an “original generator can be . .
. a key fob originally provided by a manufacturer for use with a vehicle
type” (i.e., prior art) that includes a rolling code generator with inputs
151[a-c] (i.e., buttons) for lock 151a, unlock 151b, and trunk 151c functions.
Spec. ¶ 38. We determine that Appellant’s “two or more buttons . . .
corresponding to two or more different functions” on the replacement
“transmitter” (having “codes stored in a memory” rather than a rolling code
generator) merely replicates the buttons and functions on the manufacturer
originally provided rolling code based key fob.
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A.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 15 under 35 U.S.C. § 103(a).
[T]here is nothing in Witkowski to suggest actuating to generate
more output codes for more frequently used functions, or storing
a code sequence having more entries for one function than for
another, in the transmitter for actual use with a receiver.
Appeal Br. 8.
We are not persuaded by Appellant’s argument. Claim 15 requires
“more output codes with function codes corresponding to a first of the input
features than function codes corresponding to a second of the input
features.”
As noted above, Appellant acknowledges that including three or more
functions is known. We deem it inherent (or at least obvious) that in the
manufacturer’s original generator (i.e., a key fob) one of these functions
(i.e., unlock doors) is performed more than another of these functions (i.e.,
unlatch trunk). Thus, a replacement transmitter including more codes for
more frequently used functions is suggested.
B. Claim 1.
B.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
In the actual use of typical OEM rolling code transmitters,
such as taught in Witkowski, there is no capturing and storing of
a sequence of codes (such as to build a table to download into a
replacement transmitter for the actual use with a receiver).
Rather, each generated code (i.e., an encrypted counter value) is
received and acted upon, and if stored is then replaced by the next
received code in the receiver.
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Appeal Br. 9.
[T]here is nothing in Witkowski to teach generating a set of
sequential output codes each including a function code
(corresponding to an activated button) and a sequential (rolling)
code, and storing the output codes.
Appeal Br. 10.
The Office Action points to the teachings of Yamamoto and
Blaker for the . . . deficiencies of Witkowski. [Final Act. 25–26].
[E]ven if one of ordinary skill in this art would start from
Witkowski and look to Yamamoto and Blaker for ideas for
improvements, one would not have been led to the claimed
invention.
Appeal Br. 10.
We are not persuaded by Appellant’s argument. Appellant does not
address the actual reasoning of the Examiner’s rejection. Instead, Appellant
attacks the Witkowski reference singly for lacking a teaching that the
Examiner relied on a combination of Blaker to show. In particular, the
rejection does not rely on Witkowski for teaching the “storing of a sequence
of codes (such as to build a table to download into a replacement transmitter
for the actual use with a receiver)” aspect disputed by Appellant. Rather, the
Examiner relied on Blaker to show “stor[ing] all the transmission codes and
rolling codes of the OEM transmitter.” Final Act. 25 (emphasis added). The
Examiner then reasoned that it would have been obvious to modify
Witkowski to include functionality from Blaker so as “to store and learn all
of the OEM transmitter’s codes to replicate the OEM transmitter.” Final
Act. 26. One cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
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Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining the relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references).
Further, even if we found the combination of Witkowski, Yamamoto,
and Blaker to be insufficient. Appellant acknowledges that “direct copying
of previously used wireless signals” (i.e., sequential capture and storage) is
known, and during prosecution, Appellant cited Tsui (US 6,956,460 B2)
which states:
A fixed transmitter for operating a rolling code receiver is
disclosed. A set of fixed codes is captured from a rolling code
transmitter that is used to actuate a corresponding rolling code
receiver. The set of fixed codes is stored in a memory of a fixed
code transmitter. The fixed code transmitter, upon each
actuation, transmits one or more codes of the set of fixed codes
to operate the rolling code receiver. The set of stored fixed codes
in the fixed code transmitter has fewer codes than a total number
of unique codes that can be generated by the rolling code
receiver.
Tsui Abstract.
In one embodiment, a plurality of identified codes emitted from
a rolling code transmitter are captured and stored in a transmitter.
Tsui Col. 2, lines 28–30.
B.2.
Also, Appellant raises the following arguments in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
[T]he cited portions of Witkowski do not teach that there are two
or more buttons on the transmitter corresponding to two or more
different functions.
Appeal Br. 9–10.
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Moreover, there is nothing in Witkowski to teach actuating one
of the buttons more than another to generate more output codes
for the function corresponding to the more actuated button.
Appeal Br. 10.
The rejection alleges that in view of Blaker’s teachings, a
person having ordinary skill in the art would modify Witkowski's
trainable transmitter to store and learn all of the OEM
transmitter's codes to replicate the OEM transmitter. [Blaker
¶ 15]. However, even if the person would do so, it still has not
reached the claimed invention, because there is no teaching in
Blaker that the transmission codes learned from the OEM remote
transmitter include more entries for more frequently used
functions than another.
Appeal Br. 11 (emphasis added).
We are not persuaded by Appellant’s argument for the reasons already
discussed above as to Claim 15.

CONCLUSION
The Examiner has not erred in rejecting claims 1–6, 15–20, 24, 26,
and 28–39 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejections of claims 1–6, 15–20, 24, 26, and 28–39 as
being unpatentable under 35 U.S.C. § 103(a) are affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6,
24, 28–30
103(a) Witkowski,
Yamamoto, Blaker
1–3, 5, 6,
24, 28–30

4 103(a) Witkowski,
Yamamoto, Blaker,
Dykema
4
15–17, 20,
31, 32, 34,
35, 37, 38
103(a) Witkowski 15–17, 20,
31, 32, 34,
35, 37, 38

18, 19, 33,
36
103(a) Witkowski, Dykema 18, 19, 33,
36

26, 39 103(a) Witkowski, Yamamoto 26, 39
Overall
Outcome

1–6, 15–20,
24, 26, 28–
39

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