Ex Parte Bertosa et al

Patent Trial and Appeal Board

Oct 4, 2017

13872743 (P.T.A.B. Oct. 4, 2017)

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.
13/872,743 04/29/2013 Thomas J. Bertosa 87355.8202 8047
7590 10/06/2017
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
KONG, SZE-HON
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
10/06/2017 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):
eofficemonitor@bakerlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. BERTOSA and
ROBERT C. SHEPPARD
Appeal 2017-003292
Application 13/872,743
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
BETH Z. SHAW, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003292
Application 13/872,743
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 18—24, 26—34, 36, and 37. Claims 1—17, 25, and 35 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an off-board tool with programmable
actuator. Claim 18, reproduced below, is illustrative of the claimed subject
matter:
18. A diagnostic device configured to obtain information from
a vehicle diagnostic system, the diagnostic device comprising:
a processor configured to perform a retrieve function to
retrieve a diagnostic trouble code from the vehicle diagnostic
system using a read logic;
a display that displays the retrieved diagnostic trouble
code with a scroll logic;
a memory configured to store the retrieved diagnostic
trouble code, the read logic, the scroll logic, a user-defined
programmable sequence of performing a plurality of read
functions or scroll functions, and communicates with the
processor; and
a single user-defined programmable actuator in
communication with the processor, the actuator is configured by
a user to cause the processor to perform the retrieve function and
the scroll function, wherein if the retrieved diagnostic trouble
code is stored in the memory and displayed on the display, then
the processor performs the scroll function when the actuator is
actuated by the user for a first amount of time and performs the
retrieve function when the actuator is actuated for a second
1 Appellants indicate that Bosch Automotive Service Solutions Inc. is the
real party in interest. (Br. 2).
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Application 13/872,743
amount of time, and wherein the first amount of time is less than
the second amount of time.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Weiseretal. US 5,786,819 July 28, 1998
Amemiya et al. US 2003/0236935 A1 Dec. 25, 2003
Andreasen et al. US 6,687,584 B2 Feb. 3, 2004
REJECTION
The Examiner made the following rejections:
Claims 18—24, 26—34, 36, and 37 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Andreasen, Weiser, and
Amemiya.
ANALYSIS
Claim 18
Appellants argue claims 18—24, 26, and 27 as a group. (Br. 6, 14).
We select independent claim 18 as the representative claim for the group and
address Appellants’ arguments thereto.
With respect to representative claim 18, Appellants contend:
Weiser essentially discloses only one functionality (scrolling
search) throughout when the actuator is in a depressed state. That
is the scrolling search functionality changes with each second
that passes while the actuator is continually depressed. This
functionality does not depend on any other event that occurred
such as “if the retrieved diagnostic trouble code is stored in the
memory and displayed on the display, then the processor
performs the scroll function when the actuator is actuated by the
user for a first amount of time and performs the retrieve function
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Application 13/872,743
when the actuator is actuated for a second amount of time, and
wherein the first amount of time is less than the second amount
of time,” as claimed. Additionally, the one functionality depends
on one continuous depression of the actuator instead of “then the
processor performs the scroll function when the actuator is
actuated by the user for a first amount of time and performs the
retrieve function when the actuator is actuated for a second
amount of time, and wherein the first amount of time is less than
the second amount of time,” as claimed.
(Br. 7—8). Appellants further contend that there must be a reason which
prompted one of ordinary skill in the art to combine the multiple known
elements. (Br. 8). Appellants further argue that the modification of
Andreasen reference to would change the principle operation of each button
being assigned a particular function (scroll or read, erase, etc.). (Br. 8).
Additionally, Appellants contend:
the cited prior art completely lacks any disclosure of the
desirability of the combination recited in claim 18; and the cited
prior art completely lacks any disclosure of an objective reason
to combine the teachings of the prior art to arrive at the
combination recited in claim 18. (See MPEP § 2143.01 III-IV).
Neither Andreasen, Amemiya nor Wieser [sic] discloses any
desirability or objective reason to disclose essentially an actuator
performing various functions each time it is depressed and based
on how long it is depressed and whether diagnostic trouble codes
are present in the memory and/or displayed. As such, without
the Appellants’ disclosure, hindsight would be the only
reasonable way of combining the elements and knowledge of the
cited references available to one of ordinary skill in the art to
arrive at the invention recited in claim 18.
(Br. 9).
We find Appellants’ argument unavailing and agree with the
Examiner regarding the combination of the well-known teachings of the
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Application 13/872,743
three prior art references. (Final Act. 4—5). While Appellants argue the two
conditions precedent in the “wherein” limitation, we find it readily apparent
to those skilled in the art that the scroll function would be less useful if the
retrieved diagnostic code information was not stored and displayed because
it could not then be scrolled. Consequently, we find this limitation to be
readily apparent because any information to be scrolled must necessarily be
present. Therefore, we are left with one additional function to retrieve new
data. Although the Andreasen reference teaches and suggests a separate
button (link button 19), the Amemiya and Weiser references clearly teach
and suggest use of varied actuation of a single button for varied durations of
time to modify the requested function to be performed. Whether that
function is a change in the scrolling or a completely separate function does
not detract from the clear suggestion of the well-known use of varied
duration of an input for use in the structure of the claimed “diagnostic
device.” As a result, we find Appellants’ argument does not show error in
the Examiner’s factual findings or the ultimate conclusion of obviousness of
independent claim 18 and its respective dependent claims 18—24, 26, and 27
not separately argued.
Claim 28
With respect to independent claim 28, Appellants recite the language
of claim 28 and set forth similar arguments advanced with respect to
independent claim 18. (Br. 10-14). As discussed above, we find
Appellants’ arguments to be unpersuasive of error in the Examiner’s factual
findings or conclusion of obviousness, and we sustain the rejection of
independent claim 28 and its respective dependent claims 29-34, 36, and 37
for the same reason addressed above.
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CONCLUSION
The Examiner did not err in rejecting claims 18—24, 26—34, 36, and 37
based upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
18—24, 26—34, 36, and 37 based upon obviousness under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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