Ex Parte Huelbusch et al

Patent Trial and Appeal Board

Aug 31, 2016

11992207 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111992,207 08/31/2009
24972 7590 09/02/2016
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Katja Huelbusch
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.
1019/5347 4818
EXAMINER
HESS, DANIEL A
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATJA HUELBUSCH and
WERNER POECHMUELLER1
Appeal2013-006646
Application 11/992,207
Technology Center 2800
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
GEORGE C. BEST, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 11-22, and 25 under 35 U.S.C. § 102(b) as anticipated by
1 Appellants identify the real party in interest as Robert Bosch GmbH.
Appeal Br. 2.
2 In this opinion, we reference the Substitute Specification filed March 17,
2008 (Sub. Spec.), Final Office Action mailed July 24, 2012 (Final), the
Appeal Brief filed December 26, 2012 (Appeal Br.), the Examiner's Answer
mailed February 26, 2013 (Ans.), and the Reply Brief filed April 26, 2013
(Reply Br.).
Appeal2013-006646
Application 11/992,207
Spaur,3 and claims 23 and 24 under 35 U.S.C. § 103(a) as obvious over
Spaur.4 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, but enter new grounds of rejection.
The claims are directed to a system for facilitating infrastructure-
supported toll collection using an on-board unit that is integrated in the
vehicle. The on-board unit is configured to be physically tamper-proof.
Claim 11 is illustrative:
11. A system for facilitating infrastructure-supported toll
collection, comprising:
an on-board unit configured to be physically tamper-
proof and integrated in a vehicle, wherein the on-board unit
includes at least one core functionality of the system; and
a second unit not configured to be physically tamper-
proof and connected to the onboard unit via an interface,
wherein the second unit includes at least one functionality of
the system and wherein the second unit communicates with the
on-board unit via a standardized message catalog.
Appeal Br., Claims Appendix 1.
OPINION
The Examiner finds, and there is no dispute, that Spaur describes a
system including an on-board unit (global positioning system (GPS) 70)
including at least one core functionality of the system, and a computer 7 4
including a personal digital assistant (PDA) that meets the requirements of
3 Spaur et al., US 2004/0185842 Al, published Sept. 23, 2004.
4 The rejection of claims 11-14, 16, 18, and 19 under 35 U.S.C. § 102(b) as
anticipated by Ohle (US 2003/0055599) was withdrawn by the Examiner.
Ans. 8.
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Appeal2013-006646
Application 11/992,207
the second unit of claim 11. The dispute with regard to the anticipation
rejection centers on the requirement in claim 11 for "an on-board unit
configured to be physically tamper-proof," thus our discussion will focus on
that limitation. Compare Appeal Br. 5---6; Reply Br. 2-5 with Final 4; Ans.
9-12.
The Examiner finds that Spaur' s on-board GPS unit is tamper-proof
because the access point of the unit is through security controller 100, and
because the GPS unit can be embedded in the security controller. Final 4;
Ans. 10. But the purpose of the security controller is to secure the
communications traveling to and from the on-board unit, not to prevent
physical tampering with the unit itself. Spaur i-fi-f l, 10.
We agree with Appellants that "physically tamper-proof," as
evidenced by their Specification, means the on-board unit cannot be
physically opened without authorization or otherwise have any components
physically removed or altered. Sub. Spec. 1 :7-17. As explained by the
Specification, such tamper-proof on-board units were known in the art:
The GPS-supported truck toll system with automatic route entry
that is used in Germany is known. In this connection, the
automatic route entry is carried out by a toll-collection terminal
called an on-board unit that is installed as a separate unit on or
in the instrument panels of trucks and put into operation by an
authorized workshop. Various on-board units are known. The
on-board units are usually lead-sealed and must satisfy high
security requirements. For example, tamper-proofness may be
guaranteed by a self-destruction mechanism that is activated
when the housing of the on-board unit is opened without
authorization.
Sub. Spec. 1:7-17.
The Examiner incorrectly relied upon Spaur's security controller 100
as a basis for finding the GPS unit of Spaur is "physically tamper-proof."
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Application 11/992,207
Thus, Appellants have identified a reversible error in the Examiner's
rejection. We do not sustain the Examiner's rejection of claims 11-22, and
25 under 35 U.S.C. § 102(b) as anticipated by Spaur.
Although the Examiner erred, we cannot agree with Appellants that
the record before us supports patentability. Thus, we enter a new ground of
rejection under 35 U.S.C. § 103(a) as obvious over Spaur.
As discussed above, using physically tamper-proof on-board GPS
units in German trucks for use in the German toll system was known. Sub.
Spec. 1 :7-20.
Spaur is interested in providing a secure source of location and time
information using the on-board GPS unit disclosed in that reference. Spaur
i-f 41. Spaur' s GPS unit "is configured to eliminate or minimize tampering
with the information that it provides." Id. Spaur seeks to use the "trusted
time and location information" from the GPS unit "to check against any
location restrictions that might apply to certain resources in the vehicle." Id.
Given it was known in the art to make such GPS units physically tamper-
proof, it would have been obvious to the ordinary artisan to make Spaur' s
GPS unit physically, as well as electronically tamper-proof, to ensure the
location information is physically associated with the vehicle and to ensure
the GPS location and time information would be secure and could be trusted.
Thus, we determine that Spaur supports a rejection of claim 11 under
35 U.S.C. § 103(a). The Examiner's finds of fact and conclusion of law for
claims 12-22, and 25 have not been challenged by Appellants, thus we adopt
those findings of fact and conclusion of law in rejecting claims those claims
as obvious over Spaur.
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Appeal2013-006646
Application 11/992,207
Turning to the Examiner's rejection of claims 23 and 24 under 35
U.S.C. § 103(a) as obvious over Spaur, we determine that Appellants have
not identified a reversible error in the Examiner's additional findings of fact
and conclusions of law for this rejection. Specifically, the Examiner relies
upon paragraphs 29 and 36 of Spaur to support a finding that Spaur teaches
or suggests connecting the GPS unit to the second unit wirelessly, via an
external line, or via an internal bus. Final 9; Ans. 13. Paragraph 36, in
particular, supports the Examiner's finding as it discloses enabling
communications via a bus 96 that can also be implemented using wireless
technologies. Spaur i-f 36. Appellants do not discuss the disclosure of
paragraph 36 much less provide any basis to believe that the disclosure does
not support the finding of the Examiner. Thus, we sustain the rejection of
claims 23 and 24 as obvious incorporating the new findings and conclusions
we applied above.
CONCLUSION
We do not sustain the Examiner's rejections, but we enter new
grounds of rejection per our authority under 37 C.F.R. § 41.50(b ).
DECISION
The Examiner's decision is reversed, but new grounds entered.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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Application 11/992,207
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
REVERSED, 37 C.F.R. § 41.50(b)
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