Ex Parte Liebl et al

Patent Trial and Appeal Board

Sep 29, 2017

12849106 (P.T.A.B. Sep. 29, 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.
12/849,106 08/03/2010 Troy Liebl 87355.12081 7223
7590
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
PATEL, SHARDUL D
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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
edervis @bakerlaw.com
patents @ bakerlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TROY LIEBL, EDWARD LIPSCOMB,
and MANOKAR CHINN ADURAI
Appeal 2015-005789
Application 12/849,1061
Technology Center 3600
Before JOSEPH A. FISCHETTI, SCOTT C. MOORE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—4, 8—13, 15, 17, and 19-25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, the affirmance including a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
1 “The real party in interest in the present application is BOSCH SERVICE
SOLUTIONS LLC.” Appeal Br. 3.
Appeal 2015-005789
Application 12/849,106
ILLUSTRATIVE CLAIM
1. A vehicle diagnostic tool, comprising:
a processor configured to implement software for
conducting a diagnostic test on at least one electronic control
unit of a vehicle;
a memory electronically connected to the processor and
configured to store data relevant to conducting the diagnostic
test;
a vehicle connector interface electronically connected to
the processor and configured to accommodate a connector
between the vehicle diagnostic tool and the at least one
electronic control unit;
a display electronically connected to the processor and
configured to present data from the diagnostic test in a format
readable by an operator of the vehicle diagnostic tool;
a mobile broadband port electronically connected to the
processor and configured to electronically interface with a
mobile broadband connection device and further configured to
forward at least a portion of the data relevant to conducting the
diagnostic test to a data processing station;
a communications port electronically connected to the
processor and configured to transfer data to an external
computing device from the diagnostic test through a wired and
wireless connection; and
a portable handheld housing configured to contain the
processor, the memory, the vehicle connector interface, the
mobile broadband port, and the communications port.
CITED REFERENCES
The Examiner relies upon the following references:
Triphathi US 2003/0208309 A1 Nov. 6, 2003
Schmeisser et al. US 6,693,367 B1 Feb. 17, 2004
(hereinafter “Schmeisser”)
Chen US 2008/0119981 Al May 22, 2008
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Oesterling et al. US 2009/0325596 A1 Dec. 31, 2009
(hereinafter “Oesterling”)
REJECTIONS
I. Claims 1, 10, 15, 17, 23, and 25 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Chen and Schmeisser.
II. Claims 2, 3, 8, 9, 11, 12, and 19 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Chen, Schmeisser, and Triphathi.
III. Claims 4, 13, 20—22, and 24 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Chen, Schmeisser, and Oesterling.
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 3—11 and the Answer at pages 2—9, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Rejection I
The Appellants argue that independent claim 1 was rejected
erroneously, because: (1) neither Chen nor Schmeisser discloses the recited
“mobile broadband port electronically connected to the processor and
configured to electronically interface with a mobile broadband connection
device and further configured to forward at least a portion of the data
relevant to conducting the diagnostic test to a data processing station”; and
(2) a person of ordinary skill in the art would not have combined Chen and
Schmeisser. See Appeal Br. 11—14.
As to the first argument, the Appellants contend that the Final Office
Action “admitted” that Chen lacks the recited “mobile broadband port” with
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its various features (see id. at 12, 13) and that Schmeisser discloses
“common data ports” {id. at 12), such as a “standardized USB connection”
(Reply Br. 3). Yet, the Answer explains that Chen “discloses the
functionality of mobile broadband connectivity,” even though it does not
necessarily show “any connecting port for this kind of communication”
(Answer 3^4 (citing Chen, Fig. 1, || 19, 37)) and that Schmeisser is relied
upon “just to show the port for the mobile broadband communicating
devices” {id. at 4 (citing Schmeisser, Fig. 7, col. 2,11. 46—55, col. 9,11. 29—
40)). Indeed, the Appellants consider the references individually, as
opposed to their combined teachings. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[0]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”) Accordingly, the Appellants’ first argument is not persuasive
of error in the rejection of claim 1.
As to the second argument, the Appellants contend that a person of
ordinary skill in the art would not have combined Chen and Schmeisser,
because the references disclose ports that are “generally the same,” such that
their combination results in no modification to Chen. Appeal Br. 14. Yet,
this assertion is at odds with the teachings of the references relied upon, as
illustrated by the foregoing discussion. Moreover, the rejection explains that
a person of ordinary skill in the art would have been motivated to combine
Chen and Schmeisser, in order to provide a diagnostic display unit that can
be easily transported during diagnostic procedures, as taught by Schmeisser
(at col. 2,11. 20-25). See Final Action 4; see also Answer 5. Accordingly,
the Appellants’ second argument also is not persuasive of error in the
rejection of independent claim 1.
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The Appellants (Appeal Br. 15—21) rely upon the same arguments, in
asserting that the combination of Chen and Schmeisser fails to teach the
corresponding limitations of independent claims 10 and 17: “transmitting
information obtained during the diagnostic test from the diagnostic tool to a
remote computing device using a mobile broadband connection device”
(claim 10); and “a first means for interfacing electronically connected to the
means for processing and configured to electronically interface with a
mobile broadband connection device and further configured to forward at
least a portion of the data relevant to conducting the diagnostic test to a data
processing station” (claim 17). Further, the Appellants rely upon the same
arguments, in regard to dependent claim 25. See Appeal Br. 21. In addition,
the Appellants present no separate arguments for dependent claims 15 and
23.
Therefore, we sustain the rejection of claims 1, 10, 15, 17, 23, and 25
under 35 U.S.C. § 103(a).
Rejection II
For the reasons provided below, regarding particular claim groupings,
we sustain the rejection of claims 2, 3, 8, 9, 11, 12, and 19 under pre-AIA
35 U.S.C. § 103(a), with the determination as to claim 9 designated as a new
ground of rejection under 37 C.F.R. § 41.50(b).
1. Dependent Claim 2
The Appellants argue that dependent claim 2 was rejected
erroneously, because Triphathi does not teach the recited “mobile broadband
connection device compris[ing] at least one of a portable modem and a
mobile telephone.” Appeal Br. 22. According to the Appellants, Triphathi’s
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Figure 1 shows a wireless Internet-ready telephone 16, which “appears to
not connect through a wireless broadband connection, but connects to the
Internet 18 directly.” Id. The Appellants’ argument, about what Triphathi’s
Figure 1 “appears” to show, is based upon speculation, rather than evidence.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”) In any event, the
rejection {see Final Action 7—8) refers to Triphathi’s disclosure in the
Abstract, Figure 1, as well as paragraphs 23—29, which need not be
interpreted as narrowly as the Appellants’ reading of Figure 1 (i.e.,
excluding broadband). Indeed, Triphathi’s paragraph 23 refers to “a
wireless Internet ready communication device, such as a cellular telephone
16, a personal digital assistant (PDA), or the like.” Furthermore, the
rejection relies upon Chen and Schmeisser for teaching the “mobile
broadband connection device,” of base claim 1, as discussed above, and
relies upon Triphathi only for teaching claim 2’s “at least... a mobile
telephone.”
Accordingly, the Appellants’ argument is not persuasive of error in
the rejection of claim 2.
2. Dependent Claims 3, 12, and 19
The Appellants argue that dependent claim 3 was rejected
erroneously, because Triphathi does not teach the recited “mobile broadband
connection device compris[ing] at least one of a PC data card, a USB
modem, a phone with a data modem and a portable device with built-in
support for mobile broadband.” Appeal Br. 22—23. The Appellants rely
upon the same argument presented for claim 2, i.e., that Triphathi’s wireless
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Internet-ready telephone 16 “appears to not connect through a wireless
broadband connection, but connects to the Internet 18 directly.” Id. at 23.
Therefore, for the reasons provided, above, in regard to claim 2, the
Appellants’ argument is not persuasive of error in the rejection of claim 3.
Dependent claims 12 and 19 contain the same limitation at issue in
claim 3 and the Appellants’ arguments for error in the rejection of these
claims is substantially identical to the arguments provided for claim 3. See
Appeal Br. 25—26. Accordingly, the Appellants’ argument is not persuasive
of error in the rejection of claims 12 and 19.
3. Dependent Claim 8
The Appellants (Appeal Br. 23) argue that dependent claim 8 was
rejected erroneously, because Triphathi does not teach the recited “operator
interface electronically connected to the processor and configured to allow
an operator of the vehicle diagnostic tool to provide input to the vehicle
diagnostic tool.”
The claims give no further guidance as to the meaning of the
“operator interface,” but the Specification refers to “collecting input from an
operator . . . through an operator interface,” such as “a keyboard, a
touchscreen, a joystick, a keypad, a microphone or any other form of user
interface that one of skill in the art would identify as appropriate to use upon
practicing one or more embodiments of the present invention.” Spec. 137.
The Appellants characterize Triphathi as teaching the use of a wireless
Internet-ready phone 16 with an Internet browser to connect, through a
wireless data link 22, to a global network, and the Appellants’
characterization also refers to a master database 20 and application software
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run on a computer 22 connected with Internet or Intranet 18. Appeal Br. 23
(citing Triphathi, Fig. 1, Abstract, || 23—29).
However, the Appellants do not address additional identified
disclosure of Triphathi. For example, while performing vehicular
diagnostics, “[t]he operator will be instructed to perform regular data
acquisitions at a certain time interval, so parameters can be monitored with
statistical tools.” Triphathi 125. In addition, according to Triphathi, “[d]ata
port 14 may also be connected with a computer 19 for uploading data
retrieved by vehicle analyzer 12 at a later time.” Id. 128. Further, Figure 1
of Triphathi identifies element 19 as a “Workstation.” In view of these
disclosures, we find that a person of ordinary skill in the art at the relevant
time would have understood Triphathi’s “Workstation” and “computer 19”
to have included input components (e.g., a keyboard), such that it would
satisfy the limitations of claim 8.
Accordingly, the Appellants do not persuade us of error in the
rejection of claim 8.
4. Dependent Claim 9 (New Ground of Rejection)
The Appellants (Appeal Br. 24) argue that claim 9 was rejected
erroneously, because Triphathi does not teach the recited “mobile broadband
connection device is activated before use by a technician.”
Yet, claim 9 depends ultimately from claim 1 — an apparatus claim
reciting “[a] vehicle diagnostic tool.” Thus, the recitations of claim 9, which
constitute functional language (stating that the “mobile broadband
connection device is activated before use by a technician”), cannot
distinguish claimed subject matter from the prior art, so long as the prior art
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is capable of performing the claimed function. See In re Schreiber, 128 F.3d
1473, 1477—79 (Fed. Cir. 1997). Here, we find that Triphathi discloses “[a]
method 34 of detecting abnormal engine behavior of vehicle 8 begins at 26
by initiating data link 22 when performing a diagnosis or to generate or
maintain the personal vehicle data on a predetermined frequency.” Triphathi
125. We find that a data link, being a device, is capable of being activated
upon instruction to do so, given either automatically or by human
intervention. Accordingly, the Appellants do not persuasively argue that the
recitations of claim 9 distinguish it from the identified references.
In view of this determination, we sustain the Examiner’s decision to
reject claim 9. However, because the reasoning herein differs from that of
the rejection, this aspect of the Decision is designated as a new ground of
rejection under 37 C.F.R. § 41.50(b).
5. Dependent Claim 11
The Appellants (Appeal Br. 24) argue that dependent claim 11 was
rejected erroneously, because Triphathi does not teach that “the mobile
broadband connection device is preconfigured and activated before being
used by a technician.”
The limitation of claim 11 is similar to that of claim 9, but the
function here is recited as a method step in the context of a method claim.
The Appellants characterize Triphathi as teaching the use of a wireless
Internet-ready phone that includes an Internet browser to connect, through a
wireless data link, to a global network, such as the Internet or an Intranet, as
well as a master database and application software run on a computer
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connected with the Internet or an Intranet. Appeal Br. 24 (citing Triphathi
123).
However, in addition to the wireless Internet-ready communication
device, portions of Triphathi identified in the rejection (see Final Action 9)
further disclose that “[a] method 34 of detecting abnormal engine behavior
of vehicle 8 begins at 26 by initiating data link 22 when performing a
diagnosis or to generate or maintain the personal vehicle data on a
predetermined frequency.” Triphathi 125 (emphasis added). Such
disclosure teaches claim 1 l’s recitation that “the mobile broadband
connection device is preconfigured and activated before being used by a
technician.” See Final Action 9.
Accordingly, the Appellants do not argue persuasively for error in the
rejection of claim 11.
Rejection III
The Appellants argue that claims 4, 13, 20—22, and 24 were rejected
erroneously, because there is no reason to combine Oesterling with Chen
and Schmeisser, and because the rejection relies upon impermissible
hindsight. Appeal Br. 26—27; see also Reply Br. 4—13.
According to the Appellants, a person of ordinary skill in the art
would not have combined Chen and Schmeisser with Oesterling, because
Chen and Schmeisser are vehicle diagnostic tools used generally by
mechanics to diagnose vehicles for the purposes of repair (id. at 27 (citing
Chen 13; Schmeisser, col. 1,11. 11—14)), whereas Oesterling relates to a
vehicle telematics unit for the transmission of vehicle location to call centers
(id. (citing Oesterling 11)).
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Although styled as a challenge to the rejection’s reason or motivation
for combining/modifying references, the Appellants’ argument does not
address the Examiner’s stated reason for combining Chen and Schmeisser
with Oesterling. See Final Action 10—11 (citing Oesterling || 4—5).
Insofar as the Appellants’ position is that Oesterling may not be
combined with Chen and Schmeisser, on the ground that Oesterling might
not be from an analogous art to the claimed subject matter, the Appellants do
not attempt to establish that Oesterling is either: (1) not from the same field
of endeavor as the claimed invention; or (2) not reasonably pertinent to the
particular problem with which the Appellants were involved. See In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Therefore, the Appellants do
not persuasively show that Oesterling fails to satisfy either prong of the
analogous-art test.
Accordingly, we sustain the rejection of claims 4, 13, 20-22, and 24
are rejected under pre-AIA 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—4, 8—13, 15,
17, and 19—25 under pre-AIA 35 U.S.C. § 103(a), designating the affirmance
regarding claim 9 as a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b).
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
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When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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: 37 C.F.R, § 41.50(b)
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