Ex Parte McClure et al

Board of Patent Appeals and Interferences

May 29, 2012

10970042 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/970,042 10/21/2004 Robert E. McClure DEA-00003-COA 5190
7590 05/29/2012
Warn, Hoffmann, Miller & LaLone, P.C.
P.O. Box 70098
Rochester Hills, MI 48307
EXAMINER
HUYNH, KIM T
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
05/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT E. McCLURE and DAVID M. SUCH

Appeal 2010-000586
Application 10/970,042
Technology Center 2100
______________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
DEBRA K. STEPHENS, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-00586
Application 10/970,042

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, 4 through 18, 20 through 25 and 27 through 32. Claims 3,
19, and 26 have been canceled.
We affirm.
INVENTION
The invention is directed protocol adaptor that can bridge a lap-top to
a vehicle network. See Specification page 2. Claim 1 is representative of
the invention and reproduced below:

1. A protocol adapter for transferring diagnostic signals
between a vehicle network and a computer, said protocol
adapter comprising:
a plurality of electrical circuits and an R8232 bus, said
circuits being capable of operating in more than one protocol,
said circuits including a voltage translator for translating a
voltage so that the protocol adapter operates in a
pass-through mode; and
a static RAM module and a flash memory module in said
plurality of electrical circuits for providing reflashing that
allows the protocol adapter to be adapted with new firmware.

REFERENCES
STROTH US 2002/0039026 A1 Apr. 4, 2002
REUL US 6,526,340 B1 Feb. 25, 2003
MILLS US 6,564,285 B1 May 13, 2003

Appeal 2010-00586
Application 10/970,042

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REJECTION AT ISSUE
The Examiner has rejected claims 1, 2, 4 through 9, 12 through 15, 20
through 21, and 23 through 24 under 35 U.S.C. § 103 as being unpatentable
over Reul in view of Mills. Answer 3-7.1
The Examiner has rejected claims 10, 11, 16 through 18, 22, 25, and
27 through 32 under 35 U.S.C. § 103 as being unpatentable over Reul in
view of Mills and Stroth. Answer 7-13.

ISSUES
Appellants argue on pages 7 through 13 of the Brief2 the rejection of
claims 1, 2, 4 through 9, 12 through 15, 20 through 21, and 23 through 24 is
in error. Appellants argue that Mills teaches away from the claimed
invention as it teaches away from using Static RAM (SRAM). These
arguments present us with the following issues: did the Examiner err in
finding that the skilled artisan would combine Reul and Mills, to use SRAM
in place of the DRAM of Reul’s device?

Appellants argue on pages 13 through 15 of the Brief the rejection of
claims 10, 11, 16 through 18, 22, 25, and 27 through 32 is in error. These
arguments present us with the following issues: did the Examiner err in
combining Reul, Mills, and Stroth because Stroth is directed to a different
field of endeavor than the invention?

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
May 12, 2009.
2 Throughout this opinion we refer to the Appeal Brief dated January 28,
2009 and Reply Brief dated July, 10, 2009.
Appeal 2010-00586
Application 10/970,042

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusion the Examiner erred in a) finding that the skilled artisan would
combine Reul and Mills, to use SRAM in pace of the DRAM of Reul’s
device; and b) combining Reul, Mills, and Stroth because Stroth is directed
to a different field of endeavor than the invention. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief.
With respect to the first issue, in addition to the Examiner’s
statements in the Answer, we further note that we do not consider Mills to
teach away from the use of SRAM. The passages of Mills, cited by the
Appellants as teaching away from the use of SRAM merely identify some
drawbacks and special considerations when using SRAM (i.e. use of battery
backup and more complex than DRAM), but we do not consider them to
discourage the use of SRAM. As pointed out by the Examiner, Mills also
teaches that SRAM has the advantage of being faster than DRAM (Mills col.
3, ll.51-53). Further, Mills states that “flash memory is used to replace
some, if not all of the volatile main memory [SRAM]” (emphasis added)
(col. 9, ll. 8-9), thus suggesting that flash memory and SRAM can be used
together (i.e. the disclosure supports the Examiner’s conclusion that the
disputed limitation is obvious). Thus, we are not persuaded that the
Examiner erred in finding the skilled artisan would combine Reul and Mills,
to use SRAM in pace of the DRAM of Reul’s device, and we sustain the
Appeal 2010-00586
Application 10/970,042

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Examiner’s rejection of claims 1, 2, 4 through 9, 12 through 15, 20 through
21, and 23 through 24.
With respect to the second issue the Examiner has relied upon Stroth
to show that dual color LEDs are known to provide indications on test
devices. Answer 15. We concur with this finding by the Examiner as it is
supported by the evidence. Further, we concur with the Examiner’s finding
that the device taught by Stroth is a test instrument, as is the claimed device
and the device taught by Reul, thus they are all analogous art (in the same
field of endeavor). Accordingly, we are not persuaded that the Examiner
erred in combining Reul, Mills, and Stroth because Stroth is directed to a
different field of endeavor than the invention, and we sustain the Examiner’s
rejection of claims 10, 11, 16 through 18, 22, 25, and 27 through 32.

SUMMARY
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 1, 2, 4 through 18, 20 through 25 and 27
through 32.

ORDER
The decision of the Examiner to reject claims 1, 2, 4 through 18, 20
through 25 and 27 through 32 is affirmed.
No time period for taking any subsequent action on connection with
this appeal may be extended under 37 C.F.R. 1.136(a)(1)(iv)

Appeal 2010-00586
Application 10/970,042

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AFFIRMED

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