Ex Parte Vollmer et al

Board of Patent Appeals and Interferences

Nov 8, 2010

10276028 (B.P.A.I. Nov. 8, 2010)

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.
10/276,028 04/29/2003 Vasco Vollmer 10191/2878 7105
26646 7590 11/08/2010
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
REVAK, CHRISTOPHER A
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
11/08/2010 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 VASCO VOLLMER and WOLFGANG BAIERL
____________

Appeal 2009-007704
Application 10/276,028
Technology Center 2400
____________

Before JOHN A. JEFFERY, THU A. DANG, and DEBRA K. STEPHENS,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 13-25. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007704
Application 10/276,028

2
STATEMENT OF THE CASE
Appellants invented a method of accessing a device in a vehicular
communications network via an external device in which a software element
that provides a security function is transmitted to the external device to
reduce load on the vehicle gateway. See generally Abstract; Spec. 1-2.
Claim 13 is illustrative with key disputed limitations emphasized:
13. A method of accessing a device in a communications network in a
motor vehicle by an external device, access by the external device being
controlled by a gateway of the communications network, comprising:

transmitting information regarding available devices in the
communications network by the gateway to the external device following an
access request by the external device;

checking, using the gateway, whether a device requested by the
external device is allowing access;

transmitting a software element to the external device to enable
communication between the external device and the requested device if
access to the requested device is possible; and

reporting by the gateway to the external device that no access to the
requested device is possible if no access to the requested device is possible,

wherein the software element provides a security function.

The Examiner relies on the following as evidence of unpatentability:
Colvin US 6,044,471 Mar. 28, 2000
Gannon US 6,145,082 Nov. 7, 2000

Appeal 2009-007704
Application 10/276,028

3
THE REJECTIONS
1. The Examiner rejected claims 13-15 and 19-25 under 35 U.S.C.
§ 102(e) as anticipated by Gannon. Ans. 3-5.2
2. The Examiner rejected claims 16-18 under 35 U.S.C. § 103(a) as
unpatentable over Gannon and Colvin. Ans. 8-9.

THE ANTICIPATION REJECTION
Regarding representative claim 13, the Examiner finds that Gannon
discloses a method of accessing a device in a motor vehicle with every
recited feature including transmitting a “software element” (i.e.,
information) to an external device, where the software element provides a
“security function” as claimed. Ans. 3, 6-7.
Appellants argue that Gannon does not transmit to an external device
a software element providing a security function as claimed. App. Br. 11;
Reply Br. 2-3. According to Appellants, the Examiner’s position that
Gannon’s software element is related to a security function is flawed since
(1) being related to a security function is not the same as providing a
security function as claimed, and (2) Gannon does not check security
functions outside the gateway in a software element. App. Br. 11; Reply Br.
3 (emphases added). The issue before us, then, is as follows:

2 Throughout this opinion, we refer to (1) the Appeal Brief filed May 27,
2008; (2) the Examiner’s Answer mailed July 14, 2008; and (3) the Reply
Brief filed August 28, 2008.
Appeal 2009-007704
Application 10/276,028

4
ISSUE
Under § 102, has the Examiner erred in rejecting claim 13 by finding
that Gannon transmits a software element providing a security function to an
external device?

FINDINGS OF FACT (FF)
1. Appellants’ Specification notes that “[i]t is known that a gateway
is used when an external device accesses a communications network in a
motor vehicle to prevent negative effects on the availability and stability of a
communications network and the components connected to the
communications network. The gateway thus assumes security functions.”
Spec. 1:8-13.
2. “Security functions . . . are to be provided in such a gateway, so
that access to a communications network does not have unwanted effects.”
Spec. 4:33-35.
3. Gannon discloses a vehicle 100 with vehicle systems 11-13 (e.g.,
engine 12) coupled to a vehicle bus 10 which, in turn, is coupled to gateway
20. The gateway is also coupled to user bus 30 to which user devices 40-60
(e.g., RF data devices) are connected. Based on one or more gateway rules,
the gateway transports vehicle information to the user bus for the benefit of
target user devices. Gannon, col. 2, ll. 15-57; Fig. 1. Gannon’s system is
shown in Figure 1 reproduced below:

Appeal 2009-007704
Application 10/276,028

5

Gannon’s Figure 1 Showing Vehicle Gateway 20 Disposed Between the
Vehicle and User Busses

4. Gannon notes in the Background section that a vehicular bus
contains various (1) proprietary information, and (2) safety-related
information (e.g., an anti-theft system computer program or an anti-lock
braking system computer program). Gannon, col. 1, ll. 30-33.
5. Gannon’s Figure 2 illustrates how the gateway transports vehicle
information to the user bus 30 to benefit one or more target user devices. To
this end, the gateway applies rules pertaining to (1) receiving; (2)
formatting; (3) addressing; and (4) transporting information to the user bus.
Gannon, col. 2, l. 59 – col. 3, l. 54; Fig. 2.

Appeal 2009-007704
Application 10/276,028

6
ANALYSIS
We begin by construing the key disputed limitations of claim 13
which calls for, in pertinent part, transmitting a software element providing a
security function to an external device.
First, the Examiner construes the term “software element” to include
information that is passed between busses via Gannon’s vehicle gateway.3
See FF 3. We see no error in this interpretation given the scope and breadth
of the term “software element.” Notably, Appellants do not define the term
in the Specification to limit the term to particular code or programming.
Claim differentiation principles reinforce this point, for dependent claims 19
and 20 further limit the recited software element to a platform-independent
programming language and platform-specific code, respectively. As such,
the software element recited in independent claim 13 is not limited to such
code or programming: otherwise, claims 19 and 20 would be superfluous to
claim 1.4 In any event, that Gannon notes that vehicular busses typically
contain safety-related information in the form of computer programs (FF 4)
only bolsters the reasonableness of the Examiner’s interpreting information

3 See, e.g., Ans. 6 (noting that Gannon passes “information, as a software
element, to an external device); see also Ans. 7 (“If the information, or
software element, does not meet the security rules, it is not passed onto the
vehicle bus . . . .”) (emphases added).
4 “The doctrine of claim differentiation creates a presumption that each
claim in a patent has a different scope . . . . The difference in meaning and
scope between claims is presumed to be significant to the extent that the
absence of such difference in meaning and scope would make a claim
superfluous.” Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343,
1351 (Fed. Cir. 2005) (internal quotation marks and citations omitted).

Appeal 2009-007704
Application 10/276,028

7
that Gannon’s gateway passes between busses as constituting a “software
element.”
Second, we find the Examiner’s interpretation of “security function”
reasonable in light of the Specification. As the Examiner indicates (Ans. 6),
Appellants’ Specification describes the gateway’s “security functions”
somewhat generally, namely in terms of “preventing negative effects” on the
availability and stability of the network and connected components. FF 1.
Similarly, the gateway’s security functions are said to ensure that access to a
communication network “does not have unwanted effects.” FF 2.
In light of these somewhat general descriptions, and given the absence
of any concrete definition of the term “security function” in the
Specification, we see no error in the Examiner’s position (Ans. 6) that the
information constituting the recited “software element” in Gannon is at least
related to security functions and therefore provides a security function under
the term’s broadest reasonable interpretation, despite Appellants’ arguments
to the contrary (Reply Br. 3). We reach this conclusion noting that
Gannon’s vehicular bus includes safety-related information including,
among other things, an anti-theft system computer program (FF 4)—a
software element that, by its very nature, would provide a security function
(i.e., “prevent negative effects” regarding access to the vehicle and its
associated components).
Lastly, since Gannon’s gateway transports received information (i.e.,
“software element”) from the vehicle bus to the user bus to ultimately
benefit particular target user devices (FF 3, 5), we see no error in the
Examiner’s position that this “software element” would be transmitted to an
external device as claimed.
Appeal 2009-007704
Application 10/276,028

8
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 13, and claims 14, 15, and 19-25 not separately argued.

THE OBVIOUSNESS REJECTION
We will also sustain the Examiner’s obviousness rejection of claims
16-18. Although Appellants argue that Colvin does not cure the previously-
alleged deficiencies of Gannon (App. Br. 12-14; Reply Br. 4-6), we are
unpersuaded by these arguments for the reasons noted previously. The
rejection is therefore sustained.

CONCLUSION
The Examiner did not err in rejecting (1) claims 13-15 and 19-25
under § 102, and (2) claims 16-18 under § 103.

ORDER
The Examiner’s decision rejecting claims 13-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

rwk

KENYON & KENYON LLP
ONE BROADWAY
NEW YORK NY 10004