Ford Global Technologies, LLC

Patent Trials and Appeals Board

Mar 8, 2021

2020003584 (P.T.A.B. Mar. 8, 2021)

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. 14/994,568 01/13/2016 Pankaj Kumar 83598741(65080-1800) 2999 113140 7590 03/08/2021 Bejin Bieneman PLC Ford Global Technologies, LLC 2000 Town Center Suite 800 Southfield, MI 48075 EXAMINER WHALEN, MICHAEL F ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 03/08/2021 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): docket@b2iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte PANKAJ KUMAR, HASSENE JAMMOUSSI, and IMAD HASSAN MAKKI __________ Appeal 2020-003584 Application 14/994,568 Technology Center 3600 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 12-20. Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Ford Global Technologies, LLC.” Appeal Br. 3. Appeal 2020-003584 Application 14/994,568 2 CLAIMED SUBJECT MATTER The disclosed subject matter relates to “[o]n-board diagnostic (OBD) tests [that] analyze vehicle operations and may identify problems with vehicle components.” Spec. ¶ 1. Claim 12 is the sole independent claim, is representative of the claims on appeal, and is reproduced below. 12. A system, comprising: a computer comprising a processor and a memory, the memory storing instructions executable by the processor to: receive a first message transmitted from a first vehicle, the first message specifying a fault and one or more vehicle operating conditions during a first diagnostic test from which the fault resulted; determine, after receiving the first message specifying the fault and the one or more vehicle operating conditions, one or more required conditions under which the first diagnostic test is expected to be run without resulting in the fault; and generating a first performance message, the first performance message providing data to indicate the one or more required conditions. REFERENCES Name Reference Date Richter et al. (“Richter”) US 2017/0039785 A1 Feb. 9, 2017 Schumacher et al. (“Schumacher”) WO 99/41583 A1 Aug. 19, 1999 THE REJECTIONS ON APPEAL2 Claims 12-20 are rejected under 35 U.S.C. § 112(b) as indefinite. Final Act. 4. 2 The rejection of claims 12-20 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement, has been withdrawn. See Final Act. 3; Ans. 3. Appeal 2020-003584 Application 14/994,568 3 Claims 12-20 are rejected under 35 U.S.C. § 103 as unpatentable over Richter and Schumacher. Final Act. 6. ANALYSIS The rejection of claims 12-20 as being indefinite Sole independent claim 12 recites “receive a first message transmitted from a first vehicle, the first message specifying a fault and one or more vehicle operating conditions during a first diagnostic test from which the fault resulted.” Appeal Br. 12 (Claims App., emphasis added). The Examiner states, “[i]t is unclear if the claims are claiming that the vehicle failed the test or that the vehicle was unable to run the test.”3 Final Act. 4. Appellant contends, “[w]hen applying the broadest reasonable interpretation of ‘message specifying a fault,’ . . . the plain claim language . . . expla[ins] that ‘a fault message [is] for a diagnostic test.’” Appeal Br. 9. Here, the Examiner appears to take the position that the limitation “during a first diagnostic test” can also mean that a first vehicle was unable to run the test in the first place. Hence, the Examiner appears to be reading the claim term “during” out of claim 12 when, in fact, claim 12 is clear on its face that a test occurred (even if only partially completed) but that the vehicle failed the test because a fault occurred. Accordingly, we do not agree that claim 12 can be construed as encompassing the scenario whereby the “vehicle was unable to run the test” as indicated by the Examiner. Final 3 As per the Examiner, the claim language “appears to indicate that the test was run and a problem was detected, however when read in light of the specification the invention appears to be directed towards determining if the test was capable of being performed.” Final Act. 4. Appeal 2020-003584 Application 14/994,568 4 Act. 4. Instead, we understand this limitation as indicative “that the vehicle failed the test.” Final Act. 4. Accordingly, we do not sustain the Examiner’s rejection of claim 12 as being indefinite on this point. Now, whether or not there is sufficient written description support for such claim language, the proper recourse is via a rejection under 35 U.S.C. § 112(a), yet that rejection has been withdrawn and is not before us for review. See Final Act. 3; Ans. 3. The Examiner also asserts that, regarding claims 12-19, “it is unclear [] what is performing the process in” these claims (noting that “claim 20 clarifies that the system has a server performing the process”). Final Act. 5. Appellant contends that sole independent “[c]laim 12 clearly recites ‘a computer comprising a processor and a memory, the memory storing instructions executable by the processor to’ perform the remaining recitations of claim 12.” Appeal Br. 9. “Thus, it is abundantly clear ‘what is performing the processing in claim 12.’” Appeal Br. 9. We agree with Appellant. Consequently, and based on the record presented, we reverse the Examiner’s rejections of claims 12-20 as being indefinite. The rejection of claims 12-20 as obvious over Richter and Schumacher Appellant argues claims 12-20 together. See Appeal Br. 10-11. We select claim 12 for review, with claims 13-20 standing or falling with claim 12. See 37 C.F.R. § 41.37(c)(1)(iv)(2019). Claim 12 recites memory storing instructions that are executable by a processor to, as previously noted above, “receive a first message transmitted from a first vehicle, the first message specifying a fault and one or more Appeal 2020-003584 Application 14/994,568 5 vehicle operating conditions during a first diagnostic test from which the fault resulted.” The Examiner relies on Richter for such teachings. Final Act. 6-7. Appellant disagrees presenting, as best we understand, two reasons therefore. First, claim 12 recites receipt of a first message specifying a fault “during a first diagnostic test” whereas, “Richter requires completed diagnostic tests to generate the fault report.” Appeal Br. 10 (emphasis added). Second, Appellant disputes Richter’s understanding of “fault” and that, as such, “Richter’s completed diagnostic tests fall outside the broadest reasonable interpretation of ‘fault’ in the context of claim 12.” Appeal Br. 10. Regarding Appellant’s first argument, which is premised on the basis that claim 12 requires receipt of the fault message “during” the test, Appellant directs us to paragraph 25 of the Specification for support. See Appeal Br. 3 (referencing “paragraph 25 of the Specification, as well as block 205 of Figure 2”). Paragraph 25 of Appellant’s Specification states, “[t]he process 200 begins in a block 205 in which the server 135 receives a fault message for a diagnostic test, e.g., an OBD test, transmitted from, e.g., a vehicle 101a.” Thus, while the above discusses receipt of a fault message, there is no indication that fault messages must be received during the test, with other arrangements disavowed. As to that which clearly occurs “during” the test, paragraph 25 states, “[t]he fault message typically includes data identifying an unsuccessful performance of an OBD test and operating conditions of the vehicle 101a during the unsuccessful performance of the OBD test.” Emphasis added. Thus, a skilled artisan, reading Appellant’s Specification, would understand, at a minimum, that the vehicle’s operating Appeal 2020-003584 Application 14/994,568 6 conditions that exist at the time of the test (“during”) would be collected, but that these conditions would not necessarily be reported at that same time. Thus, in view of Appellant’s Specification, the claim term “during,” is understood to refer only to the vehicle’s operating conditions, and not also to the time of receipt of the fault message, as Appellant presumes above. See Appeal Br. 10. We note that paragraphs 8 and 17 of Appellant’s Specification are equally silent about receipt of the fault message during the test (in contrast to data concerning the vehicle’s operating conditions at the time of the test). Paragraph 38 of Appellant’s Specification also appears to relate only to the timing of the vehicle’s operating conditions “during” the test, and not also to receipt of the fault message additionally occurring at that time. Accordingly, we construe the limitation “receive a first message transmitted from a first vehicle, the first message specifying a fault and one or more vehicle operating conditions during a first diagnostic test from which the fault resulted” as not mandating the first message be received “during a first diagnostic test from which the fault resulted.” In other words, based upon a review of Appellant’s Specification, this “during a first diagnostic test” language only applies to the “one or more vehicle operating conditions” that occurred at that time. Based on our claim construction above, Appellant’s distinction that Richter’s report is “from completion of an onboard diagnostic test” (Appeal Br. 10) is not commensurate with the scope of claim 12, which does not restrict receipt of the message to only “during a first diagnostic test.” The same can be said for Appellant’s argument that “Richter requires completed diagnostic tests to generate the fault report.” Appeal Br. 10. Such a Appeal 2020-003584 Application 14/994,568 7 distinction does not render Richter unfit for use by the Examiner when assessing the merits of claim 12. The question then becomes, does Richter’s report identify the vehicle’s operating conditions that existed during the test? As support, the Examiner relies on Richter’s Figures 3 and 6, step 2, item number 301, and paragraphs 41 and 43. Final Act. 7. Paragraph 41 of Richter states, “FIG. 3 shows an alternative example of the determination of a cause of fault.” This paragraph continues stating, “the data from the vehicle 10 are collected” and processed “to determine an overall cause of fault that is transmitted to the vehicle 10 . . . for output to the vehicle user or customer.” Richter ¶ 41. Richter further discloses that vehicle operating conditions, i.e., data collected from the vehicle, include “engine speeds, engine torques, brake values, switching states, and the like.” Richter ¶ 43. Hence, we do not fault the Examiner for relying on Richter for teaching the disclosure of a report identifying a vehicle’s operating conditions that existed during a test where a fault occurred. See Final Act. 6, 7. In short, Appellant’s first contention above (see Appeal Br. 10) is not persuasive the Examiner erred in relying on Richter for teaching this limitation. Regarding Appellant’s second contention (see Appeal Br. 10), Appellant’s Specification identifies a “fault message” as “concerning the unsuccessful performance of diagnostic tests such as OBD tests.” Spec. ¶ 8. Appellant does not explain how Richter’s similar discussion of providing a Appeal 2020-003584 Application 14/994,568 8 fault message (see Richter ¶ 204) can be distinguished from Appellant’s disclosure. See Appeal Br. 10. To be clear, the Examiner states, the term fault[,] given its plain meaning[,] would mean a defect or imperfection; flaw; failing[. T]he claim language appears to be claiming that a test was run and that a problem with the vehicle was detected and this problem could be . . . a component of the vehicle (i.e. the catalytic converter is not working). Ans. 4-5. Further, the Examiner correctly responds that “given the broadest reasonable interpretation . . . the meaning of ‘fault’ as claimed would read on a reported problem.” Ans. 8; see also Final Act. 7 (citing Richter ¶¶ 39, 43-44). We also note that the recitation of the term “typically” in paragraph 25 of Appellant’s Specification does not denote that claim 12’s recitation of “a fault” is specifically defined as “an unsuccessful performance of an OBD test.”5 We thus are not persuaded by Appellant of Examiner error on this point as well. Appellant further argues that “Schumacher does not teach or suggest a ‘message specifying a fault’ as described above because, at most, Schumacher’s declaration of an invalid test is not ‘a message specifying an unsuccessful performance of a diagnostic test.’” Appeal Br. 10. This argument is unpersuasive because it does not address the Examiner’s rejection. The Examiner relies on Richter for disclosing a message specifying an unsuccessful performance of a test. See Final Act. 6-7. Further, the Examiner relies Schumacher for disclosing “determin[ing] . . . one or more required conditions under which the first diagnostic test is 4 “The fault report is generated in the vehicle on the basis of a fault condition of the vehicle.” Richter ¶ 20. 5 We note, however, that Richter also teaches use of an OBD system. See Richter ¶ 20. Appeal 2020-003584 Application 14/994,568 9 expected to be run without resulting in the fault,” as claimed. Final Act. 7. Additionally, the Examiner (correctly) responds that the phrase “a message specifying an unsuccessful performance of a diagnostic test,” “is not in the current set of claims.” Ans. 8. Thus, Appellant’s contentions regarding Schumacher are not persuasive because they do not address the Examiner’s rejection. Appellant also argues that “Schumacher does not collect any data indicating ‘one or more vehicle operating conditions during the first diagnostic test,’ but rather declares the test invalid.” Appeal Br. 10. Again, this argument is unavailing because the Examiner finds that Richter discloses “receiv[ing] a first message . . . the first message specifying a fault and one or more vehicle operating conditions during a first diagnostic test from which the fault resulted,” as claimed. See Final Act. 6-7. In other words, and as expressed above, Schumacher is not relied upon for collecting fault data during a test, but rather for teaching “conditions under which the first diagnostic test is expected to be run without resulting in the fault.” Final Act. 7. As such, Appellant’s argument does not address the Examiner’s rejection. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 12-20 as being unpatentable over the combination of Richter and Schumacher. Appeal 2020-003584 Application 14/994,568 10 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12-20 112(b) Indefiniteness 12-20 12-20 103 Richter, Schumacher 12-20 Overall Outcome6 12-20 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 6 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”