PROEFKE, DAVID T. et al.

Patent Trials and Appeals Board

Jan 22, 2020

14622145 - (D) (P.T.A.B. Jan. 22, 2020)

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.
14/622,145 02/13/2015 DAVID T. PROEFKE P027741-US-NP/003.1151 3745
70422 7590 01/22/2020
LKGLOBAL (GM)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
EXAMINER
CASILLASHERNANDEZ, OMAR
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
01/22/2020 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):
gm@lkglobal.com
gmcruise@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID T. PROEFKE, RON Y. ASMAR,
THOMAS E. UTTER, and AARON P. CREGUER
__________________
Appeal 2019-001659
Application 14/622,145
Technology Center 2600
_________________

Before JAMES B. ARPIN, ADAM J. PYONIN, and
IFTIKHAR AHMED, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20, all of the pending claims. Final Act. 2.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as GM Global Technology
Operations, LLC. Appeal Br. 3.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
August 28, 2018) and Reply Brief (“Reply Br.,” filed December 18, 2018);
the Final Office Action (“Final Act.,” mailed February 27, 2018); the
Examiner’s Answer (“Ans.,” mailed October 18, 2018); and the originally-
filed Specification (“Spec.,” filed February 13, 2015). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed methods and systems relate “to vehicles having
passive entry, passive start functionality, and more particularly relate[] to a
method for configuring a passive entry, passive start key to operate one of a
plurality of designated vehicles.” Spec. ¶ 2.
As noted above, claims 1–20 are pending. Claims 1, 11, and 17 are
independent. Appeal Br. 16 (claim 1), 18 (claim 11), 20 (claim 17) (Claims
App.). Claims 2–10 depend directly or indirectly from claim 1, claims 12–
16 depend directly or indirectly from claim 11, and claims 18–20 depend
directly or indirectly from claim 17. Id. at 16–20.
Claim 1, with disputed limitations emphasized, is representative.
1. A method for authenticating a remote fob selected from a
plurality of fleet fobs with at least one of a plurality of vehicles
to exclusively pair the remote fob with a first vehicle selected
from the plurality of vehicles, the method comprising:
initiating a passive challenge function in the first vehicle;
issuing a vehicle identifier from the body control module of
the first vehicle to the remote fob in response to the passive
challenge function;
generating a functional transmitter identifier in the remote
fob using the vehicle identifier received from the body control
module and a stored transmitter identifier;
issuing the functional transmitter identifier from the remote
fob to the body control module of the first vehicle in response to
the remote fob receiving the vehicle identifier;
comparing the functional transmitter identifier with at least
one authenticated identifier stored in the body control module of
the first vehicle; and
authenticating the remote fob and the body control module of
the first vehicle to enable exclusive radio frequency
communication between the body control module of the first
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vehicle and the remote fob when the functional transmitter
identifier matches the at least one authenticated identifier,
wherein the body control module cannot be authenticated with
the plurality of fleet fobs other than the remote fob such that
radio frequency communication therebetween is disabled until
another passive challenge function is initiated in the first vehicle.
Id. at 16 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name3 Number Pub’d Filed
Forest US 2005/0041813 A1 Feb. 24, 2005 Aug. 19, 2003
Utter US 2007/0001805 A1 Jan. 4, 2007 July 1, 2005
Brecht US 2008/0122594 A1 May 29, 2008 July 5, 2007
Mitchell US 2013/0214900 A1 Aug. 22, 2013 Feb. 21, 2012
Van Wiemeersch US 2014/0288784 A1 Sept. 25, 2014 Mar. 19, 2013
The Examiner also rejects claims 1, 5, 7, 8, 10, 11, 13, 14, and 16–20
under 35 U.S.C. § 103 as obvious over the combined teachings of Utter and
Van Wiemeersch (Final Act. 3–9); claim 2 under 35 U.S.C. § 103 as obvious
over the combined teachings of Utter, Van Wiemeersch, and Mitchell (id. at
9–10); claims 3 and 4 under 35 U.S.C. § 103 as obvious over the combined
teachings of Utter, Van Wiemeersch, Mitchell, and Brecht (id. at 10–12);
claims 9, 12, and 15 under 35 U.S.C. § 103 as obvious over the combined
teachings of Utter, Van Wiemeersch, and Brecht (id. at 12–14); and claim 6
under 35 U.S.C. § 103 as obvious over the combined teachings of Utter,
Van Wiemeersch, and Forest (id. at 15).

3 All reference citations are to the first named inventor only.
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We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Action
and the Answer as our own and add any additional findings of fact for
emphasis. For the reasons given below, we sustain the rejections of the
pending claims.
ANALYSIS
Obviousness Over Utter and Van Wiemeersch, Alone or in Combination
with Other References
A. Independent Claims 1, 11, and 17
As noted above, the Examiner rejects independent claim 1 under 35
U.S.C. § 103 as obvious over the combined teachings of Utter and Van
Wiemeersch. Final Act. 3–4. The Examiner relies on substantially similar
findings and conclusions in rejecting independent claims 11 and 17. Id. at
6–7 (rejecting claim 11), 8 (“Regarding claim 17: Claim[] 17 is rejected
for the same reason of claim 11.”). Therefore, we focus our analysis on the
rejection of claim 1.
With respect to claim 1, the Examiner determines that Utter teaches or
suggests most of the claim limitations (Final Act. 3–4), but the Examiner
acknowledges “Utter does not explicitly disclose initiating a passive
challenge function in the first vehicle and communicate with the fob in
response to the challenge” (id. at 4). Nevertheless, the Examiner finds that
Van Wiemeersch teaches these claim limitations. Id.
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In particular, Van Wiemeersch discloses
In a [passive keyless entry/passive start (PEPS)] system,
an owner may carry an electronic transmission device, such as a
PEPS key fob 104, to allow for “keyless” entry to the vehicle
102. To initiate a door unlock sequence, the owner may touch or
move in close proximity to a PEPS handle capacitive sensor 106
of a vehicle 102 door handle. Upon on an identification of the
potential presence of an owner by a capacitive sensor 106, a
controller 108 of the vehicle 102 may initiate a challenge-accept
sequence with the key fob 104. The sequence may include the
controller 108 sending a low-frequency key wake-up message to
the key fob 104, and listening for a high-frequency response from
the key fob 104 including an identification code. Upon receipt
of the correct identification code, the vehicle controller 108 may
unlock the vehicle 102 doors.
Van Wiemeersch ¶ 12; see id. ¶ 11; see also Spec. ¶ 3 (Appellant
acknowledges “[v]ehicles equipped with [PEPS] functionality are known in
the art.”). The Examiner concludes that a person of ordinary skill in the art
would have had reason to combine the teachings of Utter and Van
Wiemeersch to achieve the method recited in claim 1. Final Act. 4. “The
motivation is [to] save power as the system would wake up by the passive
challenge therefore it would be in a sleep/quiescent state instead of
continuously and actively looking to communicate with the fob.” Id.; see
Utter ¶¶ 23 (“Ordinarily, fob 20 is in a sleep state wherein only a small
portion of its electronics are operating in a power conserving mode, but
sufficient to recognize the arrival of signal 35 from module 40.”), 26
(“Method 400 begins with START 402 that desirably occurs when power is
provided to fob 20. Fob 20 is conveniently but not essentially in a sleep
mode wherein most of the electronics in fob 20 are quiescent and just
enough are powered to detect an incoming signal.”); Van Wiemeersch ¶¶ 12
(“The sequence may include the controller 108 sending a low-frequency key
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wake-up message to the key fob 104” (emphasis added)), 28 (“For example,
the controller 108 may send a low-frequency key wake-up message to a key
fob 104 (emphasis added)); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007) (“Under the correct analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”
(emphasis added)).
Appellant contends the combined teachings of Utter and
Van Wiemeersch fail to render claim 1 obvious for three reasons. Appeal
Br. 9–15. For the reasons given below, we are not persuaded of dispositive
Examiner error by Appellant’s contentions.
First, Appellant contends that the combined teachings of Utter and
Van Wiemeersch fail to teach or suggest the “dynamic configuration” of the
PEPS system initiated by a passive challenge. Appeal Br. 9–11. Initially,
we note that the term “dynamic configuration” is not recited in claim 1. See
id. at 16 (Claims App.). Appellant contends, however, that “the functional
transmitter identifier is dynamically configured (i.e., generated, issued and
compared) within the remote fob for authentication with the body control
module.” Reply Br. 2; see Spec. ¶ 10. Thus, we understand Appellant to
contend that the recited steps of “generating a functional transmitter
identifier in the remote fob using the vehicle identifier received from the
body control module,” “issuing the functional transmitter identifier from the
remote fob to the body control module of the first vehicle,” and “comparing
the functional transmitter identifier with at least one authenticated identifier
stored in the body control module,” describe the dynamic configuration of
the PEPS system. Appeal Br. 16 (Claims App.) (emphases added).
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Appellant asserts that “[t]he Examiner concedes that Utter does not
disclose initiating a passive challenge function in the first vehicle or
communicating with the fob in response to the passive challenge function”
and “[n]owhere does Van [Wiemeersch] teach or suggest that the wake-up
message sent by the controller 108 includes a vehicle identifier.” Appeal
Br. 10. Nevertheless, the Examiner relies on the combined teachings of
Utter and Van Wiemeersch to teach initiating a passive challenge function in
the first vehicle and sending a message from the first vehicle including a
vehicle identifier. Final Act. 3 (citing Utter ¶ 20 (lines 1–11)); see Ans. 5.
Moreover, Utter discloses
During authentication, signal 35 contains the unique ID of
the particular vehicle 40 being accessed and preferably a
randomly or pseudo-randomly generated challenge is also sent.
Processor 42 uses the information from signal 35, in concert with
an encryption or other authentication algorithm and the fob
information stored in memory 44, to generate expected responses
from fobs 20 programmed to the vehicle. During authentication,
a fob present in the vicinity of vehicle 40 receives signal 35 via
receiver 28 and compares the received vehicle ID with those
stored in memory 24.
Utter ¶ 20 (lines 1–11). Thus, we are persuaded that the combined teachings
of Utter and Van Wiemeersch teach or suggest “issuing a vehicle identifier
from the body control module of the first vehicle to the remote fob in
response to the passive challenge function.” Appeal Br. 16 (Claims App.).
As the Examiner correctly observes, it is improper for Appellant to
challenge the references individually when the Examiner relies on their
combined teachings to teach or suggest this limitation. Ans. 4.
As Utter explains, “the unique ID of the particular vehicle 40” is used
by the fob to generate “a response value,” corresponding to the recited
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functional transmitter identifier. Final Act. 3 (citing Utter ¶ 20 (lines 11–
17)). Further, Utter explains that “[t]his response value is then sent[, i.e.,
issued,] as signal 33 to the vehicle.” Utter ¶ 20 (lines 16–17); see Final
Act. 3. Utter then explains that “[u]pon receipt of signal 33 from the fob,
vehicle processor 42 will compare the received response to the expected
responses it has calculated.” Utter ¶¶ 20 (lines 17–19), 21 (lines 8–12); see
Final Act. 3. Specifically, Utter explains:
Thus, authentication can take place either in fob 20 or in module
40 or partly in each. What is important is that the combination
of fob 20 and vehicle module 40 authenticate by comparing
query signals received from the other with IDs or other unique
tags stored in their internal memory, and accept the command or
query if a match is found and reject the command or query if a
match is not found.
Utter ¶ 21 (lines 13–19). Thus, we are persuaded that the Examiner
demonstrates that Utter teaches or suggests the “generating,” “issuing,” and
“comparing” steps, in view of Van Wiemeersch’s teachings, as recited in
claim 1.
Second, Appellant contends Utter fails to describe an authentication
process using a functional transmitter identifier to enable exclusive radio
frequency communication between the fob and the body control module
(BCM). Appeal Br. 11–14; Reply Br. 2–3. Appellant asserts that “[i]n this
context, the term ‘exclusive’ is intended to mean to the exclusion of others;
shutting out or prohibiting others; single or sole.” Appeal Br. 12 n.1.
Nevertheless, Appellant does not identify where the term “exclusive” – or
this definition – appears in the Specification, and we find no use of the term
“exclusive” in the Specification.
Claim 1 recites “[a] method for authenticating a remote fob selected
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from a plurality of fleet fobs with at least one of a plurality of vehicles.”
Appeal Br. 16 (Claims App.) (emphases added). Further, any such
exclusivity recited in claim 1 is constrained by the subsequent wherein
clause: “the body control module cannot be authenticated with the plurality
of fleet fobs other than the remote fob such that radio frequency
communication therebetween is disabled until another passive challenge
function is initiated in the first vehicle.” Id. (emphasis added). Thus, the
claim language does not foreclose a plurality of fobs authenticated with a
plurality of vehicles. The Specification explains, “it is desirable to develop a
simple, quick and secure manner for associating a keyless fob with a BCM
in a PEPS-equipped vehicle. In addition, it is desirable to allow a single
PEPS keyless fob to be fully operational (passive commands, active
commands and immobilizer functions) on more than one vehicle.” Spec. ¶ 6
(emphasis added).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In view of the language
of claim 1 and the Specification’s disclosure, we do not interpret the term
“exclusively” or “exclusive” in claim 1 “to mean to the exclusion of others;
shutting out or prohibiting others; single or sole.” Instead, in this context,
we interpret these terms to mean only that one of a plurality of fobs may be
authenticated to one of a plurality of vehicles at a time. See Ans. 7
(“Therefore, at least in one moment in time, there is exclusive RF
communication between the remote fob and the BCM.”).
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Appellant asserts that:
As claimed, the functional transmitter identifier is
dynamically configured to exclusively pair a fleet vehicle with
a remote fob and vice versa. In other words, a dynamic
configuration is implemented using the functional transmitter
identifier as a separate authentication process to enable exclusive
radio frequency communication between a specific fleet fob with
a particular fleet vehicle. In this way, the remaining fleet fobs,
which would otherwise be readily authenticated with the
particular fleet vehicle cannot be authenticated, and thus are
incapable of enabling remote fob functionality. A different fleet
fob can only be authenticated to that particular fleet vehicle by
initiating another passive challenge, which dynamically
configures the functional transmitter identifier of this different
fleet fob for authentication with the body control module of the
first vehicle.
Appeal Br. 12 (italics added; underlining by Appellant). Appellant then
contends:
Nothing in Utter suggests that these distinct authentication
processes may be combined for authenticating the remote fob to
enable exclusive radio frequency communication and the body
control module of the first vehicle such that radio frequency
communication between the body control module and the other
fleet fobs is disabled until another passive challenge function is
initiated in the first vehicle.
Id. at 13 (citing Utter ¶¶ 20, 21). We disagree.
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Utter’s Figure 1 is reproduced below.

Figure 1 depicts “a simplified schematic block diagram of a system adapted
to train and authenticate a single key to multiple vehicles or multiple keys to
a single vehicle or a combination thereof.” Utter ¶ 10 (emphases added);
see id. ¶ 1. Thus, Utter’s Figure 1 teaches or suggests, among other
combinations, authenticating a single fob to a single vehicle. See Final
Act. 3 (citing Utter, Fig. 1). Further, Utter discloses:
If the outcome of query 318 is YES (TRUE), meaning that the
fob did return the right answer, then method 300 advances to
APPROVE AUTHENTICATION REQUEST step 322 wherein
the authentication request is granted and whatever command is
associated therewith is approved for execution by, for example,
having processor 42 transmit appropriate signal 51, 51' to vehicle
bus 52. Following authentication approval step 322, method
300 loops back to initial query 306 as shown by path 323 and
awaits a further authentication request.
Utter ¶ 25 (lines 20–29) (emphasis added); see Final Act. 4.
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Appellant further contends that because “Utter explicitly teaches that
a single vehicle can respond to multiple fobs, and that multiple fobs can
control multiple vehicles,” Utter teaches away from the recited methods.
Appeal Br. 13–14. For the reasons given above, Appellant misunderstands
the scope of Utter’s teachings. See Ans. 8; see also DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away . . . if it merely expresses a general preference
for an alternative invention[.]”). Thus, we are not persuaded that Utter
teaches away from the recited methods.
As noted above, we agree with the Examiner that Utter’s “response
value,” corresponds to the recited “functional transmitter identifier.” See
Final Act. 3 (citing Utter ¶ 20 (lines 11–17)). Thus, we also agree that Utter
teaches or suggests an authentication process using a functional transmitter
identifier to enable exclusive radio frequency communication between a fob
and a body control module of a vehicle.
Third, Appellant contends the Examiner fails to show that a person of
ordinary skill in the relevant art would have had reason to combine the
teachings of Utter and Van Wiemeersch to achieve the methods of claim 1
with a reasonable expectation of success. Appeal Br. 14–15; Reply Br. 3. In
particular, Appellant contends the Examiner fails to explain how or why the
identified reason to combine the teachings of the applied references, namely,
to achieve power savings, would lead to the recited methods. Appeal
Br. 14–15. We disagree.
As the Examiner has shown, Utter teaches or suggests the majority of
the limitations of claim 1. Final Act. 3–4. Although the Examiner
acknowledges that “Utter does not explicitly disclose initiating a passive
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challenge function in the first vehicle and communicate with the fob in
response to the challenge,” the Examiner finds that these limitations are
taught by Van Wiemeersch. Id. at 4. The Examiner explains:
The motivation [to combine the teachings of Utter and Van
Wiemeersch] is [to] save power as the system would wake up by
the passive challenge therefore it would be in a sleep/quiescent
state instead of continuously and actively looking to
communicate with the fob. Power consumption is well known
problem in PEPS system and wake up messages is a well-known
solution for said problem as shown by the prior art therefore, one
of ordinary skill in the art would have pursued the known
potential solution (wake message) to the problem (power
consumption) of latency with a reasonable expectation of
success.
Ans. 10–11; see Utter ¶¶ 23, 26; Van Wiemeersch ¶¶ 12, 28.
As noted above, “any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR, 550 U.S. at 420.
Moreover, “[o]bviousness does not require absolute predictability of
success,” but rather only a reasonable expectation of success. In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Give the limited purpose for
which the Examiner relies on Van Wiemeersch (see Final Act. 4) and the
well-known nature of the applied teachings of Van Wiemeersch (see Spec.
¶ 3), we are persuaded the Examiner has adequately shown that a person of
ordinary skill in the relevant art would have had reason to combine the
teachings of Utter and Van Wiemeersch to achieve the methods, as recited in
claim 1, with a reasonable expectation of success.
Consequently, on this record, the Examiner did not err in rejecting
claim 1, or similar claims 11 and 17, as rendered obvious over the combined
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teachings of Utter and Van Wiemeersch, and we sustain the rejection of
those claims.
B. Dependent Claims 2–10, 12–16, and 18–20
The Examiner determines that dependent claims 2–10, 12–16, and 18–
20 are rendered obvious over the combined teachings of Utter and
Van Wiemeersch, alone or in combination with the teachings of one or more
other references. See Final Act. 5–20. Appellant does not challenge the
obviousness rejections of the dependent claims separately from their base
claims, independent claims 1, 11, and 17. Appeal Br. 15; Reply Br. 4.
Therefore, for the reasons given above, we also sustain the obviousness
rejections of the dependent claims.
DECISION
1. The Examiner did not err in rejecting claims 1–20 under 35 U.S.C. § 103,
as obvious over the combined teachings of Utter and Van Wiemeersch,
alone or in combination with the teachings of one or more other
references.
2. Thus, on this record, claims 1–20 are not patentable.
CONCLUSION
We affirm the Examiner’s rejections of claims 1–20.
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 5, 7, 8, 10,
11, 13, 14,
16–20
103 Utter, Van
Wiemeersch
1, 5, 7, 8, 10,
11, 13, 14,
16–20

2 103 Utter, Van
Wiemeersch,
2
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Mitchell
3, 4 103 Utter, Van
Wiemeersch,
Mitchell, Brecht
3, 4
9, 12, 15 103 Utter, Van
Wiemeersch,
Brecht
9, 12, 15
6 103 Utter, Van
Wiemeersch,
Forest
6
Overall
Outcome
1–20
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