Robert Beckmann et al.

Patent Trials and Appeals Board

Aug 30, 2019

13245641 - (D) (P.T.A.B. Aug. 30, 2019)

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.
13/245,641 09/26/2011 Robert Beckmann 17047.302.1 6740
36790 7590 08/30/2019
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
08/30/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT BECKMANN, MICHAEL KIRLAUSKI, and
ANDREW WOODARD
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Appeal 2017-011444
Application 13/245,641
Technology Center 3600
____________

Before JENNIFER S. BISK, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 60, 61, 65, and 66. Claims 1–59 and claims 62–64
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellants, the real party in interest is Bluelink Diagnostic
Solutions, Inc. App. Br. 3.
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Application 13/245,641

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STATEMENT OF THE CASE
Appellants’ disclosed and claimed invention “relates generally to
providing diagnostic solutions for analyzing vehicle anomalies, and remotely
modifying certain software stored in vehicle electronic control modules, by
using communication networks such as the internet.” Spec. ¶ 2.
Claim 60 is illustrative of the claimed invention and reads as follows:
60. A method for remotely reprograming an automobile onboard
computer involving
(i) an automobile disposed at a repair shop, the automobile including
the automobile onboard computer,
(ii) a first computing device disposed at the repair shop,
(iii) a J2534-compliant reprogramming tool that is
(A) connected via a first cable terminating in an OBD-II
connector to the automobile onboard computer, and
(B) connected via a second cable terminating in a USB
connector to the first computing device, and
(iv) a second computing device disposed at a location remote from the
repair shop, the second computing device including diagnostic software
loaded thereon providing functionality to reprogram a vehicle onboard
computer via a USB cable connection to a J2534-compliant pass-thru device
which is itself connected to a vehicle onboard computer; the method
comprising:
(a) receiving, at the second computing device from an automobile
diagnostic technician via one or more input devices associated with the second
computing device, input corresponding to interaction with a user interface of
the diagnostic software, and
(b) remotely reprogramming, by the diagnostic software based on the
received input, the automobile onboard computer by communicating data
back and forth between the diagnostic software and the vehicle onboard
computer, the remote reprograming comprising
(I) mimicking, at the second computing device, a USB cable connection
to the J2534-compliant reprogramming tool by
(A) communicating, by link software loaded on the first
computing device to link software loaded on the second computing
device, data received at a USB port of the first computing device from
the J2534-compliant reprograming tool over the second cable,
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(B) communicating, by the link software loaded on the second
computing device to the diagnostic software, data received from the
link software loaded on the first computing device,
(C) communicating, by the link software loaded on the second
computing device to the link software loaded on the first computing
device, data received from the diagnostic software,
(D) communicating, by the link software loaded on the first
device to the J2534-compliant reprogramming tool via the USB port
over the second cable, data received from the link software loaded on
the second computing device,
(II) wherein such mimicking allows the diagnostic software to function
as if it was directly connected via a USB cable to the J2534-compliant
reprogramming tool even though it is not.

THE REJECTIONS2
The Examiner rejects claims 60, 613, 65, and 66 under 35 U.S.C.
§ 112, second paragraph as indefinite. Final Act. 6–7.
The Examiner rejects claims 60, 61, 65, and 66 under 35 U.S.C. § 103
as unpatentable over Kapolka (US 2005/0060070 A1; Mar. 17, 2005) and
Dwan (US 2011/0276218 A1; Nov. 10, 2011). Final Act. 9–11.

2 We note that the Examiner withdraws the rejection of claims 60, 65, and 66
under 35 U.S.C. § 112, first paragraph for insufficient written description
support and withdraws certain basis for the rejection of claims 60, 65, and 66
under 35 U.S.C. § 112, second paragraph as indefinite. See Ans. 8–10.
3 We note that the Examiner does not include claim 61, but claim 61 depends
from claim 60 and would also stand rejected.
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Application 13/245,641

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ANALYSIS
THE INDEFINITENESS REJECTION
Claims 60, 61, 65, and 66
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 60, 61, 65, and 66 as indefinite.
The Examiner determines that the claimed mimicking limitations are
indefinite. In particular, the Examiner explains that the claimed steps are
vague and indefinite in that it is not clear what the term
“mimicking” means to convey. The term “mimicking” is not
defined by the claim, the specification does not recite the term,
and one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention.
Final Act. 7.
On the other hand, Appellants explain that the claimed invention
describes a communications link that is established “which makes it appear
to a remote computer that the remote computer is directly connected via a
cable connection to a pass through device, even though it is not.” App.
Br. 15. Appellants further point out that “[i]t is clear from the Specification
of the present application that this is what the ‘mimicking’ language is
intended to convey.” App. Br. 24.
We agree with Appellants that a skilled artisan would reasonably
understand the recited mimicking limitation. Notably, the claims recite steps
detailing how the claimed mimicking is performed. For example, claim 60
recites “mimicking, at the second computing device, by” communicating
steps (A)–(D). Similarly, claim 66 recites that the remote reprogramming is
over a communication link established between the first and second
electronic devices. As such, based on the record before us, we are persuaded
of error.
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Accordingly, we reverse the Examiner’s decision to reject claims 60,
61, 65, and 66 as indefinite.

THE OBVIOUSNESS REJECTION BASED ON KAPOLKA AND DWAN
Claims 60, 61, 65, and 66
Based on the record before us, we are persuaded that the Examiner
erred in finding that claims 60, 61, 65, and 66 are unpatentable over Kapolka
and Dwan.
The Examiner finds that Dwan teaches the claimed mimicking steps.
Specifically, the Examiner explains that Dwan’s remote servicing was
“indicative of Appellant[s’] communications by software links between
computers.” Ans. 11. Further, the Examiner determines that Dwan’s
disclosure of various wireless connection options, such as Bluetooth, “is
indicative of Appellants’ ‘mimicking . . . a USB cable connection.’”
Ans. 12.
Appellants, however, point out that “the claim explicitly includes
additional detail regarding how such mimicking is carried out” and that
Dwan does not teach or suggest these recited steps. App. Br. 16–17; Reply
Br. 2. We agree. The claimed invention expressly recites additional detailed
steps including, for example, communicating steps (A)-(D), which includes
“communicating, by link software loaded on the first computing device to
link software loaded on the second computing device, data received at a
USB port of the first computing device from the J2534-compliant
reprograming tool over the second cable.” See also claim 66 (reciting that
reprogramming is performed by “a communication link between first and
second electronic devices.”). Although Dwan’s wireless connection may
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generally “mimic” a wired connection, this alone is insufficient to teach or
suggest the detailed communicating steps of the claimed invention. See
App. Br. 16.
Moreover, the Examiner fails to identify the recited first and second
computing devices. As Appellants assert, “Dwan discloses use of a client
terminal, or diagnostic terminal, which may exchange diagnostic
information with a vehicle via wireless communication (e.g. Bluetooth or
WiFi) or via wired communication.” Reply Br. 3. In other words, Dwan’s
wireless connection is directly between the vehicle and a diagnostic
terminal, not between the recited first and second computing devices. As
such, based on the record before us, we are persuaded that the Examiner
erred in finding that claims 60, 61, 65, and 66 are unpatentable over Kapolka
and Dwan.
Accordingly, we reverse the Examiner’s decision to reject claims 60,
61, 65, and 66 as unpatentable over Kapolka and Dwan.

DECISION
We reverse the Examiner’s decision to reject claims 60, 61, 65, and
66.

REVERSED