Toyota Motor Engineering & Manufacturing North America, Inc.

Patent Trials and Appeals Board

Jul 30, 2021

2020005638 (P.T.A.B. Jul. 30, 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.
15/247,329 08/25/2016 Derek Lane Lewis 22562-2127 / 2009-223 5344
96411 7590 07/30/2021
Dinsmore & Shohl LLP
255 East Fifth Street, Suite 1900
Cincinnati, OH 45202
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEREK LANE LEWIS
Appeal 2020-005638
Application 15/247,329
Technology Center 3600
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
GREENHUT, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Toyota Motor
Engineering & Manufacturing North America, Inc.. Appeal Br. 2.
Appeal 2020-005638
Application 15/247,329
2
CLAIMED SUBJECT MATTER
The claims are directed to over-the-air vehicle systems updating and
associated security protocols. Claim 1, reproduced below, is illustrative of
the claimed subject matter:

1. A vehicle comprising:
a vehicle ECU;
a data communications module; and
machine readable instructions stored in one or more memory
modules that, when executed by a processor, cause the vehicle
to:
determine that an ignition start of the vehicle has occurred;
transmit current ECU update version information of the
vehicle to an update server to determine whether an update to
the vehicle ECU is available upon the ignition start of the
vehicle;
send a first security key from the data communications
module to the update server;
receive, at the data communications module, a request
for an updated security key from the update server after
sending the first security key;
send a second security key from the data
communications module to the update server after receiving
the request for the updated security key;
receive, at the data communications module, update
information from the update server after sending the second
security key; and
update the vehicle ECU with the update information.
Appeal 2020-005638
Application 15/247,329
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Moran et al. US 2009/0300595 A1 Dec. 3, 2009
Link, II US 2009/0119657 A1 May 7, 2009
Goto et al. US 2007/0106430 A1 May 10, 2007
Liu WO 2008/014655 A1 Feb. 7 2008

REJECTIONS
Claims 9, 12, 13, 15, 18, and 19 are rejected under 35 U.S.C. 103 as
being unpatentable over Moran. Final Act. 2.
Claims 1–6 and 8 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Link in view of Liu, and Moran. Final Act. 4.
Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Link in view of Liu, and Moran as applied to claim 1 above, and further in
view of Goto. Final Act. 8.
Claims 10, 11, 14, 16, 17, and 20 are rejected under 35 U.S.C. 103(a)
as being unpatentable over Moran in view of Link in view of Liu. Final Act.
9.
OPINION
The three independent claims before us, claims 1, 9, and 15 each
contain a form of the following limitation appearing in claim 1:
Appeal 2020-005638
Application 15/247,329
4
transmit current ECU[2] update version information of the vehicle
to an update server to determine whether an update to the vehicle
ECU is available upon the ignition start of the vehicle
There does not appear to be any significant disagreement between
Appellant and the Examiner concerning the teachings of Link. Final Act. 5;
Appeal Br. 20–21. At startup Link polls the vehicle hardware modules for
version numbers. Link para. 66 (cited at Final Act. 5). Link makes general
mention of receiving software upgrades (para. 66) but for both the rejection
of claim 1 predicated on the combination of Link, Liu, and Moran and the
rejection of claims 9 and 15, predicated on Moran alone, the Examiner relies
primarily on Moran for the subject matter in question. Final Act. 2–3, 7.
Appellant repeats the same arguments concerning the Examiner’s
application of Moran in both rejections. Appeal Br. 13–17, 22–24.
In the Final Action, the Examiner took the position that Moran
determined whether updates were available at the vehicle instead of at the
server and concluded doing the opposite, “transmit[ing] . . . update versions
information . . . to an update server” so that the server3 could compare
version information, would have been an obvious matter of design choice.
Final Act. 2–3, 7. After considering Appellant’s arguments, we cannot find
fault with the Examiner’s reasoning in this regard because it would have

2 “Many operating characteristics are generally based on computer
algorithms that are preprogrammed into various electronic control units
(ECUs).” Spec. para. 3.
3 It is noted that none of claims 1, 9, or 15 appear to contain any language
expressly requiring the update determination itself to actually occur at the
server because the phrase “to determine” does not limit the location at which
the determination is actually made. However, such a step would logically
flow from providing the update server with vehicle ECU version information
enabling such a determination.
Appeal 2020-005638
Application 15/247,329
5
been quite obvious to the skilled artisan that simple numeric comparisons of
version numbers (Moran paras. 48–50; Figs. 4–5) could be similarly made at
a server or vehicle/client computer.
Nonetheless, in the Examiner’s Answer the Examiner points out that
Moran expressly suggests such a modification at paragraphs 35 and 50. Ans.
3–4. Appellant elected to file a Reply Brief4 in response to the Examiner’s
findings in this regard and argued that Moran’s disclosure that
“[c]omparison of current software versions with available software versions
may be done on the server” should be read as limited to the “push”
technique associated with the embodiment depicted in Figure 6 of Moran,
wherein the server appears to initiate communication with the vehicle
controller in contrast to Moran’s Figure 5 embodiment and that which is
purportedly required by Appellant’s claims. Reply Br. 3.
Appellant does not apprise us of any logical or technical reason why
the “(e.g., as part of a ‘push’ technique)” language at the end of paragraph
35 in Moran, or the fact that Moran describes the server performing the
update determination in conjunction with the “push” technique, would lead
the skilled artisan to understand that it is only in conjunction with the “push”
technique that a server may receive ECU software versions currently in use
and perform a comparison with the latest available versions (Moran Figure
6; para. 50). The abbreviation “e.g.,” would be understood to mean “for
example” and neither Moran nor Appellant provides any sound technical
basis why one skilled in the art would understand that example as limiting.
Perhaps Moran’s disclosure is, arguably, insufficient to render Moran
anticipatory to the extent the Examiner relies on aspects of different

4 See 37 C.F.R. § 41.40(a).
Appeal 2020-005638
Application 15/247,329
6
embodiments that may not be expressly or implicitly disclosed as
combinable. However, that is not relevant here. Moran’s disclosure on this
subject certainly seems sufficient to support the Examiner’s position that it
would have been obvious to the skilled artisan to make simple version
comparisons at the server as opposed to at the vehicle, and to transmit to the
server the necessary version information to do so.
Appellant additionally argues that “[Moran’s] pull technique is not
implemented upon the ignition start of a vehicle.” Reply Br. 3. In support of
this argument Appellant incorrectly asserts that “requesting current software
versions in FIG. 4 is a separate process from the pull technique process in
FIG. 5.” Reply Br. 3. In actuality, the information exchange depicted in
Figure 4 of Moran simply precedes that depicted in Figure. 5, likely by a
time period on the order of milliseconds. See Moran paras. 48–49. Appellant
does not apprise us, and there does not appear to be, any claim language
precluding the presence of the additional step of, upon ignition, obtaining
ECU software version information before communicating version
information with the update server. Indeed, according to Appellant’s own
disclosure it is the data communications module (DCM) 16 that
communicates with the servers 18 and not the ECUs directly. Fig. 1; Spec.
passim. Dependent claims 5, 14 and 20 expressly require ECU version
information to be sent by the data communications module. No mention is
made in the independent or dependent claims, or appears to be made in
Appellant’s disclosure, as to how and when Appellant’s DCM obtains that
version information from the ECUs. For all a reader knows it may be done
by the exact process depicted in Figure 4 of Moran or by something entirely
different. In either case, we are not apprised of any reason, based on the
claim language or based on Appellant’s disclosure, to interpret any of the
Appeal 2020-005638
Application 15/247,329
7
independent claims as precluding the step of first building or gathering
version information (Figure 4 of Moran) prior to communicating version
information with an update server (Figures 5 and 6 of Moran). Neither the
claims themselves nor Appellant’s disclosure contains anything indicating
disavowal of such a precedent step, and the presence of such a step does not
remove the “transmit[ing] . . . update version information . . . to an update
server” aspect of the claimed subject matter from being reasonably regarded
as occurring “upon the ignition start of the vehicle.”
For the foregoing reasons we sustain the Examiner’s rejections.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9, 12, 13,
15, 18, 19
103 Moran 9, 12, 13,
15, 18, 19

1–6, 8 103 Link, Liu, Moran 1–6, 8
7 103 Link, Liu, Moran,
Goto
7
10, 11, 14,
16, 17, 20
103 Moran, Link, Liu 10, 11, 14,
16, 17, 20

Overall
Outcome
1–20

Appeal 2020-005638
Application 15/247,329
8
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED