VALEO SECURITE HABITACLE

Patent Trials and Appeals Board

Aug 3, 2021

2021000263 (P.T.A.B. Aug. 3, 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.
14/904,200 01/11/2016 Eric Menard 17089/122001 9292
22511 7590 08/03/2021
OSHA BERGMAN WATANABE & BURTON LLP
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
BOOMER, JEFFREY C
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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):
docketing@obwbip.com
escobedo@obwbip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC MENARD, FRÉDÉRIC GEHIN, and FABIENNE MASSON
Appeal 2021-000263
Application 14/904,200
Technology Center 3600
Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.
Opinion for the Board filed by SONG, Administrative Patent Judge

Opinion Dissenting in Part filed by CAPP, Administrative Patent Judge

SONG, 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, 3–6, 8, 9, 11–13, and 17–20, which
constitute all the claims pending in this application. Claims 2, 7, 10, and
14–16 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
VALEO SECURITE HABITACLE. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for authenticating a command for
a motor vehicle. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for authenticating a command to be applied to a
motor vehicle, the method comprising:
a first step of generation, by an electronic control unit of
the motor vehicle, of first data;
a second step of transmission, by the electronic control
unit, of the first data to a mobile terminal comprising a screen;
a third step of displaying, on the screen of the mobile
terminal, a human user authentication test, triggered by the first
data, the human user authentication test containing within itself
a solution to the human user authentication test, the solution
itself being displayed on the screen to the human user;
a fourth step of performing the authentication test, by
reproducing the solution to the human user test by a human user,
in order to obtain second data, wherein the reproduced solution
is one of correct or incorrect;
a fifth step of transmission, by the mobile terminal, of the
second data to the electronic control unit;
a sixth step of validation, by the electronic control unit, of
the second data by comparison with a key of the first data; and
after the second data are validated by the key of the first
data, a seventh step of activation, by the electronic control unit,
of the motor vehicle for a performance of at least a part of the
command, and
wherein the command is a command to perform a driving
maneuver of the motor vehicle to move the motor vehicle
between an initial position and a final position.
Appeal Br. 24 (Claims App., emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Traenken-Schuh WO 2009/017751 A1 Feb. 5, 2009
Jones US 2011/0271210 A1 Nov. 3, 2011
Adipietro US 2012/0031963 A1 Feb. 9, 2012
Reichel US 2014/0180523 A1 June 26, 2014
Godse US 2015/0007289 A1 Jan. 1, 2015
REJECTIONS2
1. Claims 1, 3, 5, 8, 9, 11–13, 18, and 20 are rejected under 35
U.S.C. § 103 as being unpatentable over Traenken-Schuh in view of Godse
and Reichel. Final Act. 4.
2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Traenken-Schuh in view of Godse, Reichel, and Campbell. Final
Act. 8.
3. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable
over Traenken-Schuh in view of Godse, Reichel, and Adipietro. Final
Act. 9.
4. Claim 17 and 19 is rejected under 35 U.S.C. § 103 as being
unpatentable over Traenken-Schuh in view of Godse, Reichel, and Jones.
Final Act. 10.
OPINION
Rejection 1:
Claims 1, 3, 5, 8, 9, 11–13, 18, and 20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Traenken-Schuh in view of Godse and
Reichel. Final Act. 4. In rejecting independent claim 1, the Examiner finds
that Traenken-Schuh discloses a method of authenticating a command

2 The Examiner’s rejection of claims 1, 3–6, 8, 9, 11–13, and 17–20 under
35 U.S.C. § 112(b) has been withdrawn. Ans. 3–4; Final Act. 3–4.
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substantially as claimed, including “displaying . . . [a] human user
authentication test containing within itself a solution to the human user
authentication test.” Final Act. 4 (citing Traenken-Schuh 8). The Examiner
explains that in accordance with the broadest reasonable interpretation, “the
digital test contains within the digital routine associated with the test the
solution to the test. The test routine recognizes a correct sequence of icons;
therefore, the test routine itself contains the solution.” Final Act. 4–5
(bolding removed).
The Examiner concedes that Traenken-Schuh “does not disclose the
solution itself being displayed on the screen to the human user.” Final
Act. 4–5. The Examiner finds that Godse discloses this missing feature, and
concludes that “[i]t would have been obvious to one of ordinary skill in the
art . . . to modify Traenken-Schuh et al. to provide the aforementioned
limitations taught by Godse with the motivation of improving user
interaction.” Final Act. 5 (citing Godse ¶¶ 2, 25).
The Examiner also relies on Reichel for disclosing “the known
technique of performing an authorization routine before permitting an
autonomous vehicle to perform a parking maneuver,” and concludes that the
claim would have been obvious to one of ordinary skill in view of Reichel
“with the motivation of improving parking routines for autonomous
vehicles.” Final Act. 6 (citing Reichel ¶¶ 5–9, 22).
The Appellant disagrees and, except for dependent claim 8, argues
these claims together as a group. Appeal Br. 8. We select claim 1 as
representative, and claims 3, 5, 9, 11–13, 18, and 20 stand or fall with
claim 1.
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The Appellant initially argues that “for a test that contains ‘within
itself a solution,’ the solution must be made available to any test-taker using
the indication on the screen, without requiring extra confidential knowledge,
such as a password, that is known only to certain authorized people.”
Appeal Br. 10 (citing Spec. 11, ll. 23–25). According to the Appellant, the
Examiner’s application of Traenken-Schuh is based on an interpretation of
this limitation that is “inconsistent with the [S]pecification” because
Traenken-Schuh relates to passwords, and “[o]ne of ordinary skill in the art
reading Traenken-Schuh would understand that the authentication disclosed
in Traenken-Schuh is the opposite of a test that “contain[s] within itself a
solution.’” Appeal Br. 13. The Appellant also asserts that the Specification
“effectively disavows the Examiner’s interpretation,” by “disparage[ing] the
password-based test,” and by “describ[ing] a password-based test as an
opposite example.” Appeal Br. 13 (citing Spec. pg. 11, l. 7–pg. 12, l. 30,
Figs. 5a–5c); Reply Br. 4–5.
We are not persuaded by the Appellant’s initial argument because, as
the Examiner explains, the Specification is silent as to the meaning of “an
authentication test containing within itself a solution” such that the broadest
reasonable interpretation of this limitation encompasses software “which
executes a testing method - i.e.[,] a testing software routine - that contains
within the code a solution to the test.” Ans. 4. As the Examiner explains,
“the computer and testing routine itself determines the success of an
attempted solution by a user is evidence that the testing routine contains
within itself the solution,” and “the solution is preexisting in order for a
sequence of icons to be established as a correct solution.” Ans. 4.
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The Appellant also argues that “one of ordinary skill in the art would
not have been motivated to modify the authentication test of Traenken-
Schuh to arrive at the claimed human user authentication test” because “[i]t
would defeat the purposes of a password-based authentication test if that test
indicated the password (i.e., the ‘solution to the test’) to the user (i.e.,
‘contained within [the test] itself[’]).” Appeal Br. 14. Thus, the Appellant
argues that “one of ordinary skill in the art would have no motivation to
make such modification.” Appeal Br. 15. We agree with the Appellant.
The Examiner explains that in the proposed rejection, “[s]ince
Trae[n]ken-Schuh requires a sequence of icons presented in a pattern be
selected, this is modified with the technique in Godse of displaying a pattern
which the user must trace” such that “Trae[n]ken-Schuh now displays the
required pattern required to pass the test.” Ans. 5 (citing Godse ¶ 38,
Fig. 2). According to the Examiner, the method and apparatus of Traenken-
Schuh “would perform just as before but include a displayed pattern to be
traced by a user.” Ans. 6. The Examiner acknowledges that:
The pool of users who could access the machine would change -
the number would presumably increase - however, this would not
prohibit the testing routine to function as described but would
merely change the number of people with access to the
computer/machine, which could be advantageous depending on
the intended users of the computer/machine.
Ans. 6.
However, as the Appellant argues, modifying Traenken-Schuh based
on Godse as proposed so as to display the solution to the authentication test
would result in “any human user [] be[ing] granted access to the target that
Traenken-Schuh seeks to restrict access to. This would not only change the
principle of operation of Traenken-Schuh, but would also render
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Traenken-Schuh completely useless for its intended purpose.” Appeal
Br. 15; see In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (likely no
motivation to make the proposed modification if “the [prior art] apparatus . .
. would be rendered inoperable for its intended purpose.”); see also In re
Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the
framework of section 103 to pick and choose from any one reference only so
much of it as will support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art.”); Belden Inc. v. Berk–Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make
the combinations or modifications of prior art to arrive at the claimed
invention.”).
The image password disclosed in Traenken-Schuh is to authenticate
authorized users. Traenken-Schuh, e.g., pg. 1, ll. 9–18; pg. 4, ll. 16–17;
pg. 6, ll. 6–9; pg. 6, l. 21–pg. 7, l. 2. In addition to being directed to an
image password system that requires selection of a specific sequence of
icons, Traenken-Schuh optionally “repositions the plurality of icons after
each input.” Traenken-Schuh Abs.; pg. 8, ll. 3–18; pg. 9, ll. 7–21. Thus,
Traenken-Schuh further suggests enhancing an image password by not only
requiring the proper sequence of icons to be entered, but by also requiring
the user to look for the icons as their positions are changed, instead of
allowing selection of icons based on knowing their prior positions or by
pattern selection, thereby enhancing security. In other words, Traenken-
Schuh is clearly dedicated to requiring a user to know the sequence of icons
to be entered; displaying the authenticating sequence of icons to be entered
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(i.e., the “solution” per the Examiner’s proposed modification) on the screen
would wholly undermine Traenken-Schuh.
In contrast, the proposed modification allows authentication and
access to any adult human user that can follow the displayed instructions to
satisfy the password requirement.
Therefore, we agree with the Appellant that the proposed modification
to Traenken-Schuh would “defeat the purposes of a password-based
authentication test” of Traenken-Schuh so as to render it inoperable for its
intended purpose, and, thus, the Examiner has not shown that a person of
ordinary skill would have made such a modification. Appeal Br. 14–15. As
the Appellant also points out, the Examiner’s application of Reichel does not
remedy the above-noted deficiency of the proposed modification of
Traenken-Schuh in view of Godse. Appeal Br. 19. Accordingly, we reverse
this rejection of claim 1, and of claims 3, 5, 8, 9, 11–13, 18, and 20 that
depend from claim 1. The Appellant’s arguments specifically directed to
dependent claim 8 are moot. Appeal Br. 17–19.

Rejections 2–4:
The Examiner’s rejections of dependent claims 4, 6, 17, and 19 in
these rejections are all premised on the deficient combination of Traenken-
Schuh in view of Godse, and the Examiner’s application of various other
secondary references does not remedy the deficiency. Final Act. 8–10.
Therefore, these rejections are also reversed.
CONCLUSION
The Examiner’s rejections are reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5, 8, 9,
11–13, 18,
20
103 Traenken-Schuh,
Godse, Reichel
1, 3, 5, 8, 9,
11–13, 18,
20
4 103 Traenken-Schuh,
Godse, Reichel,
Campbell
4
6 103 Traenken-Schuh,
Godse, Reichel,
Adipietro
6
17, 19 103 Traenken-Schuh,
Godse, Reichel,
Jones
17, 19
Overall
Outcome
1, 3–6, 8, 9,
11–13, 17–
20

REVERSED

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CAPP, Administrative Patent Judge, dissenting in part.

I disagree with my colleagues over the matter of whether eliminating
the memory requirement of Traenken-Schuh would defeat its “purpose”
thereby rendering it unsatisfactory for its intended purpose. Traenken-
Schuh, Godse, and Appellant’s invention all present a task to a user that
must be completed satisfactorily in order to pass a “test” and thereby
authenticate the user. Traenken-Schuh differs from Appellant’s invention
primarily in that completing the task requires the user to employ his or her
memory to pass the authentication test.
In my opinion, the Examiner’s proposed modification of Traenken-
Schuh is easily implemented. Basically, it just requires the skilled artisan to
implement software logic so that, instead of requiring the user to rely on
memory to pass the authentication test, the user need only solve a visual-
manual task presented on a device display, where all of the information
needed to solve the task is presented on the display. Surely such falls within
the ambit of ordinary skill and produces results that are entirely expected.
I view this situation as analogous to unlocking a padlock. Some
padlocks are opened using a combination of numbers. Other padlocks are
opened using a key. In this analogy, Appellant’s invention is like the keyed
padlock and Traenken-Schuh is like the combination lock. In each case, a
criterion must be satisfied before the lock is opened. In the case of the
keyed lock, the criterion is using a key where notches have been cut into the
blade that conform to the internal mechanics of the lock. In the case of a
combination lock, tumblers are arranged to conform to the internal
mechanics of the lock by turning the dial on the face of lock. The most
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significant difference between the two types of locks is that the combination
lock requires memory – someone has to remember the combination.
In agreeing with the Examiner that the subject claims are unpatentable
as obvious, I give far less weight than my colleagues to what they consider
to be the so-called “purpose” of the authentication test. Common sense
dictates that “familiar items may have obvious uses beyond their primary
purposes, and a person of ordinary skill often will be able to fit the teachings
of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). Consequently, “[a] reference may
be read for all that it teaches, including uses beyond its primary purpose.” In
re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418–421 (2007). In my opinion, combining the
prior art in the manner proposed by the Examiner amounts to no more than
fitting the teachings of multiple patents together like pieces of puzzle and, in
this case, it is a relatively easy puzzle to solve.
All user authentication tests require the user to satisfy a criterion as a
condition to “unlock” a system. Although Traenken-Schuh’s user
authentication test requires the user to engage memory, the remainder of the
reference is easily modified to achieve the claimed invention. It is well
settled that merely omitting an element and its function, such as omitting the
memory feature of Traenken-Schuh, in a combination where the remaining
elements perform the same functions as before involves only routine skill in
the art. In re Karlson, 311 F.2d 581, 584 (CCPA 1963). Here, the
Examiner cites relevant art for the missing element of Traenken-Schuh and
the Examiner provides a thoughtful and reasonable rationale for making the
modification.
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As a person deemed to be of scientific competence in the field, the
Examiner is responsible to make findings, informed by scientific knowledge,
as to the meaning of prior art references to persons of ordinary skill in the art
and the motivation those references would provide to such persons. In re
Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary
factual evidence, those findings can establish a prima facie case of
obviousness. Id. In the instant case, I discern that Appellant identifies no
legal error, nor does Appellant present factual evidence that strikes me as
sufficient to overcome the Examiner’s prima facie case.
I would affirm the Examiner’s unpatentability rejections of the
pending claims. Therefore, I respectfully DISSENT.