Ex Parte Chigusa et al

Patent Trial and Appeal Board

Apr 24, 2013

11752500 (P.T.A.B. Apr. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHUNSUKE CHIGUSA and
DANIL V. PROKHOROV
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Appeal 2011-002388
Application 11/752,500
Technology Center 3600
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Before MICHAEL L. HOELTER, MITCHELL G. WEATHERLY, and
CARL M. DeFRANCO, Administrative Patent Judges.

WEATHERLY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1, 2, 4, 5, 7, 10-12, 14, 15, 17 and 20. Appellants
have canceled claims 3, 6, 8, 9, 13, 16, 18 and 19. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
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Application 11/752,500
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The claims are directed to a system and method for remote diagnosis
and repair of an engine malfunction. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for remote diagnosis by a
remote station of an automotive engine operating
under the control of an embedded system having a
programmed processor, said method comprising
the steps of:
a) in response to a software malfunction
of the automotive engine which causes the engine
to operate in a manner differently than the
operation of the engine prior to the malfunction,
sending an engine malfunction diagnostic request
from the engine to the remote station,
b) transmitting a software agent selected
as a function of the nature of the malfunction from
the remote station to the engine,
c) executing the software agent by the
programmed processor to collect engine data
relevant to the malfunction,
d) transmitting the collected data from
the engine to the remote station,
e) analyzing the collected data at the
remote station to diagnose the cause of the engine
malfunction,
f) generating an output signal from the
remote station to the engine processor as a result of
said analysis,
g) wherein said output signal generating
step comprises the step of transmitting a software
agent from said remote station to said engine
which, upon execution by the engine processor,
repairs the malfunction if the malfunction
comprises a software malfunction at the engine,
and
h) executing said software agent by the
engine processor.
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REFERENCES
The Examiner relies upon the following evidence:
Irons US 6,112,150 Aug. 29, 2000
Habermas
Bodin
US 2005/0256614 A1
US 2006/0052921 A1
Nov. 17, 2005
Mar. 9, 2006
REJECTIONS
Appellants seek our review of the following rejections.

1. Claims 11, 12, 14, 15, 17, and 20 stand rejected under 35 U.S.C. § 112
second paragraph as being indefinite. Ans. 3-4.
2. Claims 1, 2, 4, 7, 10-12, 14, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bodin and Habermas. Ans. 4-9.
3. Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bodin, Habermas, and Irons. Ans. 10.
OPINION
Indefiniteness of Claims 11, 12, 14, 15, 17, and 20
Independent claim 11 recites, among other limitations, “means for
activating means for sending an engine malfunction diagnostic request to the
remote station.” The Examiner finds that “[i]t is not clear if the limitation is
reciting one structural element (activating means), or … two structural
elements (activating means and sending means).” Ans. 3. Based on this
alleged ambiguity, the Examiner rejects the claim and all its dependent
claims as indefinite under 35 U.S.C. § 112, second paragraph. Id.
Appellants contend that claim 11 unambiguously recites two
structures, with the means for activating being disclosed in the Specification
as controller 14 and the means for sending being disclosed as transceiver 16.
App. Br. 6-7 (citing Spec., Fig. 1, para. [0021]). Determinations of
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indefiniteness under § 112, second paragraph, turn on whether “those skilled
in the art would understand what is claimed when the claim is read in light
of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986). We find that a skilled artisan with access
to the Specification would understand the scope of the phrase at issue for the
reasons that Appellants identify. Therefore, we reverse the rejection of
claims 11, 12, 14, 15, 17, and 20 as being indefinite under 35 U.S.C. § 112,
second paragraph.
Obviousness of Claims 1, 2, 4, 7, 10-12, 14, 17, and 20
over Bodin and Habermas
The Examiner finds that Bodin describes all limitations of
independent claims 1 and 11 except for the step of transmitting a software
agent from the remote station to the engine to permit a repair of the software
malfunction. Ans. 5-6, 11-12. We agree and adopt the Examiner’s findings
set forth on pages 5-6 and 11-12 of the Examiner’s Answer as our own. The
Examiner further finds that Habermas cures the deficiency of Bodin by
describing a remote station that transmits remedial software that is then
executed by the engine processor to correct a software malfunction. Id. at 6.
The Examiner notes that updating software can be viewed as correcting a
“software malfunction” because when software is updated, one infers that
“the previous software was not functioning as well as the new software
would function.” Ans. 12. Based on these findings, the Examiner
concluded that a skilled artisan would have found it obvious “to modify the
invention of Bodin to include transmitting software from the remote station
to the ECU to repair the malfunction as taught by Habermas because many
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automotive malfunctions require software fixes or combinations of hardware
and software fixes.” Ans. 6.
Appellants contend that Bodin fails to disclose or suggest
“transmitting software agents from the repair station to the vehicle to repair
the malfunction in the event that the malfunction is repairable through
software.” App. Br. 8. Appellants also contend that Habermas fails to
disclose transmitting remedial software in response to a malfunction. Id.
at 9. Rather, Appellants argue that Habermas unilaterally transmits software
updates before any malfunction occurs and that Habermas’s software
updates do not repair malfunctions but simply provide additional features.
App. Br. 9; Reply Br. 2.
Appellants’ argument is unpersuasive because it does not address the
rejection as articulated by the Examiner, namely Bodin as modified by the
teachings of Habermas. Instead, Appellants identify alleged deficiencies in
either Bodin or Habermas individually. However, non-obviousness cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner succinctly
summarizes the factual basis for the rejection as follows: “The process of
transmitting software agents in response to detecting a malfunction is taught
by Bodin while Habermas is merely relied upon to show the obviousness of
using software patches to repair malfunctions.” Ans. 13. Appellants have
not apprised us of error in the Examiner’s findings or rationale for
concluding that the claimed subject matter is obvious. Therefore, we affirm
the rejection of independent claims 1 and 11 and the corresponding
dependent claims 2, 4, 7, 10-12, 14, 17, and 20.
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Obviousness of Claims 5 and 15 over Bodin, Habermas, and Irons
Appellants argue that dependent claims 5 and 15 “stand or fall
together with [independent] claims 1 and 11, respectively.” App. Br. 11.
We have affirmed the rejection of claims 1 and 11 for the reasons expressed
above. Therefore, we also affirm the rejection of claims 5 and 15.
DECISION
For the reasons stated above, we:
1. REVERSE the rejection of claims 11, 12, 14, 15, 17, and 20 under 35
U.S.C. § 112 second paragraph as being indefinite;
2. AFFIRM the rejection of claims 1, 2, 4, 7, 10-12, 14, 17, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Bodin and Habermas;
and
3. AFFIRM the rejection of claims 5 and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Bodin, Habermas, and Irons.
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

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