Ex Parte Chigusa et alDownload PDFPatent Trial and Appeal BoardApr 24, 201311752500 (P.T.A.B. Apr. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SHUNSUKE CHIGUSA and DANIL V. PROKHOROV ____________________ Appeal 2011-002388 Application 11/752,500 Technology Center 3600 ____________________ 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. Appeal 2011-002388 Application 11/752,500 2 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. Appeal 2011-002388 Application 11/752,500 3 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 Appeal 2011-002388 Application 11/752,500 4 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 Appeal 2011-002388 Application 11/752,500 5 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. Appeal 2011-002388 Application 11/752,500 6 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 Klh Copy with citationCopy as parenthetical citation