Ex Parte Hasegawa et al

Patent Trial and Appeal BoardSep 20, 2012

10822072 (P.T.A.B. Sep. 20, 2012)

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. 10/822,072 04/08/2004 Shinichi Hasegawa 09812.0524-00000 2104 22852 7590 09/21/2012 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER TO, TUAN C ART UNIT PAPER NUMBER 3662 MAIL DATE DELIVERY MODE 09/21/2012 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 SHINICHI HASEGAWA, TAKUMI ARIE, and HIROSHI AMANO ____________ Appeal 2010-006863 Application 10/822,072 Technology Center 3600 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and WILLIAM A. CAPP, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006863 Application 10/822,072 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, and 12-17. Claims 3-11 have been canceled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. REJECTIONS Claims 1, 12, 14, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Carroll (US 2003/0097211 A1, pub. May 22, 2003) and Lightner (US 6,636,790 B1, iss. Oct. 21, 2003). Claims 2 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Carroll, Lightner, and Katagishi (US 2004/0210363 A1, pub. Oct. 21, 2004). Claims 13 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Carroll, Lightner, and Borgesson (US 2005/0203684 A1, pub. Sep. 15, 2005). CLAIMED SUBJECT MATTER Claims 1 and 14 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An onboard apparatus mounted on a vehicle, comprising: getting means for automatically getting vehicle model information from the vehicle by determining a shape of a connector used to attach the onboard apparatus to the vehicle, the vehicle model information being peculiar to the vehicle; Appeal 2010-006863 Application 10/822,072 3 storage means for storing the vehicle model information and design information, the design information comprising at least one of a layout of a screen, a shape of operating keys, and a color pattern; recognition means for recognizing the vehicle model, based on the vehicle information obtained by the getting means; design setting means for setting the design information, the setting of the design information being at least partially based on the vehicle model information; and display means for displaying the design information set by the design setting means. OPINION Claim 1 recites an onboard apparatus mounted on a vehicle including a “getting means for automatically getting vehicle model information from the vehicle by determining a shape of a connector used to attach the onboard apparatus to the vehicle, the vehicle model information being peculiar to the vehicle.” App. Br., Claims Appendix. Similarly, claim 14 recites an onboard apparatus mounted on a vehicle including a “getting means for automatically getting vehicle model information from the vehicle by determining a formed position of a connector used to attach the onboard apparatus to the vehicle, the vehicle model information being peculiar to the vehicle.” Id. The Examiner finds Carroll fails to disclose the above recited limitations of claims 1 and 14, but that Lightner’s disclosure cures the deficiency of Carroll with respect to these claims. Ans. 5-6. More Appeal 2010-006863 Application 10/822,072 4 specifically, the Examiner finds that Lightner’s OBD-II connector 1201 corresponds to the “getting means” of claims 1 and 14, and concludes that: it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify . . . [Carroll’s system with Lightner’s teaching] so that a vehicle can be remotely diagnosed from a control service center based on the received diagnostic data from the vehicle. Ans. 5-6. The Examiner’s basis for equivalence between the “getting means” of claims 1 and 14 and Lightner’s OBD-II connector 120 is that the data transmissions have a format and pass between the data collector/router 35 and the vehicle’s OBD/ECU system 1002 through the cavities of connector 120. Ans. 5; col. 6, ll. 53, 54. The format of the data transmissions is dependent on a vehicle’s make and model, e.g., “Ford and General Motors vehicles use an OBD data format called J1850; data in this format pass through cavities 2 and 10.” Col. 7, ll. 1-3. Lightner also discloses that although the data transmission format may vary depending on the make and model, the mechanical interface of the OBD-II connector is a standard connection. Col. 6, ll. 65, 66. More specifically, the OBD-II “connector 120 has a serial, 16-cavity layout, with specific electrical connections in separate cavities supplying data and electrical power from the OBD/ECU system 100.” Col. 6, ll. 60-62. The Examiner elaborates by stating that “the shape of the connector (120) is defined by its format and the specific formed position of the cavities from the 16 cavity layout rather than the standard shape of the OBO-II with 16 cavity layout” and “[t]he formed position of the 1 We note that “OBD” stands for on-board diagnostics. Col. 1, l. 38. 2 We note that “ECU” stands for electronic control unit. Col. 2, l. 6. Appeal 2010-006863 Application 10/822,072 5 connector (120) is defined by the formed position of the cavities from the 16-cavity layout.” Ans. 10. The Appellants assert that Lightner discloses “a connector with a standard interface and different data formats that pass through different cavities of the connector.” App. Br. 13. Indeed, by having a standard mechanical interface Lightner’s OBD-II connector 120 does not provide Lightner’s system with the ability to determine a shape of a connector or a formed position of a connector. This is distinguished from the present invention as disclosed in the Specification at pages 23-24, which describes how “pins 103 and 104 work as one of the connectors” and “the number and the positions of the pins 103 and 104 fitted in the recessed parts 21a – 21h can be detected.” Accordingly, the Appellants correctly contend that since Lightner’s OBD-II connector has a standard mechanical interface it is not equivalent to the “getting means for automatically getting vehicle model information from the vehicle by determining a shape of a connector used to attach the onboard apparatus to the vehicle” as recited in claim 1, or the “getting means for automatically getting vehicle model information from the vehicle by determining a formed position of a connector used to attach the onboard apparatus to the vehicle” as recited in claim 14. App. Br., Claims Appendix; see Reply Br. 6. As such, the combined teachings of Carroll and Lightner fail to render the subject matter of claims 1 and 14 obvious. App. Br. 12, 14. Thus, the Examiner’s rejection of claims 1 and 14, and their dependent claims 12 and 16, respectively, as unpatentable over Carroll and Lightner is not sustained. The remaining rejections based on Carroll and Lightner in combination with Katagishi or Borgesson rely on the same unsubstantiated Appeal 2010-006863 Application 10/822,072 6 finding discussed above, i.e., that the Examiner’s cited disclosure of Lightner corresponds to the “getting means” of claims 1 and 14. As such, we cannot sustain the rejections under 35 U.S.C. § 103(a) of claims 2, and 15 as unpatentable over Carroll, Lightner, and Katagishi, and claims 13 and 17 as unpatentable over Carroll, Lightner, and Borgesson. DECISION We REVERSE the rejections of claims 1, 2, and 12-17. REVERSED Klh