Ex Parte Kuentzle et al

Patent Trial and Appeal BoardApr 29, 2013

11528222 (P.T.A.B. Apr. 29, 2013)

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. 11/528,222 09/26/2006 Matthias Kuentzle 10191/4947 5487 26646 7590 04/30/2013 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER TRAN, BINH Q ART UNIT PAPER NUMBER 3748 MAIL DATE DELIVERY MODE 04/30/2013 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 MATTHIAS KUENTZLE and JOERG KIESER ____________________ Appeal 2011-000740 Application 11/528,222 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and BEVERLY M. BUNTING, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000740 Application 11/528,222 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a device and method for diagnosing a technical apparatus. Claims 1 and 7 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for diagnosing a technical apparatus comprising: a diagnosis device adapted to be activated when predetermined states of the technical apparatus are present, and wherein the diagnosis device is further adapted to be subsequently deactivated when at least one of the predetermined states is no longer present; and an arrangement for storing, upon the deactivation of the diagnosis device, information that identifies which of the predetermined states is no longer present. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Yamamoto US 2005/0033503 A1 Feb. 10, 2005 REJECTION The Examiner made the following rejection: Claims 1-12 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Yamamoto. Ans. 4. Appeal 2011-000740 Application 11/528,222 3 ANALYSIS Appellants argue claims 1-12 as a group. App. Br. 3-6. We select claim 1 as the representative claim, and claims 2-12 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 1 encompasses a diagnosis device that is activated when predetermined states of the engine are present, and deactivated when at least one of the predetermined states is no longer present, and includes an arrangement for storing information which identifies which of the predetermined states is no longer present when the diagnosis device is deactivated. The Examiner found that Yamamoto discloses a device and method for diagnosing a technical apparatus that includes a diagnosis device (e.g., ECU 3, ECU 4) that is activated when predetermined states (e.g., IG, Vehicle, Sensors, Evaporative Leak) of the technical apparatus are present, and deactivated when at least one of the predetermined states is no longer present. Ans. 4 (citing Yamamoto, paras. [0109]-[0115]). The Examiner also found that Yamamoto discloses an arrangement for storing (e.g. ECU, Internal Memory) information that identifies which of the predetermined states is no longer present when the diagnosis device is deactivated. Ans. 4- 5 (citing Yamamoto, paras. [0125]-[0135]). Appellants challenged the Examiner’s finding that the ECU of Yamamoto corresponds to the “diagnosis device” recited in claim 1, and contend that ECU 4 and ECU 3 of Yamamoto are two distinct devices with different functions. App. Br. 4- 5; Reply Br. 2-3. Appellants’ argument does not apprise us of error in the Examiner’s findings, as Yamamoto clearly teaches an electronic control apparatus as controlling basic functions of the vehicle, and is activated in response to a key switch being closed, or with a Appeal 2011-000740 Application 11/528,222 4 key switch open in response to an internally or externally generated activation request. (Yamamoto, paras. [0012]-[0014]; fig. 1). In addition, we see no logic or evidence that supports Appellants’ implication that a vehicle electronic control apparatus could not include multiple engine control units in communication with each other. Giving the claim the broadest reasonable interpretation as we must, the claim term “a diagnosis device” does not exclude a diagnosis device including multiple ECU’s. Therefore, we are not apprised of error in the Examiner’s finding that the ECU of Yamamoto corresponds with the diagnosis device recited in claim 1, and is activated or deactivated depending on the predetermined state of the engine. Appellants also challenge the Examiner’s finding that Yamamoto teaches “an arrangement for storing, upon the deactivation of the diagnosis device, information that identifies which of the predetermined states is no longer present” as recited in claim 1. App. Br. 6. Appellants contend that the “diagnostic history data” disclosed in paragraphs [0127] and [0135] does not include “information that identifies which of the predetermined states (e.g., IG, Vehicle, Sensors, Evaporative Leak, according to the Examiner) is no longer present.” Id. In response, the Examiner pointed to the processing routine described with respect to Figure 7 in Paragraphs [0125]-[0135] as teaching: “an arrangement for storing, upon the deactivation of the diagnosis device (Yamamoto discloses "deactivating the immobilizer ECU 3 and interrupting the communication", information that identifies which of the predetermined states is no longer present (If so, the transfer of diagnostics history data is halted and communication with the immobilizer ECU 3 is started in step 508. Otherwise, step 506 is executed, in which 506 a decision is made as to whether all of the diagnostics Appeal 2011-000740 Application 11/528,222 5 history data have been transferred to the navigation apparatus 8. If all of the diagnostics history data have not yet been transferred then processing returns to step 504, while if the transfer of data has been completed, processing proceeds to step 507)”. Ans. 7-8. Appellants counter that the above quoted paragraph does not teach “information that identifies which of the predetermined states is no longer present” and stored upon the deactivation of the diagnosis device. Reply Br. 5. Further, Appellants contend that Paragraph [0132] does not teach an arrangement for storing, upon the deactivation of the diagnosis device, information that identifies which of the predetermined states [required for the activation of the diagnosis device] is no longer present," as recited in claim 1, particularly since there is no suggestion in Yamamoto that the information regarding the production of IG signal is stored upon the deactivation of ECU 3. Reply Br. 5-6. Appellants have not pointed to persuasive evidence to the contrary within the teachings of Yamamoto regarding the definition of information stored upon the deactivation of the diagnosis device that “identifies which of the predetermined states is no long present,” that is inconsistent with the Examiner’s findings.1 The Examiner’s interpretation of “information that identifies which of the predetermined states is no longer present” is within the broadest reasonable interpretation of claim 1 in view of the Specification. Further, there is no recitation in claim 1 which limits the stored information to “which of the predetermined states [required for 1 37 C.F.R. § 41.37(c)(1)(vii) requires more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Appeal 2011-000740 Application 11/528,222 6 the activation of the diagnosis device] is no longer present” as argued by Appellants. Rep. Br. 5,6. The Examiner’s findings that Yamamoto stores information that identifies which of the predetermined states is no longer present is supported by a preponderance of the evidence. (See Yamamoto, paras. [0011] -[0014], [0022]). Yamamoto states that the electronic control apparatus includes a “memory means for storing, as diagnostics history data, information relating to a failure to obtain a positive validation result through communication with the user validation apparatus.” (Id. para. [0024]). Further, Yamamoto acknowledges that the diagnostics history data may include information relating to failure diagnosis of various equipment of the vehicle. (Id. para. [0110]). The methodology of Yamamoto utilizes timers, counters and flags to track the status of states or predetermined conditions while periodically executing the processes described with respect to Figures 2-5, 7-8, 10-11, and 14. (Id. paras. [0037]-[0050], [0056],[0062]-[0065], [0074]-[0090], [0092], [0096], [0118]-[0119],[0131]-[0139]). 2 Accordingly, Yamamoto teaches that the processing routine of Figure 7 is implemented based on the value of the remote diagnosis activation flag even if the engine is off, and the engine ECU 4 reads out the previously stored diagnostics history data. (See Yamamoto, para. [0127]; Figure 7). After the condition is met that all the diagnostic data is transmitted in step 506, in step 507 information in the form of “a completion signal is outputted to the communication driver 48, which resets the remote diagnosis activation flag to 0 and terminates the outputting of an activation signal to the OR gate 2 “‘a reference must be considered not only for what it expressly teaches, but also for what it fairly suggests,’” In re Bell, 991 F.2d 781, 785 (Fed. Cir. 1993) quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Appeal 2011-000740 Application 11/528,222 7 42” (which controls activation of the ECU). (See Id. para. [0133]). Thus the Appellants have not persuaded us of error in the Examiner’s findings concerning the storage of information which identifies which of the predetermined states is no longer present. As such, we sustain the rejection of claims 1-12 under 35 U.S.C. § 102(e). DECISION The rejection of claims 1-12 under 35 U.S.C. § 102(e) is affirmed. 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) (2011). AFFIRMED hh