Ex Parte RobertsDownload PDFPatent Trial and Appeal BoardDec 6, 201713195403 (P.T.A.B. Dec. 6, 2017) Copy Citation 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. 13/195,403 08/01/2011 Christopher I. Roberts 87354.21500 1857 7590 BAKER & HOSTETLER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVE. N.W. WASHINGTON, DC 20036-5304 EXAMINER INGRAM, THOMAS P ART UNIT PAPER NUMBER 3668 NOTIFICATION DATE DELIVERY MODE 12/08/2017 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): eofficemonitor@bakerlaw.com edervis @bakerlaw.com patents @ bakerlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER I. ROBERTS Appeal 2016-003570 Application 13/195,40s1 Technology Center 3600 Before JASON V. MORGAN, AMBER L. HAGY, and KARA L. SZPONDOWSKI, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 4, 6, 8—12, 14, 16, 18—23, and 26—30. Claims 3, 5, 7, 13, 15, 17, 24, and 25 are canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies Bosch Automotive Service Solutions Inc. as the real party in interest. App. Br. 2. Appeal 2016-003570 Application 13/195,403 Invention Appellant discloses a “diagnostic tool that includes components that allow the diagnostic tool to record data while the vehicle is driven in order to capture data for intermittent faults.” Abstract. Exemplary Claim Claim 1, reproduced below with key limitations emphasized, is representative: 1. A diagnostic tool for diagnosing a vehicle in various environments, comprising: a processor to control functions of the diagnostic tool and retrieves diagnostic data from the vehicle; a first memory that stores a software to operate the diagnostic tool and the retrieved diagnostic data, the first memory communicates with the processor and stores diagnostic data in a circular buffer; a connector interface that connects the diagnostic tool to a data link connector in the vehicle, the connector interface communicates with the processor; serial communication interfaces that allow the diagnostic tool to communicate with the vehicle in at least one communication protocol, the serial communication interfaces communicate with the processor; a power management unit that detects changes in the diagnostic tool’s external environment and manages the diagnostic tool in various power states depending on the diagnostic tool’s external environment; a trigger button that causes the processor to retrieve the diagnostic data, the trigger button when pressed by a user will also cause the diagnostic tool to change from a lower power state to a higher power state if the diagnostic tool is in the lower power state; a capacitor to provide power to the diagnostic tool; and 2 Appeal 2016-003570 Application 13/195,403 a capacitor charger configured to charge the capacitor at a constant power, wherein the first memory transfers diagnostic data to a second memory when a trigger event occurs, and wherein the diagnostic data includes unsolicited data that is outside predetermined ranges and has been filtered by a preconfigured filter. Rejections The Examiner rejects claims 1, 2, 9—12, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over McGee et al. (US 2009/0140575 Al; published June 4, 2009), Inoue (US 2005/0216775 Al; published Sept. 29, 2005), Lipscomb et al. (US 2008/0103656 Al; published May 1, 2008), Johnson et al. (US 2007/0097636 Al; published May 3, 2007), and Thurston (US 2007/0008011 Al; published Jan. 11, 2007). Final Act. 3-8. The Examiner rejects claims 4, 6, 8, 14, 16, 18, 21—23, 26, 28, and 30 under 35 U.S.C. § 103(a) as being unpatentable over McGee, Inoue, Lipscomb, Johnson, Thurston, and Kilmurray et al. (US 2010/0127857 Al; published May 27, 2010).2 Final Act. 8—15. The Examiner rejects claims 27 and 29 under 35 U.S.C. § 103(a) as being unpatentable over McGee, Inoue, Lipscomb, Johnson, Thurston, and Witkowski (US 5,885,098; issued Mar. 23, 1999). Final Act. 15—16. ANALYSIS We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer and in the Action from which this 2 The Examiner also lists claim 25 as being rejected by these references (Final Act. 11) and articulates a rejection of claim 25 {id. at 14—15). However, Appellant canceled claim 25 (Amend. 8—9 (Nov. 5, 2014)) before the Final Action (Dec. 29, 2014). This minor error does not affect the Decision. We merely note the error to clarity the record. 3 Appeal 2016-003570 Application 13/195,403 appeal was taken. We have considered Appellant’s arguments, but do not find them persuasive of error. We provide the following explanation for emphasis. In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds Inoue’s use of a thermal value to determine, lower, maintain, or raise a clock speed teaches or suggests a power management unit that manages the diagnostic tool in various power states depending on the diagnostic tool’s environment. Final Act. 4 (citing Inoue 116). The Examiner further finds Johnson’s use of air temperature measurements teaches or suggests detecting changes in the diagnostic tool’s external environment. Final Act. 4 (citing Johnson Fig. 1); see also Johnson 122. Thus, the Examiner concludes the combination of Inoue and Johnson renders obvious a power management unit that detects changes in the diagnostic tool’s external environment and manages the diagnostic tool in various power states depending on the diagnostic tool’s external environment, as recited in claim 1. Appellant contends the Examiner erred in relying on Inoue in combination with Johnson because Inoue also teaches “using sensors a distance from a hot spot to measure the ambient temperature may function too slowly or unreliably to prevent over heating [sic].” App. Br. 10 (citing Inoue 1 6). Appellant argues that Johnson, in contrast, “teaches using such a feedback system of using remote sensors to measure the ambient temperature function.” App. Br. 10 (citing Johnson Abstract). Thus, Appellant argues that Inoue teaches away from the Examiner’s proffered combination with Johnson. App. Br. 10. We are not persuaded of error. The Examiner correctly notes that Inoue merely warns that a feedback approach to avoiding overheating that relies on temperature sensors placed a distance from a hot spot may function 4 Appeal 2016-003570 Application 13/195,403 too slowly. Ans. 3 (citing Inoue 16). We agree that this word of caution falls short of discrediting the use of remote sensors altogether. Ans. 3. Appellant argues that “Inoue still discourages [placing a sensor a distance from a hot spot] and thus teaches away from any sensors being located remotely from a hotspot.” Reply Br. 3. However, Appellant does not persuasively respond to the Examiner’s finding that Johnson “teaches using sensors around the device to sense the ambient temperature of the device.” Ans. 3 (emphasis added). That is, the Examiner’s findings, which have not been persuasively rebutted, show that the combination of Inoue and Johnson render obvious placing a sensor near a hot spot, rather than a distance from the hot spot, thus obviating potential slowness. Moreover, the feedback approach that Inoue warns may function too slowly are complex heat management schemes that rely on turning fans on or generating an alarm to cause a processing environment to begin a shutdown when a particular or predefined temperature has been reached or exceeded. Inoue 1 6. Appellant does not show that the alternative use of a thermal value to lower, maintain, or raise a clock speed would function too slowly to prevent overheating. See id. 116. For these reasons, Appellant’s arguments do not show the Examiner erred in concluding the combination of McGee, Inoue, Lipscomb, Johnson, and Thurston renders obvious “a power management unit that detects changes in the diagnostic tool’s external environment and manages the diagnostic tool in various power states depending on the diagnostic tool’s external environment,” as recited in claim 1. The Examiner further finds that Lipscomb’s response to a function key being pressed by a user to start recording diagnostic data—and storing frames of diagnostic data—renders obvious wherein the first memory 5 Appeal 2016-003570 Application 13/195,403 transfers diagnostic data to a second memory when a trigger event occurs, and wherein the diagnostic data includes unsolicited data that is outside predetermined ranges and has been filtered by a preconfigured filter, as recited in claim 1. Final Act. 5 (citing Lipscomb H 29—31). Appellant contends the Examiner erred because Lipscomb merely “discloses that the scan tool will be collecting diagnostic data and storing it on the internal memory of the scan tool before transferring it to the [compact flash] card.” App. Br. 11. Appellant argues that Lipscomb saves recorded frames to the compact flash cord “when a maximum amount of frames have been recorded . . . and not when a trigger event occurs.” Id. We agree with the Examiner that a reasonably broad interpretation of the disputed recitation encompasses transferring diagnostic data to a second memory as part of other triggered events, such as the maximum number of frames having been recorded. Ans. 4. The Specification notes that a “trigger event causes the microprocessor 210 to begin the process of transferring the content of the circular buffer 220 into flash memory.” Spec. 135 (emphasis added); see also App. Br. 5. When this process begins, the circular buffer in which data is stored no longer merely overwrites the oldest data with the most recent data. Spec. 134. Rather, data that would be overwritten is transferred to non-volatile memory such as flash memory 230. Id. Received data can continue to be recorded in “circular buffer 220 while the transfer to flash 230 memory process is in operation.” Id. 135. And, a limit can be set on “post trigger data” to transfer to flash memory. Id. Thus, the Specification provides at least one example of diagnostic data that is transferred to a second memory when a trigger occurs as part of another event (e.g., the oldest data in a circular buffer is about to be overwritten or data is recorded during a post-trigger period). Therefore, Appellant’s 6 Appeal 2016-003570 Application 13/195,403 arguments are incommensurate with the scope of the claimed invention, which does not preclude the claimed transfer from being part of other events that have been triggered. Appellant further argues the Examiner erred because the diagnostic data including unsolicited data that is outside predetermined ranges and has been filtered by a preconfigured filter is functional in that it can “capture any issues hidden in the unsolicited data.” App. Br. 11. Appellant also argues data that “includes unsolicited data . . . both has the limitation of being outside of a predetermined range, and the limitation of having been previously filtered by a filter” and therefore “the unsolicited data limitation is functional.” Reply Br. 4. However, the data characteristics Appellant identifies do not affect “the claim limitations providing] for merely transferring and storing diagnostic data on a memory.” Ans. 5; see also Adv. Act. 2 (May 27, 2015). Moreover, Appellant does not identify any component of the claimed diagnostic tool that behaves differently because the diagnostic data includes unsolicited data. The Specification provides teachings regarding the transmission of unsolicited data and regarding use of a “pre-configured filter [that] can be additionally applied to limit the amount of data stored in the buffer.” Spec. 133. However, these teachings do not show that the inclusion of unsolicited data that is outside predetermined ranges and filtered by a preconfigured filter in diagnostic data has patentable weight. Therefore, we agree with the Examiner that the inclusion of “unsolicited data” in diagnostic data transferred from a first memory to a second memory does not distinguish the claimed invention from the prior art. For these reasons, Appellant’s arguments do not show the Examiner erred in concluding the combination of McGee, Inoue, Lipscomb, Johnson, 7 Appeal 2016-003570 Application 13/195,403 and Thurston renders obvious “wherein the first memory transfers diagnostic data to a second memory when a trigger event occurs, and wherein the diagnostic data includes unsolicited data that is outside predetermined ranges and has been filtered by a preconfigured filter,” as recited in claim 1. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 1, and claims 2, 9-12, 19, and 20, which Appellant does not argue separately. App. Br. 13. For these same reasons, we also sustain the Examiner’s 35 U.S.C. § 103(a) rejections of claims 4, 6, 8, 14, 16, 18, 21— 23, and 26—30. DECISION We affirm the Examiner’s decision rejecting claims 1, 2, 4, 6, 8—12, 14, 16, 18-23, and 26-30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 8 Copy with citationCopy as parenthetical citation