Ex Parte Alrabady et alDownload PDFPatent Trial and Appeal BoardSep 26, 201613612139 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/612, 139 09/12/2012 65798 7590 09/26/2016 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD A VENUE SUITE 300 BLOOMFIELD HILLS, MI 48304 FIRST NAMED INVENTOR Ansaf I. Alrabady 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P021232-GMVE-CD 1075 EXAMINER KU, SHIUH-HUEI P ART UNIT PAPER NUMBER 2128 MAILDATE DELIVERY MODE 09/26/2016 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 ANSAF I. ALRABADY, KEVIN M. BAL TES, and THOMAS M. FOREST 1 Appeal2015-001640 Application 13/612,139 Technology Center 2100 Before JAMES R. HUGHES, CATHERINE SHIANG, and TERRENCE W. McMILLIN, Administrative Patent Judges. McMILLIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-10, 12-14, and 16-20, which are all the pending claims. 3 Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is General Motors. App. Br. 3. 2 Our decision refers to the Final Office Action mailed January 30, 2014 ("Final Act."); Advisory Action mailed April 18, 2014 ("Advisory Act."); Appellants' Appeal Brief filed June 30, 2014 ("App. Br."); the Examiner's Answer mailed September 16, 2014 ("Ans."); Appellants' Reply Brief filed November 17, 2014 ("Reply Br."); and the Specification filed September 12, 2012 ("Spec."). 3 Claims 11 and 15 are cancelled. App. Br. 3. Appeal2015-001640 Application 13/612,139 THE CLAHvIED n~VENTION According to the Specification, "[ t ]his invention relates generally to a system and a method for by-passing an authorization requirement necessary to install software files on a controller and, more particularly, to a system and method for by-passing a signature required to install new software on a vehicle electronic control unit (ECU) for software development purposes." Spec. i-f 1. Independent claims 1 and 10 are directed to methods and independent claim 14 is directed to a system. App. Br. 29-33 (Claims Appendix). Claim 1 recites: A method for enabling a privilege mode in a secure controller, said method comprising: establishing direct communication between a programming tool and the controller, where the controller communicates only with the programming tool; requesting information from the controller via the programming tool; creating an information ticket in the controller that identifies the controller in response to the request; sending the controller information ticket to a secure server; creating an authorization ticket in the secure server that identifies the controller and creates a security code for the authorization ticket; presenting the authorization ticket to the controller via the programming tool; and processing the authorization ticket in the controller to verify the security code and allowing access to the controller. App. Br. 29. REJECTIONS ON APPEAL Claims 1-9, 14, and 16-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Van Os et al. (US 2009/0119504 Al, published 2 Appeal2015-001640 Application 13/612,139 iviay 7, 2009) ("Van Os") and Volkoff et al. (US 2002/0184240 Al, published Dec. 5, 2002) ("Volkoff'). Final Act. 3. Claims 10, 12, and 13 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over Van Os, Volkoff, and Grandcolas et al. (US 2006/0195816 Al, published Aug. 31, 2006) ("Grandcolas"). Final Act. 13. ANALYSIS We have reviewed the rejection of claims 1-10, 12-14, and 16-20 in light of Appellants' arguments. In reaching this decision, we have considered all evidence and all arguments made by Appellants. We are not persuaded that Appellants identify reversible error. We agree with and adopt the Examiner's findings, reasoning, and conclusions as set forth in the Final Office Action (Final Act. 2-17), the Advisory Action (Advisory Act. 2), and the Examiner's Answer (Ans. 2-20). We highlight the following for emphasis. Claims 1 and 14 Appellants argue independent claims 1 and 14 together. App. Br. 10- 19. These claims are subject to the same rejection. Final Act. 3. We shall decide this appeal as to claims 1 and 14 through consideration of claim 1. See 37 C.F.R. § 41.37(c)(iv). Appellants argue the cited references fail to teach or suggest, "establishing direct communication between a programming tool and the controller, where the controller communicates only with the programming tool," as recited in claim 1. App. Br. 11-14. In the Final Office Action, the Examiner cites paragraphs 31, 34, and 119, and Figures 3 and 10 ofVolkoff 3 Appeal2015-001640 Application 13/612,139 as teaching this limitation. Final Act. 4--5. See, also, Ans. 6-7. The Final Office Action states: [A] digital imaging work DIW network incorporates a service center to control tasks submitted by clients and a front end service to allow a client to generate a job request. The front end service is an Internet web browser or web application. In block 205, the service center receives a job request that specifies performance requirements or resources. Final Act. 5. In response to an argument that Volkoff fails to teach or suggest all the features of this disputed limitation, 4 the Examiner makes additional findings based on Van Os. See App. Br. 13-14. In an Advisory Action, the Examiner states: [I]n i-f[0024 ], the spec cites that "where this transfer could be accomplished by attaching a programming tool 68 to a computer that has access to the database 56." Apparently, this "programming tool" is a software. In i-f[0035], [0043] and [0065] and FIGs 3-4, van Os' disclosure of "the clients operating the application or utility; e.g.; Outlook or SMB signing, issuing a connection request toward the server and then sending an identifier of the service it is requesting" corresponds to establishing communication between a programming tool and the controller wherein "the application/utility/Outlook/SMB signing" corresponds to the programming tool, "the server" corresponds [to] the controller and the "the clients operating the application, issuing request toward the server" corresponds where the controller communicates only with the programming tool. In i-f[0067], van Os' disclosure of "the client now issuing a service request toward server 370, which being intercepted by intermediary 350" suggests the client only knows the server or considers the server and the intermediary to be integrated as one body. 4 See App. Br. 14 ("On page 2 of the Advisory Action mailed 4/18/2014, regarding Appellant's arguments contained in the preceding paragraphs, the xammer states . . . . . E . ") 4 Appeal2015-001640 Application 13/612,139 Advisory Act. 2. The findings of the Examiner related to the disputed limitation are supported by the cited passages in Volkoff and Van Os. Appellants fail to squarely address these findings or to show the Examiner erred in finding the cited art teaches all features of the disputed limitation. Appellants do argue "programming tool" as used in the claims should be construed as a "handheld hardware device." App. Br. 14; Reply Br. 1-2. Specifically, Appellants argue, "[t]he programming tool 68 of Appellant's specification and claims is not a 'software,' but rather, it is a handheld hardware device which can communicate with the ECU 7 4 in the vehicle via wired or wireless connection (see i-f [0024] and Figure 3 of Appellant's original disclosure)." App. Br. 14. Figure 3 from Appellants' Specification is reproduced below. FIGURE 3 5 Appeal2015-001640 Application 13/612,139 Figure 3 of the Specification depicts "how electronic content and a digital signature are physically delivered to a controller in a vehicle." Spec. i-f 11. Paragraph 24 of the Specification states: Figure 3 is a schematic diagram showing how electronic content and digital signature files are physically delivered to a vehicle controller. A vehicle 3 6 includes the ECU 7 4 shown in figure 2 and discussed above. The ECU 7 4 could control the engine, transmission, chassis, body, infotainment, or other system on the vehicle 3 6. The content file 44 and the digital signature 46 are provided to a central database, shown here as the manufacturing database 56. The transfer of the content file 44 and the digital signature 46 to the manufacturing database 5 6 could take place over a company network. The manufacturing database 56 provides the content file 44 and the digital signature 46 to the programming tool 68, where this transfer could be accomplished by attaching the programming tool 68 to a computer which has access to the database 56. The programming tool 68 communicates with the ECU 7 4 via a connection 3 8, which may be wired or wireless. With the connection 3 8 established, the content file 44 and the digital signature 46 can be downloaded from the programming tool 68 to the ECU 74, where the bootloader can perform the security verification functions discussed previously. Spec. i-f 24 (emphasis added). We are not persuaded Figure 3 and the related description in paragraph 24 of the Specification support interpreting the term "programming tool" as limited to a handheld hardware device and as not broad enough to include software. During examination, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Exemplary, non-limiting statements from the specification are not read into the claims. Id. at 1369. Although Figure 3 depicts the programming tool as 6 Appeal2015-001640 Application 13/612,139 what appears to be a handheld hardware device, paragraph 24 does not contain any definition or limiting language. The term "handheld hardware device" or any like or similar language is not used in paragraph 24 or anywhere else in the Specification to describe the programming tool. In short, Appellants have not shown any definition or limiting language that would support limiting the broadest reasonable interpretation of "programming tool" to a handheld hardware device. To the contrary, the Specification specifically states, "[t]he foregoing discussion disclosed and describes merely exemplary embodiments of the present invention." Spec. i-f 40. We agree with the Examiner that the term "programming tool" is reasonably interpreted as including software in the form of the applications and utilities described in the cited references. Appellants also contend the cited references fail to teach or suggest, "requesting information from the controller via the programming tool," as recited in claim 1. App. Br. 14--15. With regard to this limitation, the Examiner makes detailed findings in the Final Office Action (Final Act. 3), the Advisory Action (Advisory Act. 2), and the Examiner's Answer (Ans. 5) which the Appellants do not squarely address or persuasively rebut (App. Br. 14--15; Reply Br. 2-3). We have reviewed the Examiner's findings and the cited portions of the relied-on reference, Van Os, and they support the findings of the Examiner and the rejection. We are not persuaded that the Examiner erred in the rejection of independent claims 1 and 14 and sustain their rejection. 7 Appeal2015-001640 Application 13/612,139 Claim l 0 With regard to independent claim 10, Appellants attempt to distinguish Van Os on the basis that, "[t]he van Os disclosure does not even mention a vehicle, much less a controller in a vehicle." App. Br. 24--26. The term "vehicle" appears only in the preamble of claim 10. Id. at 30. Generally, a preamble is not limiting. Allen Eng 'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). But a preamble may limit the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claim. See Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305---06 (Fed. Cir. 1999). Conversely, a preamble does not limit an invention "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use of the invention." Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The term "vehicle" in the preamble of claim 10 does not recite an essential step and is not necessary to give life, meaning, or vitality to the claim. Claim 10 defines a complete invention in the claim body and the preamble states only a purpose or intended use of the invention. Accordingly, we do not find the term "vehicle" in the preamble of claim 10 to be limiting and we are not persuaded of error by this argument. We sustain the rejection of independent claim 10. Claims 2-5, 7-9, 12, 16, and 18-20 Appellants argue dependent claims 2-5, 7-9, 12, 16, and 18-20 are patentable based on the arguments presented for independent claims 1, 10, and 14. App. Br. 19-21. We sustain the rejection of claims 2-5, 7-9, 12, 16, and 18-20 for the reasons provided for claims 1, 10, and 14. 8 Appeal2015-001640 Application I3/6I2,I39 Claims 6, 13, and 17 Appellants argue the cited references fail to teach or suggest, "wherein creating an authorization ticket includes creating an authorization ticket that includes an answer to the challenge," as recited in claims 6, I3, and I7. App. Br. 2I-22, 27. Claim 6 is dependent on claim 5, claim I3 is dependent on claim I2, and claim I 7 is dependent on claim I 6. Id. at 30-32. Claim 5 recites, "creating an information ticket in the controller includes providing a challenge in the information ticket that must be answered before the controller will allow access to the controller," and claims I2 and I6 contain analogous limitations. Id. The Examiner relies on paragraphs 43, 44, and 46 and Figure 2 of Van Os. Final Act. 7, I I-I2, I 7; Ans. I4. The Examiner's Answer states: van Os discloses in i-f 43-i-f 44 and FIG. 2 that "at time 282, client 2IO issues a connection request toward server 270 and the server responds normally, with a server challenge (SC) and the server's name (SN)." Then, van Os discloses in i-f 46 and FIG. 2 that "the client's next message includes two hashes, HI and H2. H2 comprises the shorter LMv2 hash response, while HI comprises the longer NTv2 hash response covering the enhanced client challenge" wherein "the longer NTv2 hash response covering the enhanced client challenge" represents an answer to the challenge and "the client's next message including two hashes, HI and H2" suggests an authorization ticket. Ans. I4. The Examiner's findings are supported by the cited portions of Van Os. We sustain the rejection of claims 6, I3, and I 7. 9 Appeal2015-001640 Application 13/612,139 DECISION The rejections of claims 1-10, 12-14, and 16-20 are 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)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation