Ex Parte Barman et al

Board of Patent Appeals and Interferences

Mar 24, 2011

10112695 (B.P.A.I. Mar. 24, 2011)

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.
10/112,695 03/29/2002 Roderick A. Barman CDM/8290.999 3556
7590 03/24/2011
Charles D. McClung
Chernoff, Vilhauer, McClung & Stenzel, LLP
1600 ODS Tower
601 S.W. Second Avenue
Portland, OR 97204-3157
EXAMINER
DAO, THUY CHAN
ART UNIT PAPER NUMBER
2192
MAIL DATE DELIVERY MODE
03/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RODERICK A. BARMAN and
JAMES EDWARD CONFORTI, JR.
____________
Appeal 2009-007764
Application 10/112,6951
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
JAY P. LUCAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on March 29, 2002. This application claims priority from provisional
application 60/279,711, filed March 30, 2001. The real party in interest is
Roderick A. Barman and James Edward Conforti, Jr. (App. Br. 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 5, 7 through 27, 29 through
34, 36 through 40, and 44. (App. Br. 5.) Claims 6, 28, 35, and 41 through
43 have been cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b)
(2008).
We affirm.
Appellants’ Invention
Appellants invented a method and apparatus for upgrading software
that runs on a computerized engine controller located in an engine. (Spec. 1,
¶ [0002].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method for upgrading software in an engine controller,
the method comprising:

placing an engine controller reprogramming apparatus in data
communication with the engine controller and, at the engine controller
reprogramming apparatus:

determining a version of current software in the engine
controller;

identifying one or more data blocks of upgraded software
associated with the version of current software; and

replacing one or more data blocks of the current software with
the one or more data blocks of upgraded software;

wherein replacing the one or more data blocks of current
software comprises:

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uploading from the engine controller to the engine controller
reprogramming apparatus an image of the current software and storing
the image of the current software in a memory of the engine controller
reprogramming apparatus;

at the engine controller reprogramming apparatus creating a
modified version of the current software by replacing one or more
data blocks of the image with the one or more data blocks of upgraded
software and downloading the one or more data blocks of upgraded
software from the engine controller reprogramming apparatus to the
engine controller by downloading a data stream from the engine
controller reprogramming apparatus into the engine controller, the
data stream comprising the modified version of the current software.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Gurne US 5,541,840 Jul. 30, 1996
Martinez US 5,956,665 Sep. 21, 1999
Dobbek US 6,308,325 B1 Oct. 23, 2001
(filed Apr. 9, 1996)

Posting Rob Levinson to [uucdigest] V3 #511,
http://www.uucdigest.com/ (Mar. 26, 2000, 23:48:55 SGT) (hereinafter
“Levinson”).

Posting Josh MacMurray to [uucdigest] V3 #519,
http://www.uucdigest.com (Mar. 28, 2000, 00:06:06 SGT) (hereinafter
“MacMurray”).

Posting Brian Brown, bpbrown@powerweb.net, to
bmw318ti@eGroups.com (Mar. 27, 2000) (on file with author) (hereinafter
“Brown”).

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
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Claims 1 through 5, 7 through 27, 29 through 34, 36 through 40, and
44 stand rejected under 35 U.S.C. § 102(b)—On-Sale Bar.
Claims 1 through 4, 7, 11 through 27, 29 through 34, and 36 through
39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Brown and Gurne.
Claims 5 and 8 through 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Brown, Gurne, and Dobbek.
Claims 40 and 44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brown, Gurne, and Martinez.
Appellants’ Contentions
1. Appellants contend that the Shark Injector discussed in both the
Levinson and MacMurray emails does not indicate that the claimed
invention was the subject of an offer for sale prior to March 30, 2000. (App.
Br. 11-12; Reply Br. 2.) In particular, Appellants argue that Levinson’s
disclosure that the Shark injector was not slated for release/sale until May 1,
2000, indicates that that the Shark Injector was not available for sale prior to
March 30, 2000. (App. Br. 11-12.) Appellants also allege that Levinson’s
disclosure that the Shark Injector is currently in final Beta testing indicates
that the testing of the product was not yet complete. (Id.) Moreover,
Appellants contend that Levinson’s disclosure of a pre-ordering reservation
system is not an offer for sale. (App. Br. 12; Reply Br. 2.) Further,
Appellants argue that MacMurray’s disclosure that the current price of the
Shark Injector is unknown indicates that a material term of an offer for sale
was not present (i.e., price). (Id.) Appellants also allege that MacMurray’s
disclosure of inviting customers interested in ordering the Shark Injector to
reserve their position indicates that no consideration was requested in order
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to make a reservation. (Id.) Finally, Appellants contend that James Edward
Conforti, Jr.’s affidavit, filed on November 12, 2006, states under oath that
the Shark Injector was not offered for sale prior to March 30, 2000. (App.
Br. 12.)
2. Appellants contend that Brown’s disclosure of a tool that
downloads modified performance maps into a car does not teach or fairly
suggest “at the engine controller reprogramming apparatus creating a
modified version of the current software by replacing one or more data
blocks of the image with the one or more data blocks of upgraded
software…,” as recited in independent claim 1. (App. Br. 13; Reply Br. 3.)
In particular, Appellants argue that Brown’s disclosure of a tool that uploads
and saves stock maps does not teach or fairly suggest generating or loading
upgraded software into an engine controller. (Id.) Moreover, Appellants
allege that Gurne fails to remedy the noted deficiency in Brown. (App. Br.
14.)
Examiner’s Findings and Conclusions
1. The Examiner finds that Levinson discloses taking pre-ordering
reservations for the Shark Injector, including advertising a picture of the
product. (Ans. 19-21.) Since the Manual of Patent Examining Procedure §§
21.3303(b)(II)(C) (hereinafter “MPEP”) indicates that the seller need not
have the goods “in hand” when the offer for sale is made, the Examiner
concludes that Levinson discloses that the claimed invention was the subject
of an offer for sale prior to March 30, 2000. (Id.) Further, the Examiner
finds that MacMurray discloses that third parties offered prices for the Shark
Injector on their respective websites, and a potential customer could order
the Shark Injector by calling a number. (Id. at 21 & 23.) Therefore, the
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Examiner concludes that MacMurray also discloses that the claimed
invention was the subject of an offer for sale prior to March 30, 2000. (Id.)
Additionally, although James Edward Conforti, Jr.’s affidavit indicates that
the Shark Injector was not subject to an offer for sale prior to March 30,
2000, the Examiner finds that MPEP § 2133.03 (b)(IV)(A) indicates that an
offer for sale by an independent third party suffices to bar Appellants from
obtaining a patent on the claimed invention. (Id. at 23-24.) That is, since
both the Levinson and MacMurray emails (i.e., independent third parties)
disclose that the claimed invention was the subject of an offer for sale prior
to March 30, 2000, the Examiner concludes that Appellants are barred from
obtaining a patent on the Shark Injector under the 35 U.S.C. § 102(b)—On-
Sale Bar.
2. The Examiner finds that Brown’s disclosure of plugging an
ODB-II flash programming tool into a car’s service connector and replacing
the stock code with the LandShark code teaches or fairly suggests the
disputed limitation. (Ans. 24-25.) In particular, the Examiner finds that
Brown’s disclosure of downloading the flash program code stored in the
ODB-II flash programming tool amounts to replacing all data blocks of the
current software/image stored in the engine controller of a car. (Id. at 25.)

II. ISSUES
1. Have Appellants shown that the Examiner erred in concluding
that the Shark Injector discussed in both the Levinson and MacMurray
emails was the subject of a commercial offer for sale prior to critical date of
March 30, 2000?
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2. Have Appellants shown that the Examiner erred in concluding
that the combination of Brown and Gurne renders independent claim 1
unpatentable? In particular, the issue turns on whether the proffered
combination teaches or fairly suggests “at the engine controller
reprogramming apparatus creating a modified version of the current software
by replacing one or more data blocks of the image with the one or more data
blocks of upgraded software…,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact ( hereinafter “FF”) are shown by a
preponderance of the evidence.
Levinson
FF 1. Levinson discloses that the production release/sale for the
Shark Injector is scheduled for May 1, 2000. (8: ll. 18-19.)
FF 2. As of March 26, 2000, Levinson discloses that UCC
Motorwerks was taking pre-ordering reservations for the Shark Injector. (Id.
at ll. 21-22.)
Brown
FF 3. Brown discloses that during Jim Conforti’s presentation, Mr.
Conforti announced the sale of a completely self contained OBD-II flash
programmer. (1: ll. 13-14.)
FF 4. Brown discloses that the OBD-II flash programmer contains
modified performance maps that are capable of being downloaded into a car
by plugging the OBD-II flash programmer into the car’s service connector.
(Id. at ll. 18-20.) Brown discloses that the OBD-II flash programmer first
uploads and saves the car’s stock maps so they can be restored at a future
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time. (Id. at ll. 20-22.) According to Brown, this allows a user to easily
switch back and forth between the stock maps and the LandShark code. (Id.
at ll. 22-23.)
Dobbek
FF 5. Dobbek generally relates to downloading data to an electronic
device and, in particular, to the provisioning of a generic data object for use
by an electronic device, such as a disk drive. (Col. 1, ll. 7-13.)
FF 6. Dobbek discloses updating flash memory by writing directly
thereto. (Col. 6, ll. 61-62.) Dobbek also disclose that some flash memories
require clearing and rewriting the entire memory space before updating can
occur. (Id. at ll. 62-65.)

IV. ANALYSIS
35 U.S.C. § 102(b)—On-Sale Bar Rejection
Claims 1 through 5, 7 through 27, 29 through 34, 36 through 40, and 44
The evidence relied upon by the Examiner to show an on-sale bar
prior to the critical date fails to convince us that the claimed invention was
the subject of a commercial offer for sale prior to March 30, 2000. Section
102(b) bars patentability for inventions “on sale in this country” more than
one year before the application's filing date. 35 U.S.C. § 102(b) (2002).
According to the U.S. Supreme Court, the on-sale bar is triggered if the
invention is both (1) the subject of a commercial offer for sale not primarily
for experimental purposes, and (2) ready for patenting. Pfaff v. Wells Elec.,
Inc., 525 U.S. 55, 67 (1998); see also MPEP § 2133.03(b), 8th ed., Rev. 7,
July 2008. Traditional contract law principles are applied when determining
whether a commercial offer for sale has occurred. See Linear Tech. Corp. v.
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Micrel, Inc., 275 F.3d 1040, 1048 (Fed. Cir. 2001), petition for cert. filed, 71
USLW 3093 (Jul. 03, 2002) (No. 02-39); Group One, Ltd. v. Hallmark
Cards, Inc., 254 F.3d 1041, 1047 (Fed. Cir. 2001). The Federal Circuit in
Group One noted that “[o]nly an offer which rises to the level of a
commercial offer for sale, one which the other party could make into a
binding contract by simple acceptance (assuming consideration), constitutes
an offer for sale under §102(b).” 254 F.3d at 1048.
As set forth in the Findings of Fact section above, Levinson discloses
that the projected release/sale of the Shark Injector wasn’t until May 1,
2000, a full month after the critical date of Mar. 30, 2000. (FF 1.)
Moreover, although UCC Motorwerks was taking pre-ordering reservations
for the Shark Injector as of March 26, 2000 (FF 2), we find that the record
before us is unclear as to whether the pre-ordering reservation system
actually sets forth sufficiently definite terms to constitute a commercial offer
for sale. That is, if a customer called the number listed for the pre-ordering
reservation system prior to March 30, 2000, it is not clear to us whether the
system would provide definite terms of a commercial offer to buy the Shark
Injector such that the customer would understand that simply accepting the
offer (assuming consideration) would make it into a binding contract.
Accordingly, we find that the information disclosed in both the Levinson
and MacMurray emails does not constitute an on-sale bar of the claimed
invention because the record before us is unclear as to whether the Shark
Injector was the subject of a commercial offer for sale prior to March 30,
2000.

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35 U.S.C. § 103(a) Rejections
Claim 1
Independent claim 1 recites, in relevant part, “at the engine controller
reprogramming apparatus creating a modified version of the current software
by replacing one or more data blocks of the image with the one or more data
blocks of upgraded software…”.
As detailed in the Findings of Fact section above, Brown discloses
selling individuals an OBD-II flash programmer. (FF 3.) In particular,
Brown discloses downloading modified performance maps into a car by
plugging the OBD-II flash programmer into the car’s service connector. (FF
4.) Upon connecting the OBD-II flash programmer to the car’s service
connecter, Brown discloses first uploading and saving the car’s original
stock maps before downloading the LandShark code. (Id.)
We find that Brown’s disclosure teaches an OBD-II flash programmer
that creates modified or upgraded performance maps by replacing data
blocks pertaining to the original stock maps with data blocks pertaining to
the upgraded performance maps. In particular, we agree with the Examiner
that the claimed “replacing one or more data blocks” does not preclude
replacing all the data blocks. (Ans. 25.) Consequently, we find that
Brown’s OBD-II flash programmer is capable of replacing all the data
blocks pertaining to the original stock maps with all the data blocks
pertaining to the upgraded performance maps. Thus, we find that Brown
teaches or fairly suggests the disputed limitation. It follows that Appellants
have not shown that the Examiner erred in concluding that the combination
of Brown and Gurne renders independent claim 1 unpatentable.

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Claims 2 through 4, 7, and 11 through 23
Since Appellants argues the rejection of claims 1 through 4, 7, and 11
through 23 as a single group (App. Br. 13-14), dependent claims 2 through
4, 7, and 11 through 23 fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claims 5, 10, 24 through 27, 29 through 34, and 36 through 40, and 44
Appellants offer the same arguments set forth in response to the
obvious rejection of independent claim 1 to rebut the obviousness rejection
of independent claims 24 and 32, and dependent claims 5, 10, 23 through 27,
29 through 31, 33, 34, 36 through 40, and 44. (App. Br. 14-18, 20-21.) We
have already addressed these arguments in our discussion of independent
claim 1, and we found them unpersuasive. Consequently, Appellants have
not shown that the Examiner erred in concluding that: 1) the combination of
Brown and Gurne renders claims 24 through 27, 29 through 34, and 36
through 39 unpatentable; 2) the combination of Brown, Gurne, and Dobbek
renders claims 5 and 10 unpatentable; and 3) the combination of Brown,
Gurne, and Martinez renders claims 40 and 44 unpatentable.
Claim 8
Appellants contend that Dobbek’s disclosure of updating the flash
memory by writing directly thereto does not teach or fairly suggest “forming
the data stream dynamically at the engine controller reprogramming
apparatus while downloading the data stream from the engine controller
reprogramming apparatus into the engine controller,” as recited in dependent
claim 8. (App. Br. 18.) We do not agree.
As set forth in the Findings of Fact section above, Dobbek discloses
downloading data to an electronic device. (FF 5.) In particular, Dobbek
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discloses updating flash memory by writing directly to the flash memory.
(FF 6.) We find that an ordinarily skilled artisan would have understood that
Dobbek’s disclosure of updating a flash memory by writing directly thereto
encompasses the necessary step of dynamically forming a data stream
between the writing apparatus and the flash memory. In summary, we find
that an ordinarily skilled artisan would have appreciated utilizing Dobbek’s
method to dynamically form a data stream at Brown’s OPM-II flash
programmer while uploading the data stream from the OPM-II flash
programmer into the service connector of a car. Thus, we find that the
combination of Brown and Dobbek teaches or fairly suggests the disputed
limitation. It follows that Appellants have not shown that the Examiner
erred in concluding that the combination of Brown, Gurne, and Dobbek
renders dependent claim 8 unpatentable.
Claim 9
Appellants contend that Dobbek discloses updating the flash memory
by copying a complete image from the data buffer, or by writing directly to
the flash memory. (Id. at 19.) Therefore, Appellants argue that Dobbek
does not teach or fairly suggest “downloading the image of the current
software from the memory of the engine controller reprogramming apparatus
until reaching a first memory location; downloading a block of upgraded
software from the engine controller reprogramming apparatus into the
engine controller; and resuming downloading the image from the memory of
the engine controller reprogramming apparatus commencing at a second
memory location that is spaced apart from the first memory location by a
size of the block of upgraded software,” as recited in dependent claim 9.
(Id.) We do not agree.
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As set forth in the Findings of Fact section above, Dobbek discloses
clearing and rewriting the entire memory space of a flash memory before
updating can occur. (FF 6.) An ordinarily skilled artisan would have
understood that, after utilizing Dobbek’s method of clearing and rewriting
the entire memory space of a flash memory, such memory space would be
capable of being updated by downloading new software data block by data
block. Accordingly, we find that the ordinarily skilled artisan would have
readily appreciated that Brown’s OPM-II flash programmer is capable of
utilizing Dobbek’s method to clear and rewrite the memory space of the
service connector before updating such memory space by downloading an
image until reaching a first memory location, downloading a block of
upgraded software, and then resuming downloading the image commencing
at a second memory location. Thus, we find that the combination of Brown
and Dobbek teaches or fairly suggests the disputed limitations. It follows
that Appellants have not shown that the Examiner erred in concluding that
the combination of Brown, Gurne, and Dobbek renders dependent claim 9
unpatentable.

V. CONCLUSIONS OF LAW
1. Appellants have shown that the Examiner erred in rejecting
claims 1 through 5, 7 through 27, 29 through 34, 36 through 40, and 44
under 35 U.S.C. § 102(b)—On-Sale Bar.
2. Appellants have not shown that the Examiner erred in rejecting
claims 1 through 5, 7 through 27, 29 through 34, 36 through 40, and 44 as
being unpatentable under 35 U.S.C. § 103(a).

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VI. DECISION
1. We reverse the Examiner’s decision to reject claims 1 through
5, 7 through 27, 29 through 34, 36 through 40, and 44 under 35 U.S.C.
§ 102(b)—On-Sale Bar.
2. We affirm the Examiner’s decision to reject claims 1 through 5,
7 through 27, 29 through 34, 36 through 40, and 44 as being unpatentable
under 35 U.S.C. § 103(a).
Since we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Vsh

CHARLES D. MCCLUNG
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
1600 ODS TOWER
601 S.W. SECOND AVENUE
PORTLAND, OR 97204-3157