Ex Parte Birchfield et al

Board of Patent Appeals and Interferences

Feb 17, 2004

08857711 (B.P.A.I. Feb. 17, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte JERRY F. BIRCHFIELD and BOUNTHAVY K. MANIVONE

Appeal No. 2002-1281
Application No. 08/857,711

ON BRIEF

Before KRASS, FLEMING and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-21, 44 and 45, all of the pending claims.
The invention is directed to remotely starting a vehicle
without disabling the vehicle’s passive anti-theft security
system. In conventional systems employing passive anti-theft
security systems, remote starting was a problem because a
transponder in the key inserted into the ignition switch was
Appeal No. 2002-1281
Application No. 08/857,711
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required for the anti-theft system to allow the vehicle to start.
In order to overcome this problem, prior techniques required
disengaging the passive anti-theft security system or removal of
the transponder from the key and placement of that transponder
inside or near first and second coils at the ignition switch.
Since these prior techniques incapacitated the passive anti-
theft security system, thus removing the protection afforded by
the security system, the instant invention is said to overcome
the shortcomings of the prior art by employing a second
transponder and an extra coil, wherein the second transponder is
positioned about the ignition switch in order to receive the
signal transmitted by the first coil. Further, the extra coil is
wound around the shell of the second transponder. The extra coil
is normally shorted/closed via a relay so transmitted energy from
the first coil is blocked. The energy is blocked because the
second transponder is placed about the ignition switch and is
always in a position to receive the signal from the first coil
and to transmit its authorized code to a controller via the
second coil. If the second transponder is always operable, then
it will always receive the signal and it will always transmit at
the same time as the first transponder transmits. In this case,
the vehicle would be inoperable by the passive anti-theft
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Application No. 08/857,711
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security system. Accordingly, only one of the two transponders
should be in communication with the controller.
Thus, the invention provides the second transponder for
selectively receiving the transmission from the controller via
the first coil, and transmitting to the controller an authorized
code via the second and third coils, when the system remotely
starts the vehicle and the key, with its first transponder are
not about the ignition switch.
Representative independent claim 1 is reproduced as follows:
1. A vehicle starting system comprising a remote starting
system that is co-operable with a passive anti theft security
system, wherein the security system comprises a first coil
connected to a passive anti theft security system controller for
transmitting a first signal to a first transponder having a third
coil and a first code therein, said first transponder being
responsive to said first signal to transmit said first code to
said first coil, and wherein the remote starting system
comprises:
(a) a second selectively operable transponder having a
second code and a fourth coil with two terminal ends, said fourth
coil being wound about said second transponder; and
(b) a relay that shorts said terminal ends of said fourth
coil to disable said second transponder and prevent transmission
of said second code to said controller when said passive anti-
theft security system is in operation, and that selectively opens
said terminal ends of said fourth coil to enable said second
transponder and allow transmission of said second code to said
controller when said remote starting system is in operation.
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Application No. 08/857,711
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The examiner relies on the following references:
Nysen 4,737,789 Apr. 12, 1988
Keller 4,847,614 Jul. 11, 1989
Cantrell 5,184,584 Feb. 9, 1993
Nose et al. (Nose) 5,648,764 Jul. 15, 1997
(filed Jul. 31, 1992)
Additionally, the examiner relies on admitted prior art
(APA), i.e., those things admitted to be known in various
portions of the instant specification.
Claims 1-21, 44 and 45 stand rejected under 35 U.S.C. § 103
as unpatentable over APA, Cantrell and Nysen in view of either
one of Nose or Keller.
Claims 8 and 18 stand further rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
At the outset, we determine the propriety of the rejections
based on 35 U.S.C. § 112, second paragraph, since, clearly, one
cannot apply art under 35 U.S.C. § 103 if claim interpretation is
confusing under 35 U.S.C. § 112, second paragraph. In re Steele,
305 F.2d 859, 134 USPQ 292, 295 (CCPA 1962).
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Application No. 08/857,711
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The inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. It is here where the definiteness of the language
employed must be analyzed–not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary skill in the pertinent art. In re Moore, 439 F2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
Conflict between the specification description of the
invention and what is claimed as the invention gives rise to a
valid rejection based upon the second paragraph of 35 U.S.C.
§ 112. In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971).
The examiner has rejected claims 8 and 18 because these
claims require that the first and second codes are identical. It
is the examiner’s position that this “contradicts applicant’s
arguments that the claimed codes need not be the same.
Therefore, the claims do not point out what applicant regards as
the invention” (answer-page 3).
First, we find no contradiction between the specification
description of the invention and what is claimed. In fact, the
original disclosure contained claims (e.g., original claims 18
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and 19) which provided for both “identical” and “unique” codes.
Therefore, the codes may or may not be the same. Second, the
examiner’s rejection is clearly erroneous on its face. The
examiner indicates that appellants argued that the codes “need
not be the same” but claims 8 and 18 require the codes to be
identical. There is no contradiction here. While the codes are
required by claims 8 and 18 to be identical, the statement that
they “need not be the same” covers the situation where the codes
are identical as well as the situation where the codes are
unique, i.e., not identical. We find no indefiniteness or
contradiction of any kind.
Accordingly, the rejection of claims 8 and 18 under
35 U.S.C. § 112, second paragraph, is reversed.
Turning now to the rejection of all the claims under
35 U.S.C. § 103, we note that it is incumbent upon the examiner
to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In so doing, the examiner is expected to
make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art would
have been led to modify the prior art or to combine prior art
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references to arrive at the claimed invention. Such reason must
stem from some teachings, suggestions or implications in the
prior art as a whole or knowledge generally available to one
having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a prima
facie case of obviousness. Note In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
We have reviewed the examiner’s rationale for making the
rejection under 35 U.S.C. § 103 and we conclude that the examiner
has failed to establish the requisite prima facie case of
obviousness.
Initially, the examiner notes that APA describes a remote
control vehicle starting system with many of the claimed
elements, including a transponder, but the examiner recognizes
that APA lacks a selectively operable second transponder for
operation with a passive anti-theft system. Accordingly, the
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examiner correctly recognizes that APA teaches everything but
appellants’ improvement over APA.
That improvement is the use of a selectively operable second
transponder having a second code and a fourth coil, wherein the
fourth coil is wrapped around the second transponder. Moreover,
the claims require a relay connected to normally disable the
second transponder and prevent transmission of the second code to
a controller when the passive anti-theft system is in operation,
but to enable the second transponder, by opening terminal ends of
the fourth coil, to allow transmission of the second code to the
controller when the remote starting system is in operation.
In order to provide for this improvement over APA, the
examiner turns to Cantrell for a teaching of using a resistor key
for providing a code to a decoder module, allowing operation of a
vehicle if the correct code is provided. A second resistor key,
located in the vehicle, is used by Cantrell to produce a second
code to the decoder module and this second resistor is
selectively enabled/disabled by a relay in response to a remote
control signal in order to start the vehicle remotely without
activating the security system.
The examiner turns to Nysen for a transponder with a second
antenna or loop placed about the transponder for extending
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transmission. Further, the examiner relies on Nose for a vehicle
remote control system wherein the vehicle is programmed to switch
or enable/disable different codes for controlling the vehicle.
The examiner cites Keller for a teaching of each remote
transmission incrementing a code in a receiver to a different
code for comparison to the next code transmitted, for improving
security by preventing intercepted previous transmissions. See
page 4 of the answer.
Incredibly, and without any convincing reason for doing so,
other than possible hindsight, the examiner finds, from these
cited teachings, that it would have been
obvious...to have combined the remote controlled relay
for bypassing a resistor key disclosed by Cantrell with a
transponder key system of the admitted prior art wherein
a second transponder rather than a second resistor is
selectively enabled by the relay in order operate [sic]
with the security system because the resistor and
transponder are obvious substitutions for providing
authorized codes and the transponder includes known
advantages such as contactless communication which
overcomes errors caused by incomplete contact connection”
(answer-pages 4-5).
The examiner’s reasoning, even if arguably acceptable, does
not address the claim limitation of a “fourth coil” and its
specifically claimed interconnection with the second transponder
and the relay.
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Moreover, we find no reason, and the examiner has not
convinced us of one, as to why the skilled artisan would have
sought to combine the references in any manner so as to result in
the instant claimed subject matter. It is not clear why
resistors and transponders are considered to be “obvious
substitutions” by the examiner. We find nothing in the cited
references suggesting a modification to APA so as to result in
the use of a second transponder and a fourth coil, wherein the
fourth coil is wrapped around the second transponder and a relay
is connected to normally disable the second transponder and
prevent transmission of a second code to a controller when the
passive anti-theft system is in operation, but to enable the
second transponder, by opening terminal ends of the fourth coil,
to allow transmission of the second code to the controller when
the remote starting system is in operation.
Accordingly, we will not sustain the rejection of claims 1-
21, 44 and 45 under 35 U.S.C. § 103.
CONCLUSION
We have not sustained either the rejection of claims 8 and
18 under 35 U.S.C. § 112, second paragraph, or the rejection of
claims 1-21, 44 and 45 under 35 U.S.C. § 103.
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Accordingly, the examiner’s decision is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
EK/RWK
Appeal No. 2002-1281
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ANATOLY S. WEISER, ESQ
INTELLECTUAL PROPERTY LEGAL COUNSEL
6046 CORNERSTONE COURT
SUITE 156
SAN DIEGO, CA 92130