Ex Parte Blanton et al

Board of Patent Appeals and Interferences

Mar 26, 2012

11593762 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/593,762 11/07/2006 Robin Blanton DEA-00003-CPB 4636
30853 7590 03/27/2012
WARN PARTNERS, P.C.
PO BOX 70098
ROCHESTER HILLS, MI 48307
EXAMINER
HUYNH, KIM T
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
03/27/2012 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 ROBIN BLANTON, ROGER LEON VAN ELSLANDER, and
DAVID M. SUCH

____________

Appeal 2009-012582
Application 11/593,762
Technology Center 2100
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH, and ERIC B. CHEN,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants, pursuant to 37 C.F.R. § 41.52, have submitted a timely
Request for Rehearing dated March 6, 2012 (hereafter the “Request”),
requesting rehearing of our original January 6, 2012 Opinion
(hereafter“Op.”) affirming the Examiner’s decision to reject claims 1-24 and
26-30 and presenting a new rejection for claim 25. Op. 2.
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Application 11/593,762

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We have reconsidered our January 6, 2012 opinion in light of
Appellants’ comments in the Request and find no errors. We therefore
decline to change our prior opinion for the following reasons.
Appellants present two arguments in the Request. First, Appellants
discuss In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) and assert that we
applied an improper legal standard in determining the field of endeavor by
only examining the structure of claim 1. See Request 2-9. Second,
Appellants argue that we presented a new ground of rejection because the
Examiner only discusses Appellants’ particular problems to be solved when
determining that Allen and Sparks are analogous and does not address
Appellants’ field of endeavor. Request 9-11.
As stated in the decision (Op. 5), “[t]he analogous-art test requires
that the Board show that a reference is either in the field of the applicant's
endeavor or is reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for rejection.” In
re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). Kahn does not include a
further mandate as to what must be considered when determining the
appropriate field of endeavor, such as reference to embodiments, function,
and structure of the claimed invention. See id. Notably, the court in Bigio
found that the Board correctly determining the relevant field of endeavor “by
consulting the structure and function of the claimed invention as perceived
by one of ordinary skill in the art.” See Bigio, 381 F.3d at 1326. Moreover,
prior art must be construed broadly to determine if it is analogous. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (citing and quoting
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007)).
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Application 11/593,762

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Appellants argue that we, at best, only looked at the structure of claim
1 and did not consider the embodiments, function, and structure of the
claimed invention. See Request 4 (citing Bigio, 381 F.3d at 1325). We
disagree. As the Request illustrates, claims 12 and 20 have a similar claimed
invention to claim 1, including recitations to transferring diagnostic signals
between a vehicle network and a computer. See Request 5-6 (quoting claims
1, 12, and 20). Thus, while we refer to representative claim 1 in the opinion
(see Op. 5-6), this discussion is also exemplary of claims 12 and 20, as well
as the dependent claims which incorporate these limitations due to their
dependency.
Also, similar to Bigio, we considered both the structure and function
of the claimed invention (see Op. 6) in deciding Allen and Sparks are from
the same field of endeavor as Appellants’. See Op. 6-8. In particular, we
stated that an ordinary artisan would have recognized: (1) the structural and
functional similarities of various communication systems that transfer
signals between a network; (2) the functional similarities between a vehicle
network and other system networks that communicate with computers; and
(3) that transferring diagnostic signals (e.g., a type of communication signal)
in a vehicle communication system would require structural and functional
similarities to other systems that transfer communication signals between a
network and a computer. See Op. 6-7.
Also, even assuming we improperly determined that Allen and Sparks
are in the same field of endeavor, the analogous art test alternatively states
that a reference is analogous and can be relied on for a rejection when the art
is reasonably pertinent to the problem with which the inventor was
concerned. See Kahn, 441 F.3d at 986-87. Here, in the opinion, we also
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Application 11/593,762

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found that Allen and Sparks are reasonably pertinent to the problem to be
solved. See Op. 7-8 (discussing various problems with which the inventor
was concerned). Appellants have not contested these findings. See Request
2-12.
We further disagree that we presented a new ground of rejection by
discussing that Allen and Sparks are in Appellants’ field of endeavor.
Notably, the thrust of the rejections have not changed. See In re Konig, 539
F.2d 1300, 1302-1303 (CCPA 1976). The rejections are still based on the
same references, findings, and conclusions (see Final Rej. 2-13; see also Op.
3-4) and are not based on a new theory. In fact, the opinion mainly
discusses whether the cited art is analogous and/or whether combining the
references would destroy a reference’s principle operation. See Op. 4-13.
Our decision is also consistent with the Examiner’s conclusion that Allen
and Sparks are analogous art. While we have presented an additional reason
why Allen and Sparks are analogous art (i.e., they are in the same field of
endeavor), we agree with the Examiner (see Ans. 16-18) that Allen and
Sparks are also analogous because they are reasonably pertinent to the
problems with which the inventor was concerned. See Op. 7-8. This later
reason for deciding that Allen and Sparks are analogous art has not changed.
We therefore find that Appellants have had a fair opportunity to respond to
the thrust of the rejection.
We have considered the arguments raised by Appellants in the
Request, but the arguments are not persuasive to find that the original
decision was in error.
Based on the record before us now and in the original appeal, we
maintain the view that the Examiner did not err in rejecting the claims 1-24
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Application 11/593,762

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and 26-30. We also maintain the newly presented rejection of claim 25
under § 103.
We have granted the Request to the extent that we have reconsidered
our decision of January 6, 2012, but we deny the request with respect to
making any changes therein.

REHEARING DENIED

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