Ex Parte Blanton et alDownload PDFBoard of Patent Appeals and InterferencesMar 26, 201211593762 (B.P.A.I. Mar. 26, 2012) Copy Citation 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. Appeal 2009-012582 Application 11/593,762 2 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)). Appeal 2009-012582 Application 11/593,762 3 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 Appeal 2009-012582 Application 11/593,762 4 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 Appeal 2009-012582 Application 11/593,762 5 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 gvw Copy with citationCopy as parenthetical citation