Ex Parte Catsburg et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201612197550 (P.T.A.B. Feb. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/197,550 08/25/2008 70422 7590 02/18/2016 INGRASSIA FISHER & LORENZ, P.C. (GM) 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 FIRST NAMED INVENTOR THOMAS M. P. CATSBURG 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. P003368-NAPD-LDA 003.0512 CONFIRMATION NO. 2557 EXAMINER PAN, PEILIANG ART UNIT PAPER NUMBER 2492 NOTIFICATION DATE DELIVERY MODE 02/18/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@ifllaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte THOMAS M. P. CATSBURG and ANSAF I. ALRABADY Appeal2014-003554 Application 12/197,550 Technology Center 2400 Before DAVID M. KOHUT, CATHERINE SHIANG, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-3 and 5-18. 1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 4, 19, and 20 have been canceled. Appeal2014-003554 Application 12/197,550 STATEMENT OF THE CASE The present application "relate[ s] to post-execution software removal." Spec. i-f 1. Claim 1 illustrates the claimed subject matter: 1. A method of managing a code module for a computer system disposed in a vehicle, wherein the code module is adapted to generate output information for the computer system, the method comprising: searching for presence of a previously generated instance of the output information in the computer system; if a previously generated instance of the output information is not detected by the searching step, executing the code module at the computer system; generating, at the computer system, the output information in response to executing the code module; storing the generated output information in a memory module of the computer system; and removing the code module from the computer system in response to generating the output information. REJECTIONS Claims 1-3, 5-8, and 10-15 stand rejected under 35 U.S.C. § 103(a) as obvious over Dabbish (US 2004/0003252 Al; Jan. 1, 2004), Testardi (US 6,249,882 Bl; June 19, 2001), and Hooks (US 7,260,615 B2; Aug. 21, 2007).2 Claims 9, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Dabbish, Testardi, Hooks, and Nikolai Joukov & Erez Zadok, 2 The Final Office action erroneously states claims 1-7 stand rejected over this combination of references. See Final Act. 3-11. We deem this error harmless. 2 Appeal2014-003554 Application 12/197,550 Adding Secure Deletion to Your Favorite File System, Proc. of the Third IEEE Int'l Security in Storage Workshop (2005). Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Dabbish, Testardi, and Pfitzmann et al., Trusting Mobile User Devices and Security Modules, IEEE (1997). ANALYSIS Claim 1 recites "[a] method of managing a code module for a computer system disposed in a vehicle, wherein the code module is adapted to generate output information for the computer system" that includes the step of "removing the code module from the computer system in response to generating the output information." App. Br. 15. Independent claim 10 recites similar limitations. See id. at 16. In a Final Office action mailed October 23, 2012, the Examiner found Dabbish teaches the claimed "code module." See Final Act. 3-6. Specifically, the Examiner found that because Dabbish discloses a "vehicle computing unit" and the "vehicle computing performs cryptography functions" the "vehicle computing unit" serves as the claimed "code module" and a combination of Dabbish, Testardi, and Hooks teaches or suggests the subject matter recited in independent claims 1 and 10. See id. In addition, in an Answer mailed November 26, 2013, the Examiner found Dabbish teaches "components" that serve as the claimed "code module." Ans. 4. Appellants contend Dabbish teaches away from the Examiner's combination of Dabbish, Testardi, and Hooks as set forth in the Final Office Action. App. Br. 10. In particular, according to Appellants, "[t]he goal and underlying philosophy of the Dabbish system is to preserve and maintain its processing modules intact throughout the lifetime of the vehicle." Id. In 3 Appeal2014-003554 Application 12/197,550 light of this, Appellants contend Dabbish teaches relying on its vehicle computing unit-which the Examiner mapped to the claimed "code module"-throughout the lifetime of the vehicle, whereas claims 1 and 10 recite removing the code module from the computer system. See id. at 10. Appellants also argue that "if the Dabbish system were modified as proposed by the Office, such modification would render the Dabbish system inoperable for its intended purpose .... [and] such modification would run afoul of the philosophy of use explicitly stated by Dabbish." Id. With respect to the Examiner's finding in the Answer that Dabbish's "components" teach the recited "code module," Appellants assert the "Examiner's Answer introduces a new concept, namely that the automotive components ... are akin to the removable 'code module' recited in [Appellants'] claims." Reply Br. 2. Appellants "acknowledge[] that Dabbish describes a system that handles replaceable automotive components" but argue "the Examiner's Answer attempts to redirect prosecution in an unfair and unreasonable manner that no finds no support in the file history up to this point." Id. at 2, 5. We find Appellants' arguments unpersuasive. Regarding the Examiner's finding in the Answer that Dabbish's "components" teach the recited "code module," Appellants essentially contend the Examiner failed to designate this as a new ground of rejection. See Reply Br. 2-5. But this is a matter addressable by petition to the Director, not appeal to the Board. See 3 7 C.F .R. § § 41.40( a), 1.181. And by failing to petition the Director within the time set forth in 37 C.F.R. § 41.40(a), Appellants have waived any argument that the Examiner must designate this change as a new ground of rejection. 4 Appeal2014-003554 Application 12/197,550 Moreover, Appellants' teaching away and inoperability arguments concern the Examiner's finding that Dabbish's vehicle computing unit teaches the claimed "code module." Appellants have not persuasively addressed the merits of the Examiner's finding that Dabbish's components teach the recited "code module" instead of Dabbish's vehicle computing unit. Therefore, Appellants have failed to persuade us that the Examiner erred. Accordingly, we sustain the Examiner's rejection of independent claims 1 and 10. Because Appellants have not presented separate, persuasive patentability arguments for claims 2, 3, 5-9, and 11-18, we also sustain the Examiner's rejections of these claims. DECISION For the above reasons, we affirm the rejections of claims 1-3 and 5- 18. 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 JRG 5 Copy with citationCopy as parenthetical citation