Ex Parte DiCroce et al

Patent Trial and Appeal Board

Jul 25, 2016

13106485 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,485 05/12/2011
22150 7590 07/27/2016
F. CHAU & ASSOCIATES, LLC
130 WOODBURY ROAD
WOODBURY, NY 11797
FIRST NAMED INVENTOR
John DiCroce
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. CONFIRMATION NO.
8002A-82 CON-CIP-CON2 5379
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
mail@chauiplaw.com
garramone@chauiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN DICROCE, SHANE WILSON, and PETER STOUFFER
Appeal2014-007183
Application 13/106,485
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John DiCroce et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-18. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Audiovox
Corporation. App. Br. 1.
Appeal2014-007183
Application 13/106,485
SUMMARY OF INVENTION
Appellants' invention relates "to an apparatus for adding functionality
to an electronic device and/or system." Spec. 1. Claim 1, reproduced below
from page 8 (Claims Appendix) of the Appeal Brief, is representative of the
claimed subject matter:
1. A device for use in a vehicle, comprising:
a plurality of connectors that connect the device to
vehicle components, wherein the vehicle components are
operated pursuant to a feature set of electronically operable
functions;
a memory that stores codes for defining the feature set of
electronically operable functions; and
a module that adapts the device to connect to a control
unit that is disposed inside a vehicle through a serial
communications interface,
wherein the control unit is part of a remote start system
installed in the vehicle, and the remote start system is provided
with new functionality based on the codes stored in the
memOf'J.
REJECTION
Claims 1-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flick (US 2002/0021211 Al, published Feb. 21, 2002)
and McMillin (US 7,027,773 Bl, issued Apr. 11, 2006).
ANALYSIS
Regarding independent claim 1, the Examiner finds that Flick
discloses the invention substantially as claimed, but does not disclose
providing a remote start system with new functionality. Final Act. 3 (citing
Flick, i-fi-16, 56, and 59, claims 10, 12, and 48, and Fig. 1). The Examiner
finds that McMillin "discloses that feature to [sic] providing with new
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Application 13/106,485
functionality based on the codes stored in the memory for a serial
communication (such as using a chip having a reprogrammable/field
programmable ability[)]," and concludes that it would have been obvious to
a skilled artisan "to combine Flick with McMillin ... to disclose about [sic]
using a chip that is field programmable for an advantage of an electronic
device could be reprogrammed through a network without the need for
physically connecting to or handling that particular device to reprogram."
Id. at 3--4 (citing McMillin, 8:1-16).
Appellants' sole argument is that "McMillin is not analogous art of
the embodiment of the invention claimed in claim 1." App. Br. 5.
Specifically, Appellants contend that "McMillin ... is directed to multilevel
networks" and is therefore "not from the same field of endeavor as the
claimed invention," and that "McMillin is not reasonably pertinent to the
problem faced by the inventors of the claimed invention." Id. at 5---6.
The Examiner answers that McMillin is analogous because
Appellants' "invention is directed to a vehicle's remote starter with an
ability of reprogramming that device," and "McMillin ... discloses about
[sic] remotely reprogramming his device." Ans. 3.
The 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 Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary
skill in the art. Id. ("[I]t is necessary to consider 'the reality of
the circumstances, '-in other words, common sense-in
deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem
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Application 13/106,485
facing the inventor." (quoting In re Wood, 599 F.2d 1032, 1036
(C.C.P.A.1979))).
In re Kahn, 441F.3d977, 986-87 (Fed. Cir. 2006). We agree with the
Examiner that McMillin is analogous to Appellants' invention. McMillin is
reasonably pertinent to the problem with which Appellants were
concerned-namely, an electronic system that can be updated to alter
functionality of the devices in the system. See Spec. 2 ("It is therefore
desirable to provide an electronic device and/or system that can be updated
to change, add, or remove functions that the electronic device can provide.").
To allow for such updating, Appellants' invention includes a programmable
feature set module 12 and/or software cartridge 48. See id. at 24--25. As
noted by the Examiner, McMillin also addresses the need to update the
functionality of devices in an electronic system, and, accordingly, discloses
devices 110 including a programmable storage in the form of on-chip flash
memory. See ~v1d'v1illin 8:8-16. Both Appellants' and ~v1c~v1illin's systems
provide for accomplishing this updating wirelessly. See id.; see also Spec.
24--25.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1 as being obvious in view of Flick and
Mc Millin.
With respect to the rejection of independent claims 14 and 18,
Appellants expressly rely on the arguments presented above regarding the
rejection of claim 1. Appeal Br. 6. Accordingly, for the same reasons as
discussed above, we also sustain the rejection of independent claims 14 and
18 as being unpatentable over Flick and McMillin.
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Application 13/106,485
Appellants do not make any other substantive argument regarding the
rejection of dependent claims 2-13 and 15-17. See Appeal Br. 4---6.
Therefore, we likewise sustain the rejection of dependent claims 2-13 and
15-1 7 as being unpatentable over Flick and McMillin.
DECISION
The Examiner's decision to reject claims 1-18 is affirmed.
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
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