Ex Parte Emmerling et al

Board of Patent Appeals and Interferences

Sep 18, 2008

10603209 (B.P.A.I. Sep. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ULRICH EMMERLING, MATTHAIAS HUSCHENBETT,
JOHN MARTIN EVANS, and TORSTEN THIEL
____________

Appeal 2008-1391
Application 10/603,209
Technology Center 2100
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Decided: September 18, 2008
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON,
and JEAN R. HOMERE , Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 17. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2008-1391
Application 10/603,209

As best representative of the disclosed and claimed invention,
independent claim 11 is reproduced below:
11. Method for authenticating a vehicle to at a key comprising the
steps of:

a) transmitting an item of information unidirectionally between the
vehicle and the key,

b) calculating a computation result in the key from parts of the
transmitted information,

c) comparing the calculated computation result with a computation
result transferred with the information, wherein the comparing is in the key,
and

d) authenticating the vehicle if there is a match between the calculated
computation result and the transferred computation result, and declaring the
computation result as invalid for further transmissions.

The following references are relied on by the Examiner:
Stellberger US 4,509,093 Apr. 2, 1985
Kocher US 6,381,699 B2 Apr. 30, 2002

Claims 1, 2, and 11, stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Stellberger. The remaining claims on appeal stand rejected
under 35 U.S.C. § 103. Therefore, as evidence of obviousness as to claims 3
through 10, and 12 through 17, the Examiner relies upon Stellberger in view
of Kocher.
Rather than repeat verbatim the positions of the Appellants and the
Examiner, we refer to the Brief and Reply Brief for Appellants’ positions,
and to the Answer for the Examiner’s positions.
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OPINION
For the reasons set forth by the Examiner in the Answer, as expanded
upon here, we sustain the rejection of the noted claims under 35 U.S.C.
§ 102 and the separate rejection of the remaining claims on appeal under
35 U.S.C. § 103. Appellants argue common features among independent
claims 1 and 11 together in the Brief and Reply Brief. Moreover, no
arguments are presented as to the second stated rejection, that of various
claims rejected under 35 U.S.C. § 103, but instead rely for patentability upon
arguments presented with respect to the first stated rejection of independent
claims 1 and 11 under 35 U.S.C. § 102. In a corresponding manner, no
arguments are presented as to dependent claim 2, rejected under the first
stated rejection under 35 U.S.C. § 102.
Among the arguments presented at pages 5 and 6 of the principal
Brief on appeal, the focus appears to be upon the bidirectional transfer of
information in Stellberger, thus implying to the reader that the unidirectional
transmission of information in independent claims 1 and 11 on appeal is
distinguished. As the Examiner correctly argues in the responsive
arguments portion of the Answer, we find this an unpersuasive distinction
since the nature of the method steps or clauses in these claims on appeal
does not exclude the bidirectionality among the teachings in Stellberger.
That a reference teaches more than what is claimed does not invalidate a
rejection under 35 U.S.C. § 102 for what is claimed.
As to the Reply Brief, Appellants improperly repeat the same remarks
at pages 5 and 6 of the Reply Brief that were presented to us in the principal
Brief on Appeal. The subsequent discussion relating to explicit anticipation
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Application 10/603,209

as well as the discussion of implied anticipation is rendered moot from two
perspectives. The first perspective is that the Examiner attempted in much
of the remarks or responsive arguments portion of the Answer to emphasize
that the alleged mixing of steps between the embodiments in Stellberger’s
figures 2 and 3 was still proper since it was from one reference, which was
required for a valid rejection within 35 U.S.C. § 102. Even if we give
credence to Appellants’ positions that it is improper for the Examiner to mix
steps from two different embodiments in these two figures, our discussion,
infra, will clarify what the reference actually teaches. Secondly, Appellants’
state at page 9 of the Reply Brief that the Examiner improperly relies upon
the teaching at column 4, lines 24 through 27, and that this teaching only
applies to the so-called second method associated with figure 3. Our
understanding of the teaching of this reference leads us to believe otherwise.
The column 4 material noted above that was relied upon by the
Examiner was from the Summary of the Invention in Stellberger and
indicated that a comparison phase between the output signals produced in
plural working cycles is made alternatively in the key part and then in the
lock part. The discussion continued indicating that the interaction between
the lock and the key occurs in consecutive working cycles in a so-called
mirror-symmetrical manner where, at one time it is the key part which is
active, and at another time it is a lock part which is actively testing the
incoming signals from the other element as to their compatibility.
The discussion of figure 2, showing Stellberger’s first method or
embodiment, begins at the middle of column 6. The modifying teachings in
the middle paragraph of column 8 plainly make use of this mirror-
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Application 10/603,209

symmetrical capability in the manner just indicated. It is emphasized that
this occurs within the figure 2 embodiment. Thus, the artisan would
understand that the roles of the key and the lock are alternatively reversed.
The corresponding discussion associated with the second method or
embodiment in Stellberger’s figure 3 begins at the bottom of column 8 and
contains a corresponding teaching generally in most of column 10 regarding
this mirror-symmetrical fashion.
Thus, Appellants’ most persuasive argument that appears to us
between the Brief and Reply Brief is found at the top of page 10 of the
Reply Brief and asserts, generally, that Stellberger’s figures 2 and 3
embodiments teach to perform the comparison in the transmitting object
always and never in the receiving unit as required by claims 1 and 11 on
appeal. Because the mirror-symmetrical capability applies to both the figure
2 and 3 embodiments, the respective roles of the two elements, the key and
the lock, are respectively reversed according to various time sequences or
phases that may be applicable for the activation or the use of these elements
within both figures 2 and 3. In this light, therefore, the artisan would
understand that not only do the claims not exclude this capability, the
comparison that is alleged to be a distinguishing feature that occurs in the
receiving unit actually does occur within this alternate transmission-
reception dialog that occurs between the lock and the key in both the figure
2 and figure 3 embodiments, such as to meet the requirement that the
comparison occur in the receiving unit in independent claims 1 and 11 on
appeal.

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Application 10/603,209

In view of the foregoing, we sustain the Examiner’s decision of
rejecting various claims under 35 U.S.C. § 102 and 35 U.S.C. § since
Appellants have not presented persuasive arguments of any error in the
Examiner’s positions in the Answer. Therefore, we affirm the Examiner’s
decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

pgc

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