Ex Parte FEST et al

Board of Patent Appeals and Interferences

Sep 28, 2004

09250878 (B.P.A.I. Sep. 28, 2004)

1 Application for patent filed February 16, 1999, which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of German Application
No. 198 05 969.8, filed February 13, 1998.
0The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DIETER FEST and MARKUS EDSPERGER
____________
Appeal No. 2004-1598
Application No. 09/250,8781
____________
ON BRIEF
____________
Before HAIRSTON, LEVY, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-3 and 5-7, which are all of the claims
pending in this application.
We reverse.
BACKGROUND
Appellants’ invention is directed to a theft protection
system for an automobile and a method for initializing the theft
protection system.
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Application No. 09/250,878
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Representative independent claim 1 is reproduced below:
1. A method for initializing a theft protection system of
an automobile, which comprises:
sending a starting signal to a central control unit,
for initiating an initialization;
transmitting a challenge signal from the central
control unit over a data line;
sending identification code signals to the central
control unit from control units connected to the data line
and answering the challenge signal;
providing at least one of the control units as an
electronically coded plug part containing small electronics,
and pluggably and releasably connecting the coded plug part
to the data line in a location in the automobile being
difficult to find; and
storing all of the identification code signals or
information regarding all of the answering control units in
the central control unit as belonging to the theft
protection system, for requesting identification code
signals from all of the control units and checking them as
to authorization, during future authentication operations.
The Examiner relies on the following references in rejecting
the claims:
Posner et al. (Posner) 5,254,842 Oct. 19, 1993
Bachhuber (Bachhuber ‘490) 5,675,490 Oct. 7, 1997
Bachhuber (Bachhuber ‘329) 5,796,329 Aug. 18, 1998
(filed Jul. 22, 1996)
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bachhuber ‘329 and Posner.
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Application No. 09/250,878
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Claims 3 and 5-7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bachhuber ‘329, Posner and further in
view of Bachhuber ‘490.
We make reference to the answer (Paper No. 19, mailed
February 25, 2004) for the Examiner’s reasoning, and to the
appeal brief (Paper No. 18, filed December 1, 2003) and the reply
brief (Paper No. 20, filed April 21, 2004) for Appellants’
arguments thereagainst.
OPINION
Appellants argue that one skilled in the art would not be
motivated to add the mechanically encoded, pluggable module of
Posner to the ant-theft device of Bachhuber ‘329 since the plug
connections of Posner only serve to install the parts more easily
(brief, page 14). Appellants further assert that even if the two
references were to be combined, the result would not have taught
the claimed invention because Posner’s pluggable module is not
just an independent pluggable component and, without the other
components connected to it, would not function properly in
another anti-theft device (brief, page 15). Additionally,
Appellants assert that in Posner, the code of the pluggable part
will not be queried for its identification by the central unit
during authentication (reply brief, page 4).
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Application No. 09/250,878
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In response to Appellants’ arguments, the Examiner asserts
that while Bachhuber ‘329 teaches an anti-theft system with
multiple control units, Posner was relied on for suggesting how
to physically connect a control unit more easily (answer, page
7). The Examiner reasons that since Posner provides for a
pluggable memory and provides “memorized identification to the
processor,” similar to the memory function in Bachhuber ‘329, it
would have been obvious to combine the references (answer, page
8).
The initial burden of establishing reasons for
unpatentability rests on the Examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Where, as
here, a conclusion of obviousness is premised upon a combination
of references, the examiner must identify a reason, suggestion,
or motivation which would have led an inventor to combine those
references. Pro-Mold & Tool Co. V. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629, (Fed. Cir. 1996).
After reviewing the arguments and the applied references, we
agree with Appellants that a skilled artisan would not have
combined Bachhuber ‘329 and Posner. The closest Posner comes to
the claimed invention is that it relates to an anti-theft system.
The module of Posner may be easily installed in an automobile by
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Application No. 09/250,878
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plugging the related modules between the engine control module
and its memory module (col. 5, lines 11-20). This arrangement,
relied on by the Examiner (answer, page 9) as the reason for
combining the references, merely suggests that the modules may be
easily installed within the existing connection ports of the
vehicle. Posner, in fact, contains no suggestion of adding the
modules as an additional control unit to the anti-theft system of
Bachhuber ‘329 which is queried for its identification by the
central unit during the authentication process.
While one of the control devices of Bachhuber ‘329 may be
capable of being pluggable as required by claim 1, there must be
a suggestion or motivation in the references to do so. The
Examiner provides no such suggestion, nor do we find any
teaching, suggestion, or reason in the prior art to select parts
of the prior art and combine them in the manner required by the
claims. See Karsten Mfg. Corp. v. Cleveland Gulf Co., 242 F.3d
1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir. 2001) (“In holding an
invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art
that would have led a person of ordinary skill in the art to
select the references and combine them in the way that would
produce the claimed invention.”). The fact that the pluggable
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module 22 of Posner can be pluggably and releasably installed in
a vehicle does not suggest that such coded module, formed in a
fixed wiring, be substituted for a control unit in Bachhuber ‘329
and be queried for its identification by the central unit during
the authentication operation, as recited in claim 1.
Based on our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
necessary teachings and suggestions for using the module of
Posner as one of the control units of Bachhuber ‘329, are not
shown. Accordingly, we do not sustain the 35 U.S.C. § 103
rejection of independent claim 1, as well as claim 2 dependent
thereon, over Bachhuber ‘329 and Posner.
With respect to the rejection of claims 3 and 5-7, the
Examiner further relies on Bachhuber ‘490 for teaching the
central control unit being an antenna (answer, page 5). We also
note that independent claim 3, similar to claim 1, recites the
pluggable control unit. However, Bachhuber ‘490 does not teach
an electronically coded plug as one of the control units and
fails to overcome the deficiencies of the combination of the
references as discussed above. Therefore, we do not sustain the
35 U.S.C. § 103 rejection of independent claims 3 and 5-7 over
Bachhuber ‘329, Posner and Bachhuber ‘490.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-3 and 5-7 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
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Application No. 09/250,878
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Lerner and Greenberg, P.A.
P.O. Box 2480
Hollywood, FL 33022-2480