Ex Parte Flick

Board of Patent Appeals and Interferences

Feb 12, 2008

10648931 (B.P.A.I. Feb. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH E. FLICK
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Appeal 2007-3184
Application 10/648,931
Technology Center 2600
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Decided: July 11, 2008
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF CASE
Appellant requests a rehearing pursuant to 37 C.F.R. § 41.52 of our
Decision on Appeal (“Decision”) of February 14, 2008 setting forth a new
grounds of rejection of claims 1, 17, and 23.
We deny the request in so far as it seeks a modification of our
decision for the reasons that follow.
Appellant’s arguments regarding claims 1, 17, and 23 are directed to
claims 1 and 23. We choose claim 23 as representative of the group.

Appeal 2007-3184
Application 10/648,931

ANALYSIS
Appellant states that “the claimed invention advantageously permits
pre-warn features to be installed into a vehicle without replacing the existing
vehicle security system.” (Reh’g. 2). Appellant also states that the “claimed
invention provides an emulated pre-warn indication different from an
existing alarm indication without modifying the existing alarm system
indicator.” (Id.). Inexplicably, Appellant also recites several claim 4
features, and states: “In other words, the pre-warn emulator utilizes the
common disarm/arm chirping of factory alarm and keyless entry systems to
provide a pre-warn indication.” (Reh’g. 3). Appellant concludes: “None of
the cited prior art reference discloses or fairly suggests this above
highlighted feature of the claims. (Id.) (emphasis added).
First, claim 4 is not at issue before us since we entered no such
rejection. Second, Appellant’s assertions that the claims require certain
features related to claim 4 (or any other unclaimed features), do not
distinguish the claims before us from the references, and, thus, do not
constitute an argument for patentability. Without an argument for
patentability, we have no basis upon which to modify our decision. We also
decline Appellant’s implied invitation to read any of the underlined features
above into the claims, because they are not claimed.
Next, Appellant
submits that the Board’s proposed combination fails to teach a
pre-warn emulator for generating at least one signal on the
vehicle data communications bus extending throughout the
vehicle and carrying data and address information responsive to
said pre-warn vehicle security sensor so that the alarm
controller causes the alert indicator to generate an emulated pre-
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Application 10/648,931

warn indication different from the alarm indication, as recited
by Claim 1, for example.

(Reh’g. 4).

We disagree. The combination as outlined teaches the claimed
limitations (see Decision 14-17). Moreover, the above statement does not
constitute an argument for patentability, as it points to no specific error in
our Decision. Nonetheless, we repeat a portion of our Decision as to
Hwang‘407:
. . . Hwang’s ‘407 pre-warn emulator 102 is ‘for generating at
least one signal’ on Hwang’s ‘407 outputs lines which carry
data responsive to the pre-warn security sensor of the alarm
controller 103 - which controller ‘causes the alert indicator’ :
i.e., the siren circuit 105, flashing circuit 106, and dome light
control circuit 108, ‘to generate an emulated pre-warn
indication different from the alarm indication.’ (Hwang’407,
Fig. 1). The claim requires the bus to carry data and address
information to be ‘responsive’ to the pre-warn security sensor.
Hwang’s ‘407 motion detector - the pre-warn sensor - inputs a
signal to the pre-warn emulator 102 - causing the output lines to
carry data responsive to the motion detector via the alarm
circuit 103.

(Decision 15) (underlined emphasis added).

Hwang discloses low level pre-warn alarms (“chirp”, preset time
period flashing light) and high level alarms (“normal audible,” flashing light
and dome light) as initiated by the “puppet master” (Reh’g. 5) pre-warn
emulator (one shot timer 102) sending respective different numbers of
activation signals and thereby “pulling the ‘strings’” (id.) of the controller
(main control alarm circuit 103), as dictated by inputs from the pre-warn
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sensor (motion detector). (Hwang ‘407, abstract, col. 1, l. 60 to col. 2, l. 14,
Fig. 1).
While Appellant acknowledges that Hwang ‘407 teaches much of
what we describe above (see Reh’g 3), Appellant maintains:
Nonetheless, Appellant has not claimed such an invention but has
differently claimed a pre-warn emulator generating signals on this
data communications bus so that the alarm controller causes the alert
indicator to generate an emulated pre-warn indication different from
the alarm indication.

(Reh’g 6).
However, Appellant’s assertions of what the claims require, including
the “puppet master” analogy (Reh’g. 5) addressed above, fail to demonstrate
why Hwang ‘407, or the combination of Hwang ‘407 with Flick or Leen,
does not teach what is alleged to be missing.1

1We also alternatively noted in our Decision the following:

We also determine that Flick teaches every claim limitation
except for the explicit disclosure of generating an emulated pre-
warn indication different from the alarm indication. It appears
to us that one of ordinary skill may have understood that Flick’s
“pre-warn input” 26 would cause a lesser (i.e., pre-warn)
indication to be generated as compared to a full-blown (i.e.,
alarm) indication, but we leave this determination to the
Examiner. Regardless, Hwang ‘407 explicitly teaches the
limitation. Hence, the order of references could have been
reversed to meet the claim.
(Decision n. 5).

Flick’s alarm controller 11 receives a pre-warn input 26 (Fig. 1), with
several levels of output alarm indication (i.e., “STARTER KILL,”
“SIRENS/LIGHTS,” “DOME LIGHT,” and “SPEECH MESSAGE,” etc.).
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Application 10/648,931

Similarly, Appellant’s statement that Flick’s or Leen’s bus requires a
substantial modification (Reh’g. 5) not only lacks any evidence or argument
in support thereof, but shifts the focus away from our Decision that Hwang
‘407 teaches the claimed alarm control features while Leen or Flick teaches
the claimed bus features, thereby rendering a predictable bus/alarm
combination and meeting the claims. For example, we noted that Flick
teaches,
connecting alarm indicators 64, vehicle sensors 60 and an alarm
controller 65 to a bus. . . . [and] teaches several advantages of
connecting a vehicle alarm system to a data bus communicating with
devices throughout a vehicle, so that replacing Hwang’s ‘407 wiring
would have been obvious in order to reduce complications, weight,
and cost, etc.

(Decision 16).
Appellant also states that “the Board is mischaracterizing the claimed
invention by grossly oversimplifying the claimed invention by equating it to
Hwang ‘407 plus a data communications bus.” (Reh’g. 5). Appellant fails
to demonstrate why “Hwang ‘407 plus a data communications bus” does not
meet the claim. If Appellant’s additional assertions (see Reh’g. 5 –
emphasizing “alarm controller”) are meant to constitute implied arguments
that Hwang’s ‘407 alarm circuit does not constitute an alarm controller and
that Flick’s or Leen’s data bus does not carry data and address information
from the alarm controller, the argument is without merit. The substitution of
(See Flick, Fig. 1). Appellant fails to put forth a supported argument
convincing us of error in our determination that Flick discloses or suggests
the claimed invention.

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Application 10/648,931

Flick’s controller 65 and bus (or Leen’s – see eg. last par., p. 88: “controller
area network” - “CAN is currently the most widely used vehicular network. .
. .”) for Hwang’s 407 control circuit and point-to-point wiring system
involves the mere substitution of known elements, yielding the predictable
result of a compact controller addressing numerous alarm indicators on one
common data bus rather than a circuit addressing myriad numbers of devices
wired point-to-point (see Decision 15-17). Additionally, such a combination
requires either of Flick’s or Leen’s data buses to carry bus and address
information generated in Hwang’s ‘407, Flick’s, or Leen’s alarm controller
(see Decision 17) in the manner as set forth in the claim. (See also our
discussion below, noting that the method claim, calling for “upgrading,”
does not preclude replacing existing parts.)
Appellant also submits that the Board “overlooked a clear teaching
away from swapping out the output lines of Hwang ‘407 for the data
communications bus of Flick ‘551 or Leen et al.” (Reh’g. 6). Appellant
bases this submission on the unsupported assertions that bus and address
information is proprietary to vehicle manufacturers, so that a person
“upgrading a vehicle security system” as set forth in claim 23 would have to
“decode and reverse engineer the data and address information carried by the
data communication bus” which amounts to a “tedious, onerous, and
substantial task.” (Reh’g. 6-7).
Even if the unsupported assertions were correct, we would not be
persuaded by the argument because the claim does not require such
proprietary information. For example, a person of ordinary skill could either
be employed by an owner of such proprietary information or otherwise
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obtain or produce it by purchase, design, etc., and as such, have nothing to
reverse engineer in the manner argued.
“Fortunately, today’s control and communications networks, based on
serial protocols, counter the problems of large amounts of discrete wiring.”
(Leen, 88). In other words, even if reverse engineering is required, replacing
point-to-point wiring harnesses with bus network systems “reduces weight,
costs, and complexity, and saves space and fuel consumption” (Decision 15),
yielding predictable benefits which outweigh any reverse engineering
problems argued to exist.
Alternatively, claim 23 does not preclude replacing an existing alarm
controller with a completely new or different one, including one such as
Flick’s (compatible with many vehicles (col. 3, ll. 5-27)) or Leen’s (CAN -
controller area network - “one of the first and most enduring automotive
control networks,” Leen, last par., p. 88), thereby eliminating any reverse
engineering required, while still obtaining the predictable benefits outlined
above. Nor does claim 23, calling for “upgrading,” preclude replacing other
nonfunctioning, non-compatible, or older parts, including an existing pre-
warn emulator and/or sensor, and interfacing same with a new or existing
controller, thereby meeting the claim. Such a modification of Hwang’ 407
and Flick or Leen would have involved a common sense maintenance and
replacement of parts, yielding the predictable result of reliability.
Appellant also asserts that our stated motivation to combine Hwan,
with Flick or Leen was improper as “a conclusory statement of
obviousness.” (Reh’g. 7). We disagree. Our findings were carefully
articulated (Decision 15-17).
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Application 10/648,931

DECISION
The Request for Rehearing to the extent of a modification of our
decision is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REHEARING
DENIED

gvw
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A.
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