Ex Parte Hasegawa et al

Patent Trial and Appeal Board

Sep 20, 2012

10822072 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/822,072 04/08/2004 Shinichi Hasegawa 09812.0524-00000 2104
22852 7590 09/21/2012
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
TO, TUAN C
ART UNIT PAPER NUMBER
3662
MAIL DATE DELIVERY MODE
09/21/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHINICHI HASEGAWA, TAKUMI ARIE, and
HIROSHI AMANO
____________

Appeal 2010-006863
Application 10/822,072
Technology Center 3600
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006863
Application 10/822,072

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, and 12-17. Claims 3-11 have been canceled.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

REJECTIONS
Claims 1, 12, 14, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Carroll (US 2003/0097211 A1, pub. May 22, 2003) and
Lightner (US 6,636,790 B1, iss. Oct. 21, 2003).
Claims 2 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Carroll, Lightner, and Katagishi (US 2004/0210363 A1, pub. Oct. 21,
2004).
Claims 13 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Carroll, Lightner, and Borgesson (US 2005/0203684 A1,
pub. Sep. 15, 2005).

CLAIMED SUBJECT MATTER
Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An onboard apparatus mounted on a
vehicle, comprising:
getting means for automatically getting
vehicle model information from the vehicle by
determining a shape of a connector used to attach
the onboard apparatus to the vehicle, the vehicle
model information being peculiar to the vehicle;
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storage means for storing the vehicle model
information and design information, the design
information comprising at least one of a layout of a
screen, a shape of operating keys, and a color
pattern;
recognition means for recognizing the
vehicle model, based on the vehicle information
obtained by the getting means;
design setting means for setting the design
information, the setting of the design information
being at least partially based on the vehicle model
information; and
display means for displaying the design
information set by the design setting means.

OPINION
Claim 1 recites an onboard apparatus mounted on a vehicle including
a “getting means for automatically getting vehicle model information from
the vehicle by determining a shape of a connector used to attach the onboard
apparatus to the vehicle, the vehicle model information being peculiar to the
vehicle.” App. Br., Claims Appendix. Similarly, claim 14 recites an
onboard apparatus mounted on a vehicle including a “getting means for
automatically getting vehicle model information from the vehicle by
determining a formed position of a connector used to attach the onboard
apparatus to the vehicle, the vehicle model information being peculiar to the
vehicle.” Id.
The Examiner finds Carroll fails to disclose the above recited
limitations of claims 1 and 14, but that Lightner’s disclosure cures the
deficiency of Carroll with respect to these claims. Ans. 5-6. More
Appeal 2010-006863
Application 10/822,072

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specifically, the Examiner finds that Lightner’s OBD-II connector 1201
corresponds to the “getting means” of claims 1 and 14, and concludes that:
it would have been obvious to one having ordinary
skill in the art at the time the invention was made
to modify . . . [Carroll’s system with Lightner’s
teaching] so that a vehicle can be remotely
diagnosed from a control service center based on
the received diagnostic data from the vehicle.
Ans. 5-6.
The Examiner’s basis for equivalence between the “getting means” of
claims 1 and 14 and Lightner’s OBD-II connector 120 is that the data
transmissions have a format and pass between the data collector/router 35
and the vehicle’s OBD/ECU system 1002 through the cavities of connector
120. Ans. 5; col. 6, ll. 53, 54. The format of the data transmissions is
dependent on a vehicle’s make and model, e.g., “Ford and General Motors
vehicles use an OBD data format called J1850; data in this format pass
through cavities 2 and 10.” Col. 7, ll. 1-3. Lightner also discloses that
although the data transmission format may vary depending on the make and
model, the mechanical interface of the OBD-II connector is a standard
connection. Col. 6, ll. 65, 66. More specifically, the OBD-II “connector
120 has a serial, 16-cavity layout, with specific electrical connections in
separate cavities supplying data and electrical power from the OBD/ECU
system 100.” Col. 6, ll. 60-62. The Examiner elaborates by stating that “the
shape of the connector (120) is defined by its format and the specific formed
position of the cavities from the 16 cavity layout rather than the standard
shape of the OBO-II with 16 cavity layout” and “[t]he formed position of the

1 We note that “OBD” stands for on-board diagnostics. Col. 1, l. 38.
2 We note that “ECU” stands for electronic control unit. Col. 2, l. 6.

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connector (120) is defined by the formed position of the cavities from the
16-cavity layout.” Ans. 10.
The Appellants assert that Lightner discloses “a connector with a
standard interface and different data formats that pass through different
cavities of the connector.” App. Br. 13. Indeed, by having a standard
mechanical interface Lightner’s OBD-II connector 120 does not provide
Lightner’s system with the ability to determine a shape of a connector or a
formed position of a connector. This is distinguished from the present
invention as disclosed in the Specification at pages 23-24, which describes
how “pins 103 and 104 work as one of the connectors” and “the number and
the positions of the pins 103 and 104 fitted in the recessed parts 21a – 21h
can be detected.” Accordingly, the Appellants correctly contend that since
Lightner’s OBD-II connector has a standard mechanical interface it is not
equivalent to the “getting means for automatically getting vehicle model
information from the vehicle by determining a shape of a connector used to
attach the onboard apparatus to the vehicle” as recited in claim 1, or the
“getting means for automatically getting vehicle model information from the
vehicle by determining a formed position of a connector used to attach the
onboard apparatus to the vehicle” as recited in claim 14. App. Br., Claims
Appendix; see Reply Br. 6. As such, the combined teachings of Carroll and
Lightner fail to render the subject matter of claims 1 and 14 obvious. App.
Br. 12, 14. Thus, the Examiner’s rejection of claims 1 and 14, and their
dependent claims 12 and 16, respectively, as unpatentable over Carroll and
Lightner is not sustained.
The remaining rejections based on Carroll and Lightner in
combination with Katagishi or Borgesson rely on the same unsubstantiated
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finding discussed above, i.e., that the Examiner’s cited disclosure of
Lightner corresponds to the “getting means” of claims 1 and 14. As such,
we cannot sustain the rejections under 35 U.S.C. § 103(a) of claims 2, and
15 as unpatentable over Carroll, Lightner, and Katagishi, and claims 13 and
17 as unpatentable over Carroll, Lightner, and Borgesson.

DECISION
We REVERSE the rejections of claims 1, 2, and 12-17.

REVERSED

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