Ex Parte Hermann

Patent Trial and Appeal Board

Jan 26, 2017

12893154 (P.T.A.B. Jan. 26, 2017)

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.
12/893,154 09/29/2010 Thomas Hermann 83169570 3587
73442 7590 01/30/2017
JONES ROBB, PLLC (w/Ford Motor Co.)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
EXAMINER
MAHASE, PAMESHANAND
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
elizabeth.burke@jonesrobb.com
docketing @j onesrobb. com
susanne.jones @j onesrobb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS HERMANN
Appeal 2016-005859
Application 12/893,1541
Technology Center 2600
Before HUNG H. BUI, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action rejecting claims 23—26, 31, and 39—50,
which are all of the claims pending on appeal. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellant, the real party in interest is Ford Global
Technologies, LLC. App. Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed September 18, 2015
(“App. Br.”); Reply Brief filed May 16, 2016 (“Reply Br.”); Examiner’s
Answer mailed March 15, 2016 (“Ans.”); Final Office Action mailed
December 17, 2014 (“Final Act.”); and original Specification filed
September 29, 2010 (“Spec.”).
Appeal 2016-005859
Application 12/893,154
STATEMENT OF THE CASE
Appellant’s invention relates to “an inexpensive and simple method
for wirelessly communicating with a vehicle to control an aspect of the
vehicle” such as “disabling a vehicle using only information transmitted to
the vehicle.” Spec. H 9, 13. In particular, Appellant describes:
an embodiment of the invention using the vehicle’s wireless
receiver to facilitate remote control of a vehicle, law enforcement
personnel can transmit data allowing them to disable a vehicle
being pursued or that otherwise poses a safety threat to others.
In an embodiment of the invention, the disabling transmission
may need to include such information as a special code based on
the vehicle’s VIN number and a public key encryption... . [T]he
vehicle may be disabled gracefully by slowly decreasing engine
power and speed and eventually stopping the vehicle. An
embodiment of the invention contemplates providing law
enforcement with the ability to disable a vehicle within a given
transmission range, even if the vehicle is not within si[ght] of a
law enforcement officer.
Spec. ^41 (emphasis added).
Claims 23 and 31 are independent. Claim 23 illustrates Appellant’s
claimed invention, as reproduced below:
23. A device for disabling a vehicle using only information
transmitted to the vehicle, the device comprising:
a receiver mounted in or on the vehicle and adapted to
receive data wirelessly; and
a microprocessor in communication with the receiver and
adapted to process the data;
wherein the data includes a unique vehicle identifier
based on a vehicle identification number (VIN), a public
encryption key, and an instruction to disable the vehicle, and
wherein the vehicle is disabled by slowly decreasing
power and speed and eventually stopping the vehicle.
App. Br. 30 (Claims App’x).
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Appeal 2016-005859
Application 12/893,154
Examiner’s Rejections and References
(1) Claims 23—26, 31, 41—45, and 47—50 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Endo (US 2006/0232131 Al;
published Oct. 19, 2006), Howells (US 6,897,762 B2; issued May 24, 2005),
and Webb et al. (US 6,741,168 B2; issued May 25, 2004). Final Act. 3—8.
(2) Claims 39, 40, and 46 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Endo, Howells, Webb, and Cotton et al. (US
2008/0143507 Al; published June 19, 2008). Final Act. 8—10.
ANALYSIS
With respect to independent claims 23 and 31, the Examiner finds
Endo teaches Appellant’s claimed “device for disabling a vehicle using only
information transmitted to the vehicle,” shown in Figure 1, equipped with all
the claimed components such as: (1) “a receiver [12] mounted in or on the
vehicle and adapted to receive data wirelessly,” i.e., data “inherently
modulated and encrypted” using a public encryption key; and (2) “a
microprocessor [10] in communication with the receiver and adapted to
process the data.” Final Act. 3 (citing Endo ^fl[ 9, 16—20, 29, Fig. 1).
Endo’s Figure 1 shows a device for disabling a vehicle in response to
a disable command, i.e., information transmitted to the vehicle from a
center, as reproduced below with additional markings.
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Appeal 2016-005859
Application 12/893,154
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Endo’s Figure 1 shows a device for disabling a vehicle including receiver 12
and microprocessor 10.
To support the conclusion of obviousness, the Examiner relies on: (1)
Webb for explicitly teaching that data includes “a unique vehicle identifier
based on a vehicle identification number [(VEST)]” and (2) Howells for
teaching the requirement that “the vehicle is disabled by slowly decreasing
power and speed and eventually stopping the vehicle.” Final Act. 3^4
(citing Webb 6:46—62; Howells 3:42^47).
Appellant presents several arguments against the Examiner’s
combination of Endo, Howells, and Webb. App. Br. 11—26; Reply Br. 2—13.
For example, Appellant argues Endo teaches away from “disabling a vehicle
by slowly decreasing power and speed to eventually stop the vehicle.” App.
Br. 11—17; Reply Br. 2—5. According to Appellant, Endo discloses
immobilizing a vehicle only when the vehicle is stopped, i.e., Endo’s
microprocessor 10 “is programmed to wait until the vehicle is stopped and
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Appeal 2016-005859
Application 12/893,154
the ignition off before immobilizing the vehicle to avoid blocking cars behind
the immobilized vehicle, such as at an intersection” and, as such, would
discourage “deactivating a vehicle while it is moving and/or while its
ignition is on” in a manner “that would result in a vehicle being immobilized
on a roadway, such as at an intersection.” App. Br. 15—16; Reply Br. 3^4.
Likewise, Appellant argues there is no reason to combine Endo and Howells
because Endo teaches not immobilizing a vehicle until the vehicle is stopped
and, as such, any attempt to incorporate Howells’ teaching to slowly
decrease power and speed would have changed the principle of operation of
Endo’s vehicle. App. Br. 17—19; Reply Br. 5—8.
Lastly, Appellant argues the combination of Endo, Howells, and
Webb does not teach or suggest using the claimed “public encryption key”
as part of data used for disabling a vehicle. App. Br. 24—26. According to
Appellant, “Endo does not disclose or suggest the use of modulated or
encrypted signals” (App. Br. 26) and neither Howells nor Webb teaches or
suggests data that includes “a disable instruction” to also include “a public
encryption key” (App. Br. 26). In the Reply, however, Appellant
acknowledges:
public-key encryption or public-key cryptography is a well-
known technology that works with pairs of keys - a public key
and a private key, with the private key being known only to the
owner of the key (in this case, the ECU of the vehicle).
Reply Br. 12.
We do not find Appellant’s arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant’s arguments,
supported by a preponderance of evidence. Ans. 3—15. As such, we adopt
the Examiner’s findings and explanations provided therein. Id.
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Application 12/893,154
For additional emphasis, we note Endo describes:
The center [shown in Figure 1] is provided with a data base that
retains stored data relating to the vehicle owned by the user and
the like. The center is able to broadcast specific information . . .
as well as transmit data to a specific vehicle by incorporating a
unique vehicle ID assigned to each vehicle into the transmitted
data. In this latter case, in this exemplary embodiment in
particular, when theft of a vehicle is reported to the center by an
authorized user, the center transmits a disable command to the
vehicle (specified by the vehicle ID) of the user in order to
prevent unauthorized use of that vehicle by the thief.
Endo 130 (emphasis added). According to Endo, the immobilizer ECU 10
(i.e., microprocessor), shown in Figure 1, is also programmed to “disable a
predetermined electrical component [e.g., engine] mounted in the vehicle
such that the electrical component is immobilized in response to a disable
command received from a center,” i.e., to shut down the engine or disable
the vehicle “by slowly decreasing power and speed and eventually stopping
the vehicle” in the manner disclosed by Howells. See Endo 1 8; Howells
3:42-47. In other words, Endo also teaches shutting down a vehicle upon
receipt of a disable command. As such, we are not persuaded that Endo
teaches away from Appellant’s claimed invention. Nor do we see any
problem incorporating the functionality of Howells’ microprocessor 10 into
Endo’s device so that “vehicle is disabled by slowly decreasing power and
speed and eventually stopping the vehicle.” Howell 3:42-47.
With respect to the claimed “public encryption key,” we agree with
the Examiner that Appellant’s Specification only mentions once in
paragraph 41 using a “public key encryption” and not Appellant’s claimed
“public encryption key.” Ans. 12. To the extent that the claimed “public
encryption key” can be understood in the context of Appellant’s claims 23
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Appeal 2016-005859
Application 12/893,154
and 31, we agree with Appellant that “public-key encryption or public-key
cryptography is a well-known technology” (Reply Br. 10—13). As such, we
agree with the Examiner that the use of “public key encryption” to encrypt
information transmitted to Endo’s receiver along with a unique vehicle ID
such as vehicle VIN, was also well-known to those skilled in the art, as
disclosed, for example, by Endo and Webb. See also Endo 130; Webb
6:46-62.
Lastly, we note Appellant has not demonstrated the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Nor has Appellant provided
objective evidence of secondary considerations which our reviewing court
guides “operates as a beneficial check on hindsight.” Cheese Systems, Inc.
v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013).
For the foregoing reasons, Appellant has not demonstrated Examiner
error. Accordingly, we sustain the Examiner’s obviousness rejection of
independent claims 23 and 31, and their respective dependent claims 24—26,
41—45, and 47—50, which Appellant does not argue separately.
With respect to claims 39, 40, and 46, Appellant argues the Examiner
has not provided a reason to incorporate Cotton’s tire pressure monitoring
system (TPMS) into Endo’s immobilizer ECU. App. Br. 27—28. We are
unpersuaded because the incorporation would “reduce [] the amount of
components required to immobilize a vehicle and monitor tire pressure,” as
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Appeal 2016-005859
Application 12/893,154
the Examiner recognizes. Final Act. 9; Ans. 15. As such, we also sustain
the Examiner’s obviousness rejection of claims 39, 40, and 46.
OTHER ISSUES
In the event of further prosecution of this application, this panel
suggests that the Examiner consider rejecting claims 23—26, 31, and 39—50
under 35 U.S.C. § 103(a) as unpatentable over Howells alone.
Separately, we note Howells also teaches Appellant’s claimed “device
for disabling a vehicle using only information transmitted to the vehicle,”
shown in Figure 1, equipped with all the claimed components such as: (1) “a
receiver [13] mounted in or on the vehicle and adapted to receive data
wirelessly,” and (2) “a microprocessor [14] in communication with the
receiver and adapted to process the data.” See Howells’ Figure 1.
Howells’ Figure 1 shows a device for disabling a vehicle in response
to a disable command, i.e., information transmitted to the vehicle from a
center, as reproduced below with additional markings.
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Appeal 2016-005859
Application 12/893,154
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Howells’ Figure 1 shows Appellant’s claimed “device for disabling a
vehicle” including receiver 13, microprocessor 14, and disabling device 15
In addition to Figure 1, Howells also teaches a wireless signal is
modulated with codes unique to the vehicle, i.e., vehicle VIN, and once the
wireless signal is received at the receiver 10, “the stolen vehicle 30 is
partially disabled, so that it gradually loses power, thereby enabling the
driver to be apprehended safely, without any need for a prolonged high
speed pursuit.” Howells 3:13—18, 27—28, 42-47.
The only difference between Howells and Appellant’s claims 23 and
31 is Howell does not explicitly describe the use of a “public encryption
key” or “public key encryption,” which is well-known technology, as
acknowledged by Appellant. Reply Br. 10-13. Based on Appellant’s
admission, we conclude it would have been obvious for a skilled artisan to
use public key encryption in order to secure transmission to the vehicle.
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Appeal 2016-005859
Application 12/893,154
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting: (1) claims 23—26, 31, 41—45, and 47—50
under 35 U.S.C. § 103(a) as being unpatentable over Endo, Howells, and
Webb; and (2) claims 39, 40, and 46 under 35 U.S.C. § 103(a) as being
unpatentable over Endo, Howells, Webb, and Cotton.
DECISION
As such, we AFFIRM the Examiner’s Final Rejection of claims 23—
26, 31, and 39-50.
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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