11065458 (B.P.A.I. Dec. 23, 2010)

Ex Parte Noguchi

Board of Patent Appeals and InterferencesDec 23, 2010

11065458 (B.P.A.I. Dec. 23, 2010)

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. 11/065,458 02/25/2005 Kiyoshige Noguchi F05-178586M/MKO(A-1729M) 2736 21254 7590 12/23/2010 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER DAGER, JONATHAN M ART UNIT PAPER NUMBER 3663 MAIL DATE DELIVERY MODE 12/23/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte KIYOSHIGE NOGUCHI ____________________ Appeal 2009-007327 Application 11/065,458 Technology Center 3600 ____________________ Before WILLIAM F. PATE, III, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007327 Application 11/065,458 STATEMENT OF THE CASE Kiyoshige Noguchi (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-9 and 12-16. Claims 10 and 11 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An operator-side system comprising: a storing unit for storing a plurality of computer- readable mode files, codes and keywords, wherein the codes are respectively correlated with the mode files and identify a faulty condition of a vehicle, and the keywords are respectively correlated with the mode files and identify the faulty condition of the vehicle; a keyword setting unit for setting the codes and the keywords as search keys, wherein the codes are acquired via a network from a control unit mounted on the vehicle, the keywords are input by an operator, and the network transmits/receives information to/from the control unit; and a processing unit for identifying the mode file corresponding to the search keys among the plurality of mode files based on the search keys, wherein contents of the mode files comprise types of the vehicle data and acquiring conditions, which are required to take measures against a particular faulty condition, out of a plurality of different vehicle data that contain control parameters in the control unit; and wherein the codes and the keywords are different from the vehicle data and acquiring conditions in the correlated mode files. 2 Appeal 2009-007327 Application 11/065,458 THE REJECTION Before us for review is the Examiner’s rejection of claims 1-9 and 12-16 under 35 U.S.C. § 103(a) as being unpatentable over Kamiya (US 2003/0050747 A1, published Mar. 13, 2003) and Laguer-Diaz (US 2002/0169530 A1, published Nov. 14, 2002). OPINION Appellant challenges the Examiner’s reasoning underlying the conclusion that one of ordinary skill in the art would have found it obvious to combine the references’ teachings. Reply Br. 4-6; see App. Br. 8. We have difficulty evaluating the Examiner’s reasoning because the Examiner does not explicitly identify which claimed feature is missing from the primary reference. See Ans. 6; but see Final Rej. 7-8 (identifying a missing feature but basing the conclusion of obviousness on findings and reasoning somewhat different than those in the Answer). The Examiner’s finding regarding the secondary reference, Laguer-Diaz, pertains to parameters which can be utilized “to take measures to prevent a particular faulty condition[].” Ans. 6. Thus, it seems that the Examiner is focusing on similar “take measures” language in, for example, the next to last clause in each of independent claims 1 and 12. However, the Examiner appears to have found that the primary reference, Kamiya, also discloses data required to take measures against a particular faulty condition. See Ans. 5 (citing Kamiya, fig. 8, item 333). Thus, it is not clear to us what aspect of Kamiya’s system was found to be lacking such that one of ordinary skill would have reason to modify that system. 3 Appeal 2009-007327 Application 11/065,458 Nonetheless, the Examiner found that Kamiya, as modified by Laguer-Diaz, contains all of the elements of the independent claims, and that “[t]he only difference is the combination of the above prior elements into a single diagnostic invention.” Ans. 6. The Examiner then concludes: Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the predictive evaluation of Laguer-Diaz into the vehicle diagnostic system of Kamiya. Doing so would provide further predictive means to assist in taking measures against a particular fault condition[.] Id. at 6-7. We do not agree with the Appellant’s suggestion that an examiner’s obviousness rejection must, in every case, follow one of the seven exemplary rationales identified in the Manual of Patent Examining Procedure. See Reply Br. 6. However, on the record before us in this case, we do find persuasive Appellant’s argument (id. at 6) that the Examiner’s conclusion of obviousness is based on circular reasoning – that it would have been obvious to incorporate Laguer-Diaz’s feature because the resulting combination would then have that feature. We determine that the Examiner’s conclusion of obviousness is not supported by adequate articulated reasoning with rational underpinning. As such, we are constrained to reverse the rejection of claims 1-9 and 12-16 as obvious in light of Kamiya and Laguer-Diaz. 4 Appeal 2009-007327 Application 11/065,458 DECISION The decision of the Examiner to reject claims 1-9 and 12-16 is reversed. REVERSED Klh MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 5