Ex Parte Schaefer

Board of Patent Appeals and Interferences

Oct 27, 2011

10806868 (B.P.A.I. Oct. 27, 2011)

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.
10/806,868 03/23/2004 Mark S. Schaefer GP-304231 (2760/149) 2697
60770 7590 10/28/2011
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
VO, TED T
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
10/28/2011 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 MARK S. SCHAEFER
____________

Appeal 2009-013973
Application 10/806,868
Technology Center 2100
____________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner‟s
rejection of claims 28-48. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Invention
Appellant‟s invention relates to a system and method of managing a
software configuration update of a vehicle. A first software module is
identified and vehicle configuration data representative of a first vehicle
software configuration is retrieved. A determination is made whether the
first software module is compatible with the first vehicle software
configuration at a call center. A second vehicle software configuration is
sent from the call center to a telematics unit via a wireless network based on
the determination. A computer usable medium with suitable computer
program code is employed for managing the software configuration update
of the vehicle. Abstract.

Representative Claim
28. A method for managing a software configuration update
of a vehicle, the method comprising the steps of:

identifying an updated version of a first software module
for a first electronic module on the vehicle;

obtaining vehicle configuration data representative of a
current software configuration on the vehicle, wherein the
vehicle configuration data includes the versions of software
modules currently installed in electronic modules connected to
the vehicle telematics unit over a vehicle communication bus,
and the vehicle configuration data identifies interdependencies
between the software modules;

determining whether the updated version of the first
software module is compatible with the current software
configuration; and

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updating the first software module with the updated
version by transferring the updated version of the first software
module from the vehicle telematics unit to memory of the first
electronic module via the communication bus if it is determined
that the updated version of the first software module is
compatible with the current software configuration.

Examiner’s Rejections
Claims 28-48 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kincaid (US 2004/0117785 A1) and Kellerer ((Auto)
Mobile Communication in a Heterogeneous and Converged World, IEEE
Personal Communications, December 2001).

Claim Groupings
In view of Appellant‟s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 28. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in finding that the combination of Kincaid and
Kellerer teaches “vehicle configuration data representative of a current
software configuration on the vehicle, wherein the vehicle configuration data
includes the versions of software modules currently installed in electronic
modules” as recited in claim 28?

FINDINGS OF FACT
We adopt the findings of fact made by the Examiner in the Rejection
and the Examiner‟s Answer as our own.
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PRINCIPLES OF LAW
“[W]hen a patent „simply arranges old elements with each performing
the same function it had been known to perform‟ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
The Examiner concluded that downloading a software update using
the method of Kincaid in the vehicle communication network of Kellerer
would have been obvious to a person of ordinary skill in the art at the time
of invention. Ans. 5. Appellant contends that the Examiner has not
identified a proper reason to combine the method of wirelessly receiving
software files taught by Kincaid with the wireless device connected to a
vehicle as taught by Kellerer. App. Br. 4-6; Reply Br. 7-9.
We agree with the conclusions reached by the Examiner. Using the
method of wirelessly updating software files as taught by Kincaid to update
software files in the electronic device of Kellerer represents the predictable
use of prior art elements according to their established functions.
Appellant contends that neither Kincaid nor Kellerer teach a first
electronic module on a vehicle, or vehicle configuration data representative
of a current software configuration on a vehicle. App. Br. 9-11. Appellant
also contends that the Examiner muddles the concepts of electronic modules
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and software modules as recited in claim 28. Reply Br. 2-4. The Examiner
finds that Kellerer teaches electronic modules on a vehicle, and that Kincaid
teaches configuration data representative of a current software configuration.
Ans. 14-15. The Examiner further finds that the combination of Kincaid and
Kellerer teaches the configuration data representative of a current software
configuration on a vehicle. Ans. 15.
We agree with the findings and conclusions reached by the Examiner.
Separately, we note the Appellant‟s contentions are not consistent with
Appellant‟s admission that the prior art comprises electronic modules that
store software modules and are mounted on a vehicle. Appellant‟s Spec.
1:13-2:28.

CONCLUSION OF LAW
The Examiner did not err in concluding that the combination of
Kincaid and Kellerer renders obvious “vehicle configuration data
representative of a current software configuration on the vehicle, wherein the
vehicle configuration data includes the versions of software modules
currently installed in electronic modules” as recited in claim 28.

DECISION
The rejection of claims 28-48 under 35 U.S.C. § 103(a) as being
unpatentable over Kincaid and Kellerer is affirmed.
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).

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AFFIRMED

ELD