Ex Parte Shimomura

Patent Trial and Appeal Board

Mar 14, 2014

11783101 (P.T.A.B. Mar. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TOSHIO SHIMOMURA
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Appeal 2012-000041
Application 11/783,101
Technology Center 2600
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Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER,
and DAVID M. KOHUT, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1-21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Although Appellant contends that only claims 1-20 were rejected (App. Br.
5, 18-19), the Examiner nonetheless clarifies the status of claim 21 as
rejected in the Answer (Ans. 4, 19). Accordingly, we treat claim 21 as
rejected in this opinion.
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STATEMENT OF THE CASE
Appellant’s invention is a vehicle security system that can immobilize
the vehicle if it is stolen. This immobilization can be released via a releasing
device that receives power when an authorized key identification signal is
transmitted, thus reducing power consumption. See generally Abstract;
Spec. 1-3. Claim 1 is illustrative with our emphasis:
1. A vehicle security apparatus having a configuration to
communicate with an electronic key transmitting a unique identification
signal and with a communication apparatus in a remote location, with
respect to the vehicle security apparatus, transmitting drive request signals
representing a drive prohibition request and a drive permission request for a
vehicle driving device of a vehicle, the vehicle security apparatus
comprising:
a key communication unit having a configuration to communicate
with the electronic key;
a remote communication unit having a configuration to communicate
with the communication apparatus in the remote location;
a control unit having a configuration to control the vehicle driving
device based on at least one of the identification signal transmitted to the key
communication unit and the drive request signals transmitted to the remote
communication unit, the control unit prohibiting the vehicle driving device
from being operated in response to the drive request signal representing the
drive prohibition request even when the identification signal is an authorized
identification signal; and
a releasing unit having a configuration to release control over the
vehicle driving device according to an instruction from a user, the control
being performed based on the drive request signal representing the drive
prohibition request,
wherein the control unit has a configuration to allow a transition of
power from a power supply mounted on the vehicle such that the releasing
unit can accept an instruction from the user for releasing the drive
prohibition performed based on the drive request signal, only when the
identification signal transmitted to the key communication unit is the
authorized identification signal under a condition that driving of the vehicle
driving device is prohibited by the drive request signal representing the
drive prohibition request at the remote communication unit.
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THE REJECTIONS
The Examiner rejected claims 1-7, 10-17, 20, and 21 under 35 U.S.C.
§ 103(a) as obvious over Okada (US 2006/0049962 A1; published Mar. 9,
2006) and Ata (US 2002/0059532 A1; published May 16, 2002). Ans.
4-14.2
The Examiner rejected claims 8, 9, 18, and 19 under 35 U.S.C.
§ 103(a) as obvious over Okada, Ata, and Takezaki (US 2003/0090154 A1;
published May 15, 2003). Ans. 14-16.

THE OBVIOUSNESS REJECTION OVER OKADA AND ATA
The Examiner finds that Okada’s vehicle security apparatus has every
recited element of claim 1 except for allowing a transition of power from a
power supply mounted on the vehicle such that a releasing unit can accept an
instruction from a user only when an authorized identification signal is
transmitted to a key communication unit. Ans. 4-6, 16-19. The Examiner,
however, cites Ata as teaching this feature in concluding that the claim
would have been obvious. Id. According to the Examiner, the recited power
transition is an obvious variation because Okada’s “releasing unit” (anti-
theft device 10) inherently requires a power supply and Ata teaches
transitioning power to a vehicle control unit before performing further
instructions. Ans. 17.
Appellant argues that Okada and Ata do not transition power for the
releasing unit from OFF to ON on two conditions, namely (1) the driving

2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 15,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed May 23, 2011
(“Ans.”); and (3) the Reply Brief filed July 22, 2011 (“Reply Br.”).
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device is in the prohibited condition, and (2) either the electronic key is
authorized (claim 1) or a door lock switch is operated (claim 11). App. Br.
12-18. According to Appellant, the Examiner’s interpreting the recited
“wherein” clause of claims 1 and 11 as non-structural and merely functional
is erroneous in light of that clause’s “configuration to” language that
specifies positively how and under what circumstances the recited power
transition is used. App. Br. 15-18; Reply Br. 2-6.

ISSUE
Under § 103, has the Examiner erred by finding that Okada and Ata
collectively would have taught or suggested a control unit with a
configuration to allow a transition of power from a power supply mounted
on a vehicle such that a releasing unit can accept an instruction from a user
only when an authorized identification signal is transmitted to a key
communication unit (claim 1) or a door lock switch is detected (claim 11),
under a condition that vehicle driving is prohibited?

ANALYSIS
Claims 1-7, 10, and 21
A key aspect of this dispute is the Examiner’s interpretation of the
“wherein” clause in independent claim 1 and, in particular, this clause’s
reciting that the control unit has a configuration to allow the recited power
transition such that the releasing unit can accept an instruction from the user
to release the drive prohibition. Although Appellant contends that the
Examiner did not give the term “configuration to” and its associated
functionality in the “wherein” clause patentable weight as merely functional
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limitations (see App. Br. 15-18; Reply Br. 2-6), that is not the Examiner’s
position. Notably, in response to Appellant’s arguments in this regard, the
Examiner explains that he “does not consider the phrase ‘configure to’ to not
be a positive recitation of a claimed limitation.” Ans. 19 (emphases added).
Instead, the Examiner considers the phrase “can accept” in connection with
the releasing unit as not constituting a positive recitation, but rather
requiring the ability to perform the associated functions. Id. (emphasis
added).
Despite the Examiner’s somewhat inartful double-negative language
regarding interpreting the control unit’s “configuration to” language on page
19 of the Answer, the Examiner nevertheless does not ignore this limitation
and associated functions as Appellant seemingly suggests. See Reply Br. 3.
Rather, the Examiner interprets the limitation in terms of the releasing unit’s
capability to accept the recited user instruction—a reasonable interpretation
given the “can accept” language noted above. See Ans. 19. As such,
Appellant’s redrafting the Examiner’s statement on page 19 of the Answer to
omit the second instance of “not” (Reply Br. 3 n.1) misinterprets the
Examiner’s position in this regard.
Turning to the rejection, we see no error in the Examiner’s position
that providing the ability for a control unit to allow the recited power
transition would have been an obvious variation because Okada’s “releasing
unit” (anti-theft device 10) inherently requires a power supply, and Ata
teaches transitioning power to a vehicle control unit before performing
further instructions. Ans. 17. As shown in Ata’s Figure 1 below, the car’s
navigation system 1 includes an information processing unit 14 that controls
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power supplied from power supply 22 to engine 23 via power controller 24
if a user is authenticated. Ata ¶¶ 0145, 0149; Figs. 1, 4.

Ata’s Figure 1 showing power information processing unit controlling
power supplied to engine via a power controller

Notably, power supply 22 is also connected to the car navigation
system via key cylinder 211 and key 212 that are collectively used as a
switch for supplying electric power from the power supply to the navigation
system. Ata ¶ 0145. Accordingly, Ata at least suggests that the car
navigation system’s information processing unit can accept user instructions
only if it receives power from power supply 22—a condition met only if the
appropriate key 212 is in cylinder 211. See id. And if this key is
authenticated, power is fed as the Examiner indicates. Ans. 6 (citing Ata
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¶ 0073). Therefore, the Examiner’s position that “Ata teaches a transition of
power to the control unit . . . before performing further instruction” as a
power-saving measure (Ans. 17) has a rational basis in light of Ata’s
transferring power to the information processing unit before further
instruction to transfer power to the engine.
Accordingly, we see no error in the Examiner’s position that
combining Ata’s teaching with Okada at least suggests the control unit’s
configuration recited in the last clause of claim 1, particularly in view of
Okada’s key-based authentication technique that is used in connection with a
“releasing unit” (antitheft device 10) to unset an engine immobilizer. Ans.
4-7 (citing Okada ¶¶ 0047, 0050, 0056), 16-17. That is, these collective
teachings at least suggest that the recited power transition would be allowed
such that the releasing unit can accept user instruction to release a drive
prohibition only when an authorized identification signal is transmitted to a
key communication unit under a condition that driving is prohibited.
For similar reasons and those indicated by the Examiner (Ans. 10-11,
18), we are likewise unpersuaded of error in the Examiner’s position
regarding method claim 21 that recites limitations commensurate with claim
1 despite lacking a “wherein” clause with “configured to” language as
Appellant indicates. App. Br. 18; Reply Br. 6.
Therefore, we are not persuaded that the Examiner erred in rejecting
independent claims 1 and 21 and claims 2-7 and 10 not argued separately
with particularity.

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Claims 11-17 and 20
We reach a similar conclusion regarding independent claim 11 that
recites a “wherein” clause similar to that of claim 1 except that it involves
detecting operation on a vehicle door lock switch rather than transmitting
authorized key identification signals. Despite this distinction, Appellant
reiterates similar arguments as those made for claim 1 (App. Br. 12-18;
Reply Br. 2-6) and, therefore, has not persuasively rebutted the Examiner’s
position that is based on Okada’s and Ata’s collective teachings for the
reasons noted above and by the Examiner. Ans. 10-11 (citing Okada
¶¶ 0050-51), 18.
Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 11 and claims 12-17 and 20 not argued separately with
particularity.

THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 8, 9,
18, and 19 over Okada, Ata, and Takezaki. Ans. 14-16. Despite nominally
arguing these claims separately, Appellant reiterates similar arguments made
previously and alleges that Takezaki fails to cure those purported
deficiencies. App. Br. 18. We are not persuaded by these arguments,
however, for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-21 under § 103.

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ORDER
The Examiner’s decision rejecting claims 1-21 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).

AFFIRMED

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