Ex Parte Sommer

Board of Patent Appeals and Interferences

Jun 7, 2007

10045789 (B.P.A.I. Jun. 7, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAINER SOMMER
____________

Appeal 2007-1344
Application 10/045,789
Technology Center 3600
____________

Decided: [Date of mailing]
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and DAVID B. WALKER,
Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Rainer Sommer (“Appellant”) seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
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THE INVENTION
Appellant claims a vehicle controller and a control method with which
control parameters of a vehicle version can be determined either (1) indirectly from
algorithmic processing of a version coding during operation of the controller; or
(2) directly from specification of the parameters in the code word according to
version coding (Specification 2:1-20). Claims 1-2, reproduced below, are
representative of the subject matter on appeal.
1. A vehicle controller designed for a plurality of
different vehicle versions, comprising:
means for storing a plurality of control parameters
for the different vehicle versions;
means for storing a version coding for customizing
the vehicle controller for a predetermined vehicle
version, the version coding having a plurality of bit
positions; and
means for indirect selection of control parameters
from the means for storing control parameters by
algorithmic processing of values of a plurality of bit
positions of the version coding.

2. The vehicle controller according to claim 1, further
comprising
means for direct selection of control parameters
from the means for storing control parameters as a
function of values of individual bit positions of the
version coding.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Gormley US 5,513,107 Apr. 30, 1996
Becker US 6,184,661 B1 Feb. 6, 2001
Volkswagen Official Factory Repair Manual, Golf, GTI, Jetta 1999-2003,
Jetta Wagon, 2001-2003; Bentley Publishers; pp. 1-6 through 1-64 (“Manual”).
The following rejections are before us for review.
1. Claims 1-12 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
2. Claims 1-5 and 7-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the Manual in view of Gormley.
3. Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over
the Manual in view of Gormley, and further in view of Becker.

ISSUE
The issues before us are whether Appellant has shown that the Examiner
erred in rejecting (1) claims 1-12 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement; (2) claims 1-5 and 7-11 under
35 U.S.C. § 103(a) as unpatentable over the Manual in view of Gormley; and (3)
claims 6 and 12 under 35 U.S.C. § 103(a) as unpatentable over the Manual in view
of Gormley, and further in view of Becker. The enablement issue turns on whether
the Specification provides adequate disclosure of indirect selection of control
parameters and direct selection of control parameters to allow one skilled in the art
to practice claims 1-12 without undue experimentation. The correctness of the
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obviousness rejections turns on whether the asserted references disclose indirect
selection of control parameters by algorithmic processing of values of a plurality of
bit positions of the version coding.
Rather than repeat the arguments of Appellants or the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellants have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004). Except as noted in this opinion, Appellant has not
presented any substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a separate
argument with respect to those claims, they stand or fall with the representative
independent claim. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. The Specification teaches that control parameters of a vehicle version can
be determined indirectly by algorithmic processing of the version coding
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during operation in a controller without specifying the parameter directly
through a separate bit in the code word according to the version coding
(Specification 2:1-9). The vehicle version is coded into version coding
(code word memory 10) that is algorithmically processed during
operation to determine where in the code word (application data memory
30) to read the desired control parameters (Specification 3:8-14 and
22-25).
2. The Specification teaches that control parameters of a vehicle version can
be determined directly from the code word when the control parameters
are contained directly in the code word according to version coding.
(Specification 2:11-14; Figure 2).
3. The processes of direct and indirect selection of control parameters are
disclosed in the Specification as follows:

Depending on the content of code word memory 10, data
according to the respective version is read out of
application data memory 30 in operation of the vehicle
controller. Individual values of application data memory
30 may be allocated directly to individual items of
information in version code memory 10 or they may be
allocated indirectly, i.e., individual values are assigned to
certain combinations of information of code word
memory 10. These combinations are determined by logic
links of individual bit positions of version code memory
10. The links are formed in unit 20. According to the
algorithmic processing in unit 20, selector unit 40 is then
controlled to access the respective memory locations in
application data memory 30. The value read there is sent
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to control unit 50. In control unit 50, the proper control
program for the vehicle control is executed. Many
parameters or engine characteristics maps can be
determined from the version coding in the manner
described here.
(Specification 3:8-20).
4. Vehicle version coding contains information regarding the vehicle
version, i.e., information regarding the vehicle allocated to the controller.
“The information may include the presence, type and nature of individual
vehicle components, such as body type, engine type, transmission type,
carburetor type, etc. Code word memory 10 may be implemented as an
EEPROM.” (Specification 2:30-3:4). The version code memory 10 is
version specific and the totality of possible values and engine
characteristics maps is present in each controller (in application data
memory 30) so one controller may be used for a plurality of different
vehicle versions (Specification 3:22-25).
5. Control parameters are described as data or engine characteristics maps
for the individual elements of the vehicle equipment that are contained in
application data memory 30. (Specification 3:4-6).
6. The Manual discloses only direct selection. The table on 1-32 of the
Manual shows version codes such as number of engine cylinders, but
does not teach algorithmically processing the plurality of bit positions in
the version coding to select a control parameter (Manual, 1-29-1-32).
7. Gormley teaches storing a variety of preferences for a plurality of
operators and configuring the operating characteristics of the vehicle in
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response to the identified operator and his or her desires and
requirements. (Gormley, col. 4, ll. 37-48).
8. Becker discloses an alternator regulator, but does not teach the missing
limitation (Becker passim).
9. None of the cited references disclose the limitation of selection of control
parameters by algorithmic processing of values of a plurality of bit
positions of the version coding.

DISCUSSION
ENABLEMENT
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of
the invention provided in the specification of the
application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as
to the scope of enablement. If the PTO meets this
burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.

In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA
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1971)).
It is well-established law that the test for compliance with the enablement
requirement in the first paragraph of 35 U.S.C. § 112 is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re Wands, 858 F.2d
731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). “Enablement is not precluded
by the necessity for some experimentation . . . However, experimentation needed
to practice the invention must not be undue experimentation. The key word is
‘undue,’ not ‘experimentation.’” In re Wands, 858 F.2d at 736-737, 8 USPQ2d at
1404.
To evaluate whether a disclosure would require undue experimentation, the
Federal Circuit has adopted the following factors to be considered:
(1) The quantity of experimentation needed to make or use the invention
based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
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In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The examiner’s analysis must
consider all the evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. Id., 8 USPQ2d at 1404.
The Examiner asserts that the Specification does not make clear the
difference between “direct selection of control parameters” and “indirect selection
of control parameters” (Answer 3). Contrary to this assertion, the Specification
alternately describes the processes of direct and indirect selection of control
parameters. In particular, for the embodiment disclosed in Figure 1, indirect
selection is described as determining control parameters indirectly by algorithmic
processing of the version coding during operation in a controller without
specifying the parameter directly through a separate bit in the code word according
to the version coding (Finding of Fact 1). For indirect selection, control
parameters stored in the application data memory are allocated indirectly, i.e.,
individual values are assigned to certain combinations of information of code word
memory (Finding of Fact 3).
In addition, two embodiments of direct selection are disclosed. In the first,
individual values of application data memory may be allocated directly to
individual items of information in version code memory, such that no algorithmic
processing of the version code memory is necessary to select the appropriate
control parameter from the application data memory (Finding of Fact 3). In the
second, the control parameters are coded directly into the code word and read
directly from the code word (Finding of Fact 2). Since the control parameters are
directly coded into the code word, no application data memory is required and the
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control parameters may be selected directly from the code word without
algorithmic processing.
The Examiner has not set forth a reasonable explanation as to why he
believes that the scope of protection provided by claims 1-12 is not adequately
enabled by the description of the invention provided in the Specification. He thus
failed to meet his burden of setting forth a reasonable explanation of non-
enablement. Accordingly, we reverse the enablement rejection of claims 1-12.

OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
It is incumbent upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness”) (cited with approval in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741, 82 USPQ2d 1385, 1396 (2007)). In so doing, the examiner is
expected to make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). KSR, 127 S. Ct. at 1734, 82
USPQ2d at 1391 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”). The necessary determinations include: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. Id. “Against this background the obviousness
or nonobviousness of the subject matter is determined. Such secondary
considerations as commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the circumstances surrounding the
origin of the subject matter sought to be patented.” Id. (quoting Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966)) (internal quotations
omitted).
A. Rejection of claims 1-5 and 7-11 under 35 U.S.C. § 103(a) as
unpatentable over the Manual in view of Gormley.
Appellant argues the patentability of claims 1-5 and 7-11 on the basis that
the Manual does not disclose indirect selection of control parameters by
algorithmic processing of values of a plurality of bit positions of the version
coding.
Contrary to the Examiner’s assertions, the Manual discloses only direct
selection. The table on 1-32 of the Manual shows version codes such as number of
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engine cylinders, but does not teach algorithmically processing the plurality of bit
positions in the version coding to select a control parameter (Finding of Fact 6).
The Examiner misreads Gormley, which he relies on to provide the missing
limitation. Gormley teaches storing a variety of preferences for a plurality of
operators and configuring the operating characteristics of the vehicle in response to
the identified operator and his or her desires and requirements. (Finding of Fact
7). This addresses adjustment of the performance of a single vehicle version to suit
multiple operators. It does not disclose indirect selection of a control parameter by
algorithmic processing of values of a plurality of bit positions of the version
coding. Because the combination of references lacks the limitation of selection of
control parameters by algorithmic processing of values of a plurality of bit
positions of the version coding which is present in all of the claims, and because
the Examiner provides no explanation why such a limitation would have been
obvious to one of ordinary skill in the art, the Examiner has failed to establish a
prima facie case of obviousness. We therefore reverse the obviousness rejection of
claims 1-5 and 7-11.
B. Rejection of claims 6 and 12 under 35 U.S.C. § 103(a) as unpatentable
over the Manual in view of Gormley, and further in view of Becker.

Claims 6 and 12 depend ultimately from claims 1 and 7, respectively, and
contain each of their respective limitations. As discussed above the combination of
the Manual with Gormley fails to disclose selection of control parameters by
algorithmic processing of values of a plurality of bit positions of the version coding
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which is present in both claims 6 and 12. Becker discloses an alternator regulator,
but does not teach the missing limitation (Finding of Fact 8). The rejection of
claims 6 and 12 thus is improper because none of the cited references teach the
limitation of selection of control parameters by algorithmic processing of values of
a plurality of bit positions of the version coding, and the Examiner provides no
explanation why such a limitation would have been obvious to one of ordinary skill
in the art. Accordingly, we reverse the obviousness rejection of claims 6 and 12.

CONCLUSIONS
We conclude that Appellant has shown that the Examiner erred in rejecting
claim 1-12.

DECISION
The decision of the Examiner to reject claims 1-12 is reversed.

REVERSED

APJ Initials:
DBW
LEH
JDB

JRG

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