Ex Parte Suess et al

Patent Trial and Appeal Board

Dec 9, 2016

11924071 (P.T.A.B. Dec. 9, 2016)

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.
11/924,071 10/25/2007 Christian SUESS 080437.59522US 1619
23911 7590 12/13/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN SUESS and ASTRID SCHROEDER
Appeal 2015-0011461
Application 11/924,0712
Technology Center 3600
Before ANTON W. FETTING, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1—5, 9—15, and 18—23. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We REVERSE.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
May 23, 2014) and Reply Brief (“Reply Br.,” filed Oct. 28, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed Feb. 24, 2014) and
Answer (“Ans.,” mailed Sept. 9, 2014).
2 According to Appellants, the real party in interest is Bayerische Motoren
Werke Aktiengesellschaft (Appeal Br. 1).
Appeal 2015-001146
Application 11/924,071
Introduction
Appellants’ application relates to “a configuration system for a
vehicle having at least a functional unit, a control unit pertaining to the
functional unit, and a parametrizing unit which is provided in the vehicle and
is operatively connected with the control unit” (Spec. 12).
Claims 1,10, and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A configuration system of a vehicle, comprising:
a plurality of functional units which are each
operable in a plurality of different configurations;
a plurality of control units, each configured as one
or more processors, to control corresponding ones of the
plurality of functional units according to any one of their
respective plurality of different configurations;
a parametrizing unit, configured as one or more
processors, arranged in the vehicle and operatively
coupled with the plurality of control units;
wherein each of the plurality of control units further
comprises a storage device arranged therein which is
readable by the parametrizing unit and contains
configuration information for a corresponding one of the
plurality of control units in which said storage device is
arranged, the configuration information comprising sets
of parameters which correspond to parametrizing and/or
initializing possibilities of the corresponding control unit
in which said storage device is arranged;
wherein the parametrizing unit is further configured
to utilize vehicle context information and evaluation
rules, the evaluation rules being utilized by the
parametrizing unit to determine configuration data for
configuring the corresponding control unit from the
vehicle context information and the configuration
information for the control unit, whereby the
parametrizing unit configures the plurality of control
units, in accordance with the configuration data, to
2
Appeal 2015-001146
Application 11/924,071
operate the corresponding plurality of functional units in
a particular one of the plurality of different
configurations in which each of the respective functional
units is capable of operating.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 10-15, 18—20, and 22 stand rejected under 35
U.S.C. § 101 as claiming an invention directed to non-
statutory subject matter.3
II. Claims 1—3, 5, 9—15 and 18—23 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Dabbish (US
2004/0002799 Al, Jan. 1, 2004).
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dabbish and Official Notice.
ANALYSIS
Rejection I (Patentable Subject Matter)
Claims 10—15, 18—20, and 22
The Examiner reasons, inter alia, that:
the claims are directed towards configuring control units which
is considered to be an abstract idea inasmuch as configuring
control units are activities that are considered both fundamental
economic or business practices. . . . The fact that the
parametrizing unit is configured as one or more processors, as
3 This rejection was set forth in the Answer as a new ground pursuant to the
procedures for new grounds
3
Appeal 2015-001146
Application 11/924,071
stated by the preamble, does not indicate that the claims are
anything more than an abstract idea. . . . This does not involve
anything more than a generic processor in the form of a generic
computing device.
Ans. 3.
Appellants argue, inter alia, that:
the claims do not recite any of the particularly-identified
examples of abstract ideas set forth in the Preliminary
Examination Instructions, but rather recites a number of
detailed operations performed by a “parametrizing unit” of a
motor vehicle, which is expressly “configured as one or more
processors.”
Reply Br. 4.
We are persuaded by Appellants’ argument inasmuch as we agree that
the Examiner has not articulated an abstract idea. In any event, we disagree
with the Examiner that configuring control units are a fundamental
economic practice or business practice, and conclude that the Examiner has
not sufficiently explained why “configuring” is necessarily an abstract idea.
Nor does the use of a general purposes computer necessarily indicate that
there is an abstract idea under Alice Corp., Pty. Ltd. v CIS Bank Inti, 134
S.Ct. 2347, 2355 (2014). As such, we do not sustain the Examiner’s
rejection under § 101 of claims 10-15, 18—20, and 22.
Rejection II (Anticipation)
Independent claim 1
We are persuaded by Appellants’ argument that Dabbish fails to
disclose “the parametrizing unit configures the plurality of control units, in
accordance with the configuration data, to operate the corresponding
plurality of functional units in a particular one of the plurality of different
4
Appeal 2015-001146
Application 11/924,071
configurations in which each of the respective functional units is capable of
operating,” as recited in independent claim 1 (Appeal Br. 7—12). Appellants
argue that Dabbish fails to teach or suggest the recited “parametrizing unit”
because the claims require a parametrizing unit that configures a control unit
to operate (Appeal Br. 11—12). Appellants assert that neither authenticating
a component, authorizing a component, nor maintaining a configuration
history for a component would be understood by one of ordinary skill in the
art as affirmatively configuring a control unit (Appeal Br. 12).
The Examiner relies on the disclosure in Dabbish (|| 37—38, 48—58) in
which a component may be installed based on the presence of another unit
(Final Act. 3^4; Ans. 6—7). However, we agree with Appellants inasmuch as
this portion of Dabbish fails to disclose “a plurality of different
configurations” of a functional unit for operation. To the extent this portion
of Dabbish is disclosing configurations of a functional unit, the
configurations are on/off or installed/uninstalled. However, the
configuration of being installed or uninstalled is not a configuration of
“operating,” as recited by independent claim 1. As such, this portion of
Dabbish does not disclose a “plurality” of configurations of “operating,” as
recited.
Accordingly, we do not sustain the Examiner’s rejection under § 102
of independent claim 1 and its dependent claims. For similar reasons, we do
not sustain the Examiner’s rejection under § 102 of independent claims 10
and 23 and their dependent claims.
5
Appeal 2015-001146
Application 11/924,071
Rejection III (Obviousness)
Dependent claim 4
Claim 4 depends from claim 1, and stands rejected under § 103 as
unpatentable over Dabbish and the Official Notice that generic formats may
be used to store data (Final Act. 17—18). Because the Official Notice does
not remedy the aforementioned deficiency in the Examiner’s rejection of
independent claim 1 under § 102 over Dabbish, we do not sustain the
Examiner’s rejection of claim 4 under § 103, for similar reasons.
DECISION
The Examiner’s decision to reject claims 1—5, 9—15, and 18—23 is
reversed.
REVERSED
6