Ex Parte Tanaka

Board of Patent Appeals and Interferences

Aug 23, 2010

10695817 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte SHINOBU TANAKA
_____________

Appeal 2009-005644
Application 10/695,817
Technology Center 2800
______________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and JOSEPH F.
RUGGIERO, Administrative Patent Judges.

NAPPI, 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 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 2009-005644
Application 10/695,817

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 13 and 15 through 17.
We affirm-in-part and enter a new rejection.

INVENTION
The invention is directed to an apparatus for preventing an unqualified
person from driving a vehicle. See page 2 of Appellant’s Specification.
Claim 1 is reproduced below:
1. An apparatus for preventing an unqualified person from
driving a vehicle, comprising:
a marker detector provided in the vehicle to detect a qualified
person marker held by a driver having a driving qualification
appropriate for driving the vehicle only when the driver holds the
qualified person marker opposite the marker detector; and
a control unit for continuously monitoring an output from the
marker detector and taking a predetermined measure to ensure safety
when a state occurs in which the qualified person marker is not
detected,
wherein the predetermined measure is released when the marker
detector again detects the qualified person marker.

REFERENCES
Kito JP 10-82223 Mar. 31, 1998
Thorpe GB 2395331 A May 19, 2004

2

Appeal 2009-005644
Application 10/695,817

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 6, 8 through 13, and 15
through 17 under 35 U.S.C. § 102(b) as being anticipated by Kito. Answer
3-7.2
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Kito in view of Thorpe. Answer 7-8.

ISSUES
Rejection of claims 1 through 6, 8 through 13, and 15 through 17
under 35 U.S.C. § 102(b)
Appellant argues on pages 9 through 12 of the Appeal Brief3 that the
Examiner’s rejection under 35 U.S.C. § 102(b) based upon Kito is in error.
Appellant’s arguments present us with the following issue: did the
Examiner err in finding that Kito teaches that the predetermined measure is
released when the marker detector again detects the qualified person marker
as recited in claims 1 and 8?
Rejection of claim 7 under 35 U.S.C. § 103(a)
Appellant argues on page 13 of the Appeal Brief that the Examiner’s
rejection under 35 U.S.C. § 103(a) based upon Kito in view of Thorpe is in
error.

2 Throughout this opinion we refer to the Examiner’s Answer dated August
13, 2008.
3 Throughout the opinion, we refer to the Appeal Brief filed May 15, 2008,
and Reply Brief filed October 10, 2008.
3

Appeal 2009-005644
Application 10/695,817

Appellant’s arguments present us with the following issue: do the
additional teachings of Thorpe compensate for the deficiencies in the
rejection of claim 1?

FINDINGS OF FACT
1. Kito teaches a vehicle theft prevention system where a user has a
transponder within their shoe which is read by a receiver in the
vehicle. Paras 0017-0018 of translation.
2. In Kito’s system after the ignition system is turned on, the engine
has exceeded 2K rpm, and a predetermined time has elapsed, the
transponder is read. If a valid transponder is not identified, the
system immobilizes the vehicle. Fig. 4, paras. 0024-0029 of
translation.
3. Kito is silent as to how the vehicle can be started after the system
has immobilized the vehicle.
4. Thorpe teaches a control system for a vehicle where users of the
vehicle carry tags read by a transceiver in the vehicle. Abstract.
5. Thorpe’s system also includes a security system which immobilizes
the vehicle via an ignition lock. The lock is automatically activated
when the driver is away from the driver compartment and disabled
upon the driver’s return. Pg. 12, ll. 16-17.

4

Appeal 2009-005644
Application 10/695,817

ANALYSIS
Rejection of claims 1 through 6, 8 through 13, and 15 through 17
under 35 U.S.C. § 102(b)
At the outset we note that we will not sustain the Examiner’s rejection
of claims 1 through 6, 8 through 13, and 15 through 17 under 35 U.S.C.
§ 102(b) because as discussed infra we find that the Examiner’s reasoning
supports an obviousness rejection and not an anticipation rejection.
In rejecting claim 1 the Examiner finds that Kita anticipates every
limitation in the claim. Answer 3-4. With respect to the limitation directed
to the predetermined measure being released when the marker detector again
detects the qualified person marker, the Examiner states “one of ordinary
would have envisioned providing access to the vehicle when the authorized
person holding the transponder 11 gets in the car after it has stopped, to
operate the car once it has been recovered from a theft attempt, for
example.” Answer 4. Additionally, the Examiner interprets claim as to “not
require that the predetermined measure be released at the time of the marker
detector again detecting the qualified person marker.” Answer 9.
We disagree with the Examiner’s claim interpretation. As argued by
Appellant on page 6 of the Reply Brief, the limitation “is released when …”
recites a contemporaneous action, thus the releasing occurs when the
detector detects a person. Thus, we consider the Examiner’s interpretation
of claim 1 to be unreasonable.
However, we agree with the Examiner that a person of ordinary skill
would have envisioned that Kato’s device can be designed to release the
immobilizer (the claimed predetermined measure) when the authorized
transponder is again sensed (the claimed marker detector detecting the
5

Appeal 2009-005644
Application 10/695,817

qualified person marker). Note that the disclosure of Thorpe supports this
finding. Fact 5. However, this rationale does not support an anticipation
rejection but rather an obviousness rejection. Accordingly, we will not
sustain the Examiner’s rejection under 35 U.S.C. § 102(b), but enter a new
rejection of claims 1 through 6, 8 through 13, and 15 through 17 under 35
U.S.C. § 103(a) applying the Examiner’s rationale and the teachings of
Thorpe. Specifically, we adopt the Examiner’s findings regarding Kito’s
teachings of a marker detector and control unit. Facts 1-3. We find that
Thorpe teaches a security system where the vehicle is disabled (ignition
locked) when the authorized user with a transponder is not sensed in the
vehicle and the vehicle is enabled upon return of the transponder. Fact 5.
We adopt the Examiner’s conclusion that the skilled artisan would have
recognized that Kito’s system can be modified to allow a user to disable the
immobilizer with the authorized transponder when the user returns it to the
vehicle, for the purpose of allowing the user to operate the vehicle after it is
recovered.

Rejection of claim 7 under 35 U.S.C. § 103(a)
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 7. Appellant argues, on page 13 of the Brief,
that Thorpe does not make up for the deficiencies noted in the rejection of
claim 1. As discussed above with respect to claim 1, we concur that the
Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) is in error, but we
have entered a new rejection under 35 U.S.C. § 103(a) based upon the
teachings of Kato and Thorpe. Thus, as discussed above, we find that the
6

Appeal 2009-005644
Application 10/695,817

additional teachings of Thorpe make up for the noted deficiency in the
rejection of claim 1 and we sustain the Examiner’s rejection of claim 7.
SUMMARY
We will not sustain the Examiner’s rejection of claims 1 through 6, 8
through 13, and 15 through 17 under 35 U.S.C. § 102(b). However, we
sustain the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a). We
enter a new rejection against claims 1 through 6, 8 through 13 and 15
through 17 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1 through 13 and 15
through 17 is affirmed-in-part.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection…
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .
(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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)(v).
7

Appeal 2009-005644
Application 10/695,817

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD

SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
8