Ex Parte West et al

Patent Trial and Appeal Board

Jan 12, 2017

12240259 (P.T.A.B. Jan. 12, 2017)

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.
12/240,259 09/29/2008 Stephen T. West P003019-PTH-RRM 5008
74175 7590
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
SMITH, ISAAC G
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
01/17/2017 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):
gm-inbox@hdp.com
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN T. WEST,
WEI D. WANG, and
HANNE BUUR
Appeal 2015-002362
Application 12/240,2591
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 5, 6, 8—15, 19, 20, and 22—28. App. Br. 5. Claims 2—
4, 7, 16—18, and 21 have been canceled. App. Br. 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
1 According to Appellants, GM Global Technology Operations LLC, is the
real party in interest. Appeal Br. 3.
Appeal 2015-002362
Application 12/240,259
The disclosed subject matter “relates to hybrid vehicles, and more
particularly to processor security diagnostics for hybrid vehicles.” Spec. 12.
Claims 1,6, 15, and 20 are independent claims. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A diagnostic system for a hybrid vehicle, comprising:
a processor module that outputs a first seed value; and
a motor control module that controls torque output by an
electric motor of said hybrid vehicle and that outputs a key
value based on said first seed value,
wherein said processor module sets a second seed value
equal to said first seed value when said key value is one of
greater than and less than an expected value and that outputs
said second seed value to said motor control module, and
wherein said motor control module selectively diagnoses a
fault in said processor module when said second seed value is
equal to said first seed value.
REFERENCES RELIED ON BY THE EXAMINER
Hashimoto US 7,107,488 B2 Sept. 12, 2006
Naik US 8,099,179 B2 Jan. 17,2012
THE REJECTIONS ON APPEAL
Claims 1, 5, 8—10, 14, 15, 19, 22—24, and 28 are rejected under 35
U.S.C. § 103(a) as unpatentable over Naik and Hashimoto.
Claims 6, 11—13, 20, and 25—27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Naik.
ANALYSIS
The rejection of claims 1, 5, 8—10, 14, 15, 19, 22—24, and 28
as unpatentable over Naik and Hashimoto
Appellants argue claims 1, 5, 8—10, 14, 15, 19, 22—24, and 28
together. App. Br. 11—17. We select claim 1 for review with claims 5, 8—
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Application 12/240,259
10, 14, 15, 19, 22—24, and 28 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner primarily relies on the teachings of Naik but the
Examiner also acknowledges that which Naik “does not explicitly teach.”
Final Act. 4—6. To fill this gap, the Examiner relies on Hashimoto for
“selectively diagnosing a fault” (i.e., for teaching self-monitoring circuits).
Final Act. 6. However, the Examiner further acknowledges that Hashimoto
does not teach “an intentionally faulty output being an output which is equal
to a previous output” in accordance with claim l.2 3Final Act. 6; see also
Ans. 2. On this point, the Examiner finds that “it is well known in the art to
identify the receiving of duplicate data, such as data packets, as a fault or
error.” Final Act. 7; see also Ans. 2, 3. The Examiner thus concludes that it
would have been obvious to “set an intentionally faulty or incorrect ‘seed’
to a duplicate of a previous ‘seed.’” Final Act. 7; see also Ans. 4. The
Examiner also concludes that it would have been obvious to modify the cited
teachings “when performing a self-monitoring or cross-monitoring
between two circuits” “as taught by Hashimoto” where the faulty output
signal “can be whatever would be considered an incorrect response
specific to that circuit...in order to ‘monitor in reverse the monitoring
operation of the monitoring control circuit.’” Final Act. 7 (referencing
Hashimoto Abstract); see also Ans. 4—6.
Appellants initially contend, “[t]he Examiner’s paraphrasing of claim
1 ignores the portion of claim 1 of said motor control module selectively
2 The limitation in question recites that the fault signal is when the two
outputs are equal, i.e., “wherein said motor control module selectively
diagnoses a fault in said processor module when said second seed value is
equal to said first seed value. ” Emphasis added.
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Application 12/240,259
diagnoses a fault in said processor module when said second seed value is
equal to said first seed value.” App. Br. 13—14; see also Reply Br. 2—3.
Appellants contend that Hashimoto does not teach this (i.e., “is silent,” “is
also silent”) and Appellants particularly focus on the limitation “when said
second seed value is equal to said first seed value.” App. Br. 14—15.
However, the Examiner did not rely on Hashimoto for disclosing the fault
signal being the equivalent of a previous signal. Instead, the Examiner
found that “the faulty output can be whatever would be considered an
incorrect response specific to that circuit” and that “it is well known in the
art to identify the receiving of duplicate data, such as data packets, as a fault
or error” signal. Final Act. 7; see also Ans. 2, 3. In short, Appellants do not
indicate how the Examiner erred in finding that a fault signal can be
“whatever” may be desired; nor do Appellants explain how the Examiner
erred in finding that it is known that receiving duplicate data is indicative of
a “fault or error.”
Appellants appear to understand this position taken by the Examiner
that the specific signal employed (i.e. a duplicative signal) is not taught by
Hashimoto. See App. Br. 15; Reply Br. 2. Nevertheless, Appellants contend
that the Examiner’s allegation that it is known to identify receipt of duplicate
data as a fault or error “is not supported by the cited references.” App. Br.
15; see also Reply Br. 2—3. As indicated supra, the Examiner did not rely
on the “cited references” for this disclosure. Instead, the Examiner stated
that use of an equivalent signal as indicating a fault condition “is well known
in the art.” Final Act. 7; see also Ans. 2—3. Accordingly, and consistent
with the above, Appellants do not explain how the Examiner erred in finding
that it is known that receipt of duplicate data is indicative of a fault or error.
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Application 12/240,259
Appellants further contend that “the Examiner has failed to consider
the claims as a whole” because the Examiner ignored “the actual limitations
of claim 1” by addressing a paraphrase of what the Examiner found to be
“the critical aspect of the invention.” Reply Br. 3 (referencing Ans. 4); see
also App. Br. 13 (referencing Final Act. 5—6). However, Appellants do not
indicate how the Examiner’s paraphrasing of claim 1 is wrong or incorrect;
only that Appellants do “not support or in any way accept the Examiner’s
paraphrasing of claimed subject matter.” App. Br. 13. Without explaining
why the Examiner’s interpretation is incorrect, and without identifying that
portion of the claim language which might have been overlooked by the
Examiner (i.e., “as a whole”), we are not apprised as to why the Examiner’s
paraphrasing is such that reversal of the Examiner’s rejection is warranted.
Appellants also contend “that sending data in a predetermined
sequence comes only from the present application” and that the Examiner
relied on “hindsight to reject the claims.” Reply Br. 3^4. However, the
Examiner has specifically identified Hashimoto as teaching that it is known
“to synchronize two devices to a predetermined sequence of data exchange.”
Final Act. 7; see also Ans. 3. This finding is supported by Hashimoto’s
disclosure regarding “correct answer information to be used by the error
discrimination means 45.” Hashimoto 6:19—24. In other words, if a correct
answer is received, one action occurs, but if an incorrect answer is received,
than another action occurs. See Hashimoto 6:31—36; see also, e.g., 2:32—42;
8:38—52; 16:16—21; 17:54—63; and 18:2-4; and Ans. 3^4. Thus, Appellants’
contention that sending data in a predetermined sequence “comes only from
the present application” is not persuasive in light of the above teachings in
Hashimoto.
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Application 12/240,259
Further, Appellants appear to argue that Hashimoto’s disclosure of a
microprocessor that receives “an inquiry packet to monitor in reverse the
monitoring operation” fails to disclose circuit self-monitoring, or, more
precisely the limitation of “selectively diagnoses a fault in said processor
module.” App. Br. 15—16. We disagree since Hashimoto clearly discloses
comparing “response content from the microprocessor 20a with correct
answer information to carry out an error determination.” Hashimoto
Abstract; see also Final Act. 6 (referencing Hashimoto 2:64 to 3:3, 6:19-46,
16:8-28).
Appellants’ contend that Hashimoto “monitors the period between
inquiry packets” (App. Br. 16) but does not explain how such monitoring is
not a teaching of fault detection even if Hashimoto employs a different fault
signal. Appellants further contend that “the Examiner has not provided the
necessary reasoning and rational underpinning to support an obviousness
rejection.” App. Br. 16. More precisely, Appellants contend that “the
Examiner merely labeled numerous limitations of claim 1 as being obvious
without providing the necessary reasoning to support an obviousness
rejection.” App. Br. 16.
Our reviewing court has provided guidance that during prosecution,
the Patent Office bears the initial burden of establishing a prima facie case of
obviousness. See In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). “[A]ll that is required
of the office to meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132.” In re Jung, 637 F.3d 1356, 1363 (Fed.
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Application 12/240,259
Cir. 2011). Afterwards, “the burden of coming forward with evidence or
argument shifts to the applicant” to counter the Examiner’s rejection once
the Examiner presents a prima facie case of unpatentability. Oetiker, 977
F.2d at 1445 (citing In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)).
In the matter before us, the Examiner has set forth the statutory basis
of the rejection and has identified that which is relied upon in concluding
that claim 1 is obvious. Final Act. 4—7; Ans. 2—6. Appellants do not argue
that the rejection was not sufficiently articulate or informative, only that the
Examiner failed to provide “the necessary reasoning to support an
obviousness rejection.” App. Br. 16. We disagree with Appellants in view
of the reasons provided by the Examiner supra. On appeal, Appellants must
point out the errors in the Examiner’s rejection. 37 C.F.R. § 41.37(c)(iv).
Appellants’ simple assertion that the Examiner failed to provide the
necessary reasoning, without more, fails to identity Examiner error.
Accordingly, based on the record presented and in view of Appellants’
statement that independent “[cjlaim 15 includes limitations similar to those
of claim 1” (App. Br. 16—17), we are not persuaded to reverse the
Examiner’s rejection of claims 1, 5, 8—10, 14, 15, 19, 22—24, and 28.
The rejection of claims 6, 11—13, 20, and 25—27
as unpatentable overNaik
Appellants argue claims 6, 11—13, 20, and 25—27 together. App. Br.
17—20. We select independent claim 6 for review with claims 11—13, 20,
and 25—27 standing or falling together.
Appellants contend the Examiner erred in finding that Naik teaches
the claim 6 limitation of a motor control module “that outputs a key value
after receiving said first seed value.” App. Br. 18—19; Reply Br. 4—5. The
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Application 12/240,259
Examiner explains, “the claimed ‘key value’ is equivalent to the response of
the circuit to a stimulus of Naik.” Ans. 8. In other words, “the ‘module’
then sends a ‘key’ (response) based on the ‘seed.’” Final Act. 16. However,
even after acknowledging the Examiner’s position that “the claimed ‘key
value’ is equivalent to the response of the circuit to a stimulus,” Appellants
disregard this “response” characterization and instead interpret the Examiner
as stating that “the key value of claim 6 is equivalent to Naik’s stimulus.”
Reply Br. 5. As indicated above, in both the Final Office Action and in the
Examiner’s Answer, the Examiner characterized Naik’s “key value” as
being a response to a stimulus, not the stimulus itself.3 Thus, Appellants’
arguments premised on this incorrect interpretation of the Examiner’s
rejection are not persuasive the Examiner erred in finding that Naik “outputs
a key value after receiving said first seed value.” Reply Br. 5. In short,
we agree with the Examiner that “[t]he Appellant has failed to rebut
these aspects of the rejection.” Ans. 8.
Appellants also contend, “Naik is silent as to the component (that
generates the fault signal).” Reply Br. 5. On this point, the Examiner
finds that Naik teaches “dual-redundant controllers, each consisting of
a controller and monitor circuit, which perform cross-monitoring and
self-monitoring through built-in tests.” Final Act. 15. This finding by
the Examiner is consistent with Naik’s disclosure of “[djual-redundant
controllers are characterized by monitors effecting cross-monitoring
and self-monitoring” and that “built-in system tests are performed.”
Naik 2:23—27; see also 2:48—54.
3 This is akin to getting the cart before the horse.
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Application 12/240,259
In summary, and based on the record presented, we are not
persuaded the Examiner’s rejection of claims 6, 11-13, 20, and 25-27 as
being obvious in view of Naik warrants reversal.
DECISION
The Examiner’s rejections of claims 1, 5, 6, 8—15, 19, 20, and 22—28
are 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)(l)(iv).
AFFIRMED
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