FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Apr 1, 2021

2019006037 (P.T.A.B. Apr. 1, 2021)

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.
15/233,708 08/10/2016 Jason Michael MILLER 83679948 8641
28395 7590 04/01/2021
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
RAHIM, MONJUR
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON MICHAEL MILLER, XIN YE, and
ALDI CAUSHI
Appeal 2019-006037
Application 15/233,708
Technology Center 2400
Before JAMES R. HUGHES, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–21 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1–2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
2 We refer to Appellant’s Specification (“Spec.”), filed Aug. 10, 2016;
Appeal Brief (“Appeal Br.”), filed Feb. 11, 2019; and Reply Brief (“Reply
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally “relates to software
updates for a vehicle, and in particular to performing software authentication
before performing software updates.” Spec. ¶ 1. Appellant’s claims recite
apparatuses for flashing software of an Electronic Control Unit (ECU),
vehicle systems, and methods for programming an ECU. The method
initiates a programming session of an ECU using a service tool connected
and communicating with the ECU via a diagnostic port connection to a
vehicle bus. The service tool authenticates a software update, residing in a
software repository, for updating (i.e., flashing) the ECU using an
authentication key received by the service tool from the ECU. When the
authentication is successful, the service tool transfers the software update to
the ECU over the vehicle bus. See Spec. ¶¶ 3–11; Abstract. Claim 1
(directed to a method), 11 (directed to a system), and 18(directed to an
apparatus) are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
initiating a programming session of a vehicle electronic
control unit (ECU) by a service tool in communication with the
ECU over a diagnostic port connection to a vehicle bus;
authenticating, by the service tool, a software update for
the ECU using an authentication key received to the service tool
from the ECU; and

Br.”), filed Aug. 12, 2019. We also refer to the Examiner’s Final Office
Action (“Final Act.”), mailed Sept. 10, 2018; and Answer (“Ans.”) mailed
June 11, 2019.
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Application 15/233,708

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responsive to successful authentication, sending the
software update from the service tool over the vehicle bus to the
ECU.
Appeal Br. A-1 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Peirce US 2012/0295592 A1 Nov. 22, 2012
Alrabady et al.
(“Alrabady”)
US 2014/0075517 A1 Mar. 13, 2014
Jung et al. (“Jung”) US 2015/0180840 A1 June 25, 2015

REJECTIONS3
1. The Examiner rejects claims 1–8 and 18–21 under 35 U.S.C.
§ 103 as being unpatentable over Alrabady and Jung. See Final Act. 3–5.
2. The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103 as
being unpatentable over Alrabady, Jung, and Peirce.4 See Final Act. 7.
3. The Examiner rejects claims 11–17 under 35 U.S.C. § 103 as
being unpatentable over Peirce and Alrabady. See Final Act. 5–7.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date after the AIA’s effective (March 16, 2013), this
decision refers to 35 U.S.C. § 103.
4 The Examiner mistakenly includes claims 9 and 10 in the rejection of
claims 11–17, which omits Jung. Claims 9 and 10 depend from claim 1, the
rejection of which includes Jung. The Examiner references Jung with
respect to claim 9 (see Final Act. 7). We revise the statement of the
rejection to include Jung for clarity and consistency of the record.
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ANALYSIS
Obviousness Rejection of Claims 1–8 and 18–21
The Examiner rejects independent claim 1 (as well as independent
claim 18, and dependent claims 2–8 and 19–21) as being obvious over
Alrabady and Jung. See Final Act. 3–5; Ans. 4–5. Appellant contends that
Alrabady and Jung do not teach the disputed limitations of claim 1. See
Appeal Br. 6–8; Reply Br. 1–4. Specifically, Appellant contends, inter alia,
that Alrabady
describes an “information ticket” including requested
information from the controller being sent to a secure server,
where the server then returns a “security code” that is verified by
the controller. In contrast, claim 1 recites “authenticating, by the
service tool, a software update for the ECU using an
authentication key received to the service tool from the ECU.”
No “authentication key” is “received to the service tool from the
ECU” in Alrabady.
(Appeal Br. 7). More specifically, Appellant contends Alrabady’s
“programming tool” receives the “controller information,” to create the
“controller information ticket,” that is “validated and approved by [the]
server,” which sends an “authorization ticket” to the controller through the
programming tool. The controller looks “at the authorization ticket [] and
determines whether it has the appropriate signature or code and ID
information that is specifically for that controller.” Reply Br. 4; see Reply
Br. 2–4. In summary, Appellant contends “the programming tool in
Alrabady does not authenticate a software update for an ECU, nor does it do
so using an authentication key received to the tool from the ECU.” Reply
Br. 4.
We agree with Appellant that the Examiner-cited portions of Alrabady
(in combination with Jung) do not teach or suggest a service tool
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“authenticating . . . a software update for the ECU using an authentication
key received to the service tool from the ECU” as recited in claim 1. Appeal
Br. A-1 (Claims App.); Appeal Br. 6–7; Reply Br. 2–4. The Examiner relies
on Alabady to teach an “update device” and “authenticating a software
update” for the ECU “using an authentication key received from the ECU.”
Final Act. 3 (citing Alrabady ¶ 9). In the Answer, the Examiner explains
that “[a]uthentication information [is] sent by the ‘Vehicle controller/ECU’
to the installer/Programming Tool in order to verify the ECU.” Ans. 4; see
Ans. 4–5 (citing Alrabady ¶¶ 23, 29, 32). The Examiner appears to rely on
Alrabady’s secure server as the “update device.” The cited portions of
Alrabady, however, disclose a programming tool that acts as an intermediary
between the secure server and the controller (ECU). The controller
information ticket sent to the server through the programming tool is
validated by the server, but it is the controller/ECU information (e.g., the
ECU identification) that is validated, not the software update. See Alrabady
29, 32. A reasonable interpretation of Alrabady includes a programming
tool that passes information between the server and ECU or stores an already
authenticated software update that is passed to the ECU. See Alrabady ¶¶ 9,
23, 29, 32. Alrabady’s programming tool does not authenticate a software
update for the ECU. Id.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Alrabady and Jung
renders obvious Appellant’s claim 1. Independent claim 18 includes
limitations of commensurate scope. Claims 2–8 and 19–21 depend from and
stand with claims 1 and 18, respectively. Thus, we do not sustain the
Examiner’s obviousness rejection of claims 1–8 and 18–21.
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Obviousness Rejection of Claims 9–17
The Examiner rejects dependent claims 9 and 10 as being obvious
over Alrabady, Jung, and Peirce. See Final Act. 7. The Examiner rejects
claims 11–17 as being obvious over Peirce and Alrabady. See Final Act. 5–
7. In each rejection, the Examiner relies on Alrabady to teach a service tool
authenticating a vehicle controller (ECU or telematics control unit (“TCU”))
software update. As discussed with respect to claim 1 (supra), Alrabady
does not teach such authentication. The Examiner does not suggest, and we
do not find, that the additional cited reference (Peirce) cures the deficiencies
of Alrabady in combination with Jung (supra). Therefore, we do not sustain
the Examiner’s obviousness rejections of independent claim 11 and
dependent claims 9, 10, and 12–17 for the same reasons set forth for claim 1
(supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–21
under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s
rejections of claims 1–21.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 18–21 103 Alrabady, Jung 1–8, 18–21
9, 10 103 Alrabady, Jung, Peirce 9, 10
11–17 103 Peirce, Alrabady 11–17
Overall
Outcome
1–21

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Application 15/233,708

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REVERSED