Rolf Zoeller et al.

Patent Trials and Appeals Board

Nov 1, 2019

15452875 - (D) (P.T.A.B. Nov. 1, 2019)

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.
15/452,875 03/08/2017 Rolf Zoeller 815667 1775
95683 7590 11/01/2019
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
KAN, YURI
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROLF ZOELLER and RUEDIGER ROPPEL

Appeal 2019-002404
Application 15/452,875
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 16–18. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Dr. Ing. h.c.
F. Porsche Aktiengesellschaft.” Appeal Br. 1.
Appeal 2019-002404
Application 15/452,875

2
BACKGROUND
The Specification discloses that “[t]he present invention relates to a
method for implementing at least one function provided by an external
server in a control device of a vehicle.” Spec. ¶ 2.
CLAIMS
Claims 1, 9, and 10 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A method for implementing at least one target function in
at least one controller of a vehicle, the at least one target function
being provided by an external server, the method comprising:
transmitting the at least one target function in a first data
format from the external server via a wireless interface to a
management computer arranged in the vehicle;
converting, by the management computer, the at least one
target function in the first data format to a data format of the
vehicle;
accessing, by the management computer, a controller area
network (CAN) bus of the vehicle; and
flashing, by the management computer via the CAN bus,
the at least one controller of the vehicle so as to implement the at
least one target function in the at least one controller of the
vehicle,
wherein the flashing, by the management computer, the at
least one controller of the vehicle so as to implement the at least
one target function in the at least one controller of the vehicle
comprises altering control software of the vehicle, and
wherein the at least one controller of the vehicle is
configured to control the vehicle in accordance with the at least
one target function and to execute the control software that is
altered.
Appeal Br. 13.

Appeal 2019-002404
Application 15/452,875

3

REJECTIONS2
1. The Examiner rejects claims 1–7, 9, 10, 12, 13, 15, and 18 under
35 U.S.C. § 103 as unpatentable over Ishida3 in view of Matsuura.4
2. The Examiner rejects claims 8, 16, and 17 under 35 U.S.C. § 103 as
unpatentable over Ishida in view of Matsuura and Nishimoto.5
3. The Examiner rejects claims 11 and 14 under 35 U.S.C. § 103 as
unpatentable over Ishida in view of Matsuura and Kouda.6
DISCUSSION
With respect to the rejection over Ishida in view of Matsuura, we are
persuaded of reversible error by Appellant’s arguments regarding
independent claims 1, 9, and 10, as discussed below.
Claims 1, for example, recites the step of “flashing . . . so as to
implement” a target function in a vehicle controller, “wherein the flashing
. . . comprises altering control software of the vehicle” and the controller is
configured “to execute the control software that is altered.” Appeal Br. 13.
Independent claims 9 and 10 include a management computer that is
configured to execute a flashing step and a controller that is configured to
execute altered control software. Id. at 14–15. We are persuaded by
Appellant’s argument that the Examiner has not established that the art of

2 The Examiner has withdrawn the rejections under 35 U.S.C. § 112.
3 Ishida et al., US 8,874,303 B2, iss. Oct. 28, 2014.
4 Matsuura, US 6,025,776, iss. Feb. 15, 2000.
5 Nishimoto et al., US 9,120,452 B2, iss. Sept. 1, 2015.
6 Kouda et al., US 7,631,056 B2, iss. Dec. 8, 2009.
Appeal 2019-002404
Application 15/452,875

4
record teaches such functionality under the broadest reasonable
interpretation of the claims.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Appellant asserts that the Examiner has provided too broad an
interpretation of the claimed “flashing” step and the requirement that it
“comprises altering control software of the vehicle.” See Appeal Br. 8–10;
see also Reply Br. 3–4.
With respect to what is required by the “flashing” step of claim 1,
although the Specification does not provide a precise definition of the term
flashing, the Specification does provide an express definition of the term
“implement.” Specifically, the Specification discloses that “the term
‘implement’ is to be understood to be a process in which a function is
transferred to a respective control device and is deposited there executably.
In particular, ‘implement’ is to be understood to be a flashing process.”
Spec. ¶ 15. Given this definition, we find that one of ordinary skill in the art
would understand the claimed “flashing” step to require a process in which a
target function is transferred to a control device and deposited there
executably.
With respect to the phrase “altering control software,” the
Specification does not provide a precise definition. However, we agree with
Appellant that, in light of the Specification, it should not be interpreted “so
broad as to encompass the mere transmission of data” or “the execution of
Appeal 2019-002404
Application 15/452,875

5
preconfigured logic.” Reply Br. 4. Rather, the Specification indicates that
the broadest reasonable interpretation of this phrase requires that “the
functionality of the control software” is changed, as opposed to a mere
selection of what functionality to execute. Id. For example, the
Specification discloses that the invention seeks to solve problems wherein a
vehicle must be brought to a technician to receive updated programming.
Spec. ¶ 3. The Specification discloses that this problem may be solved by
transmitting functions to the vehicle wirelessly so as to provide a vehicle
with updated software versions without visiting a workshop. Id. at ¶¶ 10,
20. The Specification further discloses the invention relates to specifically
altering the configuration of preconfigured control devices. Id.at ¶ 21. In
light of this disclosure, we find that one of ordinary skill in the art would
understand the phrase “altering control software” requires that the software
is changed or rewritten to include new functionality.
In light of the above claim interpretation, we agree with Appellant that
the Examiner has not established that the art of record discloses a flashing
step that implements a target function by altering control software of a
vehicle, as claimed. In the rejection, the Examiner first indicates that Ishida
teaches a flashing step as claimed. See Final Act. 10–11. However, the
Examiner does not precisely explain what cited portion of Ishida teaches
such a step. Id. at 9–10. Further, the Examiner appears to indicate that
Ishida does not teach “flashing,” as required by claim 15. See id. at 20.
However, the Examiner clarifies in the Answer that the rejection does rely
on Ishida as teaching “flashing” as claimed. See Ans. 6. Here, the Examiner
indicates that Ishida teaches flashing in order to alter control software in the
Appeal 2019-002404
Application 15/452,875

6
form of “switching device 98 that is capable or configured to switch
difficulty level.” Id. (citing Ishida Figs. 5, 6; col. 7, l. 39–col. 8, l. 18).
However, we agree with Appellant that the claimed process, as
interpreted above, does not read on the process described by Ishida. The
cited portion of Ishida provides a description of a flow chart related to
controlling fuel-saving driving evaluations. Ishida col. 7, ll. 36–38. Ishida
discloses that selection of evaluation mode occurs, which is transmitted to an
in-vehicle unit 9. Id. at col. 7, ll. 39–50. Thereafter, Ishida teaches
evaluating certain driving parameters in relation to the selected evaluation
mode, after which an evaluation is provided to the user. Id. at col. 7, ll. 50–
67. We see no indication here or in any other cited portion of Ishida that
indicates that any flashing, as required by the claim, is occurring. For
example, we agree with Appellant that the flow chart and description cited
by the Examiner only discloses that an indication of a selected mode is
transmitted to a vehicle controller in order to provide an evaluation of a
driver based on the selected mode, after which an evaluation of driving takes
place by the evaluation system based on the mode selected. There is no
indication in this description that the functionality of the software is changed
to add new functionality as required by the flashing step in claim 1.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1. For the same reasons, we are persuaded of error in the rejection of
independent claims 9 and 10 as well as dependent claims 2–7, 12, 13, 15,
and 18. Regarding the other obviousness rejections, those rejections do not
provide any indication that the additional art cited, i.e., Nishimoto and
Kouda, would cure the deficiency in the rejection of the independent claims.
Thus, we are also persuaded of error with respect to the rejections of claims
Appeal 2019-002404
Application 15/452,875

7
8, 11, 14, 16, and 17. Accordingly, we do not sustain the rejections of
claims 1–14 and 16–18.
CONCLUSION
We REVERSE the rejections of claims 1–14 and 16–18.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–7, 9, 10,
12, 13, 15, 18
103 Ishida,
Matsuura
1–7, 9,
10, 12,
13, 15,
18
8, 16, 17 103 Ishida,
Matsuura,
Nishimoto
8, 16, 17
11, 14 103 Ishida,
Matsuura,
Kouda
11, 14
Overall
Outcome
1–14,
16–18

REVERSED