Ex parte GURNE et al. - Page 3




          Appeal No. 1997-2049                                                        
          Application 08/431,130                                                      


          respective positions expressed by appellants and the examiner,              
          it is our determination that the standing  103 rejection of                
          claims 3-19 should not be sustained.  Our reasons follow.                   


               According to appellants (specification, pages 1-2), it is              
          conventional in the automotive service industry to employ an                
          auxiliary diagnostic tool known as a scan tool, typically hand              
          held, to interface with the on-board controller of a vehicle                
          to aid in diagnosing problems.  An alleged problem with known               
          scan tools is their inability to accommodate a wide variety of              
          automobile models without requiring substantial hardware and                
          software modification.  Appellants’ solution to this alleged                
          problem is to provide an off-board master controller “to                    
          interface to the scan tool and provide[] sophisticated                      
          updating and diagnostic capabilities not feasible to include                
          in the scan tool itself” (specification, page 3).  This                     
          solution is reflected in independent claim 3 by claim language              
          calling for a service tool comprising (1) an off-board master               
          controller having a processor and memory means, and (2) a hand              
          held tool having (a) memory and processing means, (b) a first               


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