ALBORNOZ, Jose et al.

Patent Trials and Appeals Board

Aug 20, 2019

14674631 - (D) (P.T.A.B. Aug. 20, 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.
14/674,631 03/31/2015 Jose ALBORNOZ 1267.1101 2916
21171 7590 08/20/2019
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
MAHASE, PAMESHANAND
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOSE ALBORNOZ1
________________

Appeal 2018-002664
Application 14/674,631
Technology Center 2600
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Claims 1–14, which constitute all of the pending claims, stand
rejected as unpatentable under 35 U.S.C. § 103. Non-Final Action mailed
March 6, 2017 (“Non-Final Act”). Appellant appeals under 35 U.S.C.
§ 134(a) from this rejection. App. Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1–10 under 35 U.S.C. § 112(b).

1 Appellant lists Fujitsu Limited as the real party in interest. Corrected
Appeal Brief filed August 10, 2017 (“App. Br.”) 3.
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STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A vehicular safety system employing an adaptive
epidemic information dissemination protocol running on a
wireless ad-hoc network composed by neighboring vehicles and
roadside stations. The protocol is based on storage and re-
transmission of messages by vehicle onboard units; both storage
time and re-transmission period are adaptively adjusted to make
information spread through the network reasonably certain. An
on-board vehicle system monitors a speed and acceleration to
detect collisions or any other dangerous situations that might
compromise the safety; when such an event is detected a time-
stamped message identifies the vehicle and approximate location
and event type.
Abstract.
Independent claim 1, reproduced below with disputed language
emphasized, illustrates the appealed claims:
1. A vehicular safety system in which vehicles in a same
geographical area form nodes of a wireless ad-hoc network for
transmitting and re-transmitting messages, operating parameters
of the ad-hoc network being adaptively adjusted in accordance
with driving conditions of the vehicles; and
wherein the operating parameters being adjusted include a
retransmission interval at which to repeat transmission of the
same messages and a retransmission time after which to cease
retransmission, the retransmission interval and the
retransmission time being adaptively adjusted to ensure spread
of the messages through the network; and
the driving conditions of a vehicle include at least one of:
one or both of a time of day and a day of the week;
a type of road on which the vehicle is being driven;
and
whether the vehicle is parked.
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REJECTION
Claims 1–14 stand rejected under 35 U.S.C. § 103 as obvious over
Hill et al. (US 2010/0188265 A1; published July 29, 2010); McNew et al.
(US 2009/0081958 A1; published Mar. 26, 2009); and Bachrach
(US 2011/0038356 A1; published Feb. 17, 2011). Final Act. 2–14.
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

FINDINGS AND CONTENTIONS
The Examiner finds that Hill discloses most of the limitations of
independent claim 1, including disclosing vehicles in a geographical area
forming an ad-hoc network for transmitting and re-transmitting messages.
Non-Final Act. 3 (citing Hill ¶ 36; Fig. 1). According to the Examiner, Hill
also teaches that this ad-hoc network includes operating parameters that may
be adaptively adjusted in accordance with driving conditions of the vehicles
and that these driving conditions include at least one of (1) one or both of a
day of time and a day of the week; (2) a type of road condition; and
(3) whether the vehicle is parked. Id. (citing Hill ¶¶ 35, 40; Fig. 1).
The Examiner finds that Hill “fails to disclose [] the operating
parameters being adjusted include a retransmission interval at which to
repeat transmission of the messages and the operating parameters being
adjusted further include a retransmission time after which to cease
retransmission.” Id. at 4. The Examiner finds that McNew teaches these
limitations and concludes that motivation existed to combine McNew’s
teachings with Hill’s ad-hoc communication system. Id.
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The Examiner finds that while the combination of Hill and McNew
disclose the retransmission interval and time are adaptively adjusted, the
combination fails to teach that these adjustments are performed “to ensure
spread of the messages through the network.” Id. The Examiner finds that
Bachrach teaches retransmission intervals and times being adaptively
adjusted to ensure spread of the message through a network, and the
Examiner concludes that motivation existed to combine Bachrach’s
teachings with an ad-hoc communication system according to the
combination of Hill and McNew. Id. at 4–5.
In finding that McNew teaches adjusting the retransmission time after
which the vehicle ceases retransmission, the Examiner reasons, as follows:
McNew et al. teaches
. . . .
the operating parameters being adjusted further include a
retransmission time after which to cease retransmission
[a message rate being adjusted such that the messaging rate does
not pass a minimum value where in this case such a value can be
zero thereby preventing the system from sending any further
messages].
Id. at 4 (citing McNew ¶ 0026) (emphasis added).
Appellant asserts, inter alia, that paragraph 26 of McNew pertains to
McNew’s Figure 3 embodiment, which “shows a process flow for message
determination according to which a message rate may be increased or
decreased.” App. Br. 10. Appellant argues that McNew did not envision the
minimum allowed floor value of the transmission rate being set to zero. Id.
Appellant argues that McNew discloses that the purpose of providing a floor
transmission value is to prevent the transmission rate from falling below a
minimum rate, and it would make no sense to set the floor value at zero so as
to prevent the transmission rate from falling to a negative value. Id.
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ANALYSIS
McNew is directed to “[a] method and system for setting transmission
rate[s] of messages transmitted and received by a mobile unit.” McNew
Abstract. McNew explains the invention as follows:
The method and system include monitoring the speed of the
mobile unit; and adjusting the transmission rate based on the
speed of the mobile unit. Prevailing conditions may also be
determined and the transmission rate may be further adjusted
based on the prevailing conditions. The prevailing conditions
may be determined based on at least one of states of one or more
sensors local to the mobile unit and information provided from
an external source over a communication system.
Id.
The passage of McNew upon which the Examiner relies for rejecting
claim 1 reads as follows:
In block 303 the process then monitors the current safety
and channel characteristics. If the monitored safety factors are
reduced from the nominal or previous values (indicating a higher
potential for collision) and/or channel loading is reduced
(indicating opportunity for more frequent updates) (block 304),
the message transmission rate is provisionally increased in block
305. However, if the message transmission rate increase exceeds
a maximum predefined ceiling in block 306, the message rate is
set to the maximum allowed value, in block 307. If on the other
hand, safety factors increase (indicating less risk of collision)
and/or channel loading increases (indicating potential for a
communications bottleneck) (block 313), the message rate is
provisionally reduced in block 314. The decreased rate is
compared to a predefined floor value in block 315, and prevented
from falling below the minimum allowed value in block 316.
McNew ¶ 26.
Based on these facts, Appellant’s arguments are persuasive. The
relied upon passage of McNew discusses adjusting message transmission
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rates between upper and lower limits to take into account channel bandwidth
issues. Paragraph 26 says nothing about ceasing the retransmission of
messages. The Examiner’s interpretation that McNew’s floor transmission
rate could be zero appears to be a product of impermissible hindsight. That
is, the Examiner appears to have used Appellant’s claims as a roadmap to
make unfounded assumptions about McNew’s teachings in order to
compensate for deficiencies in the factual bases of the rejection before us.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
We underscore that the Examiner bases the rejection on the premise
that McNew actually teaches adjusting the retransmission time to zero—
i.e., ceasing retransmission. The Examiner has not based the rejection on an
alternative position that even though McNew may not teach adjusting the
retransmission time so as to cease retransmission, it nonetheless would have
been obvious to do so. Much less does the Examiner provide any technical
basis to support such an alternative theory of the rejection. As such, we
limit our review to the question of whether McNew, in fact, teaches this
claim limitation, as opposed to deciding whether this limitation may have
been obvious. Frye, 94 USPQ2d at 1075.
For the foregoing reasons, Appellant has persuaded us that the
Examiner has not established a prima facie case of obviousness with respect
to independent claim 1. Accordingly, we reverse the Examiner’s rejection of
claim 1, independent claims 11 and 14, which recite similar claim language,
and claims 2–10, 12, and 13, which ultimately depend from claims 1 and 11.

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NEW GROUND OF REJECTION
Patent statute 35 U.S.C. § 112(b) requires that “[t]he specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor
regards as the invention.” The Supreme Court has held that “[t]o
determine the proper office of the definiteness command, . . . we read
§ 112, ¶ 2[,] to require that a patent’s claims, viewed in light of the
specification and prosecution history, inform those skilled in the art
about the scope of the invention with reasonable certainty.” Nautilus v.
Biosig Instruments Inc., 572 US 898, 910 (2014) (emphasis added), cited in
Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, *4
(PTAB Aug. 25, 2017) (precedential) (addressing the Office’s interpretation
of the Supreme Court’s legal test). “[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).
Turning to the present case, claim 1 is directed to “[a] vehicular safety
system,” but the claim does not affirmatively recite what structures or
components are being claimed. Claim 1, instead, merely recites what the
purpose or intended outcome of the system is. See claim 1 (“A vehicular
safety system in which vehicles in a same geographical area form nodes of a
wireless ad-hoc network . . . , wherein the operating parameters being
adjusted include . . . , and the driving condition of a vehicle include at least
one [specified condition]”).
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As such, it is not reasonably clear whether anticipation of claim 1
requires that prior art discloses, for example, (1) only a processing-and-
communication unit capable of being installed in a vehicle (see, e.g., claim
11); (2) more narrowly, a single vehicle that contains such a programmed
processor; or (3) more narrowly still, a plurality of vehicles containing such
processors and wherein the vehicles are located in a same geographical area
and form a wireless ad-hoc network.
Because the metes and bounds of claim protection being sought are
not reasonably clear, we exercise our discretionary authority under 37 C.F.R.
§ 41.50(b) and newly reject claims 1–10 under 35 U.S.C. § 112(b) for being
indefinite.2

DECISION
The Examiner’s decision rejecting claims 1–14 is reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1–10 under 35 U.S.C. § 112(b).
Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Rule
41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
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:

2 To overcome this indefiniteness rejection, Appellants should consider
reciting affirmatively, instead of inferentially, those structures and
components for which claim protection is being sought.
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(1) Reopen prosecution. 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 prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)