Ex Parte 6712387 et al

Board of Patent Appeals and Interferences

Jul 21, 2010

90010035 (B.P.A.I. Jul. 21, 2010)

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.
90/010,035 10/11/2007 6712387 ATI-207 REEX II 5266
22846 7590 07/21/2010
BRIAN ROFFE, ESQ
75 WOOD LANE
WOODSBURGH, NY 11598
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/21/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
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.
90/008,352 11/27/2006 6712387 ATI-207 RE 5109
22846 7590 07/21/2010
BRIAN ROFFE, ESQ
75 WOOD LANE
WOODSBURGH, NY 11598
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/21/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC.1
Appellant
____________________

Appeal 2010-003519
Reexamination Control 90/008,352 and 90/010,035
Patent US 6,712,387 B12
Technology Center 3900
____________________

Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL3

1 Automotive Technologies International, Inc. is the real party in interest
(App. Br. 3).
2 Issued March 30, 2004 to Breed et al. (hereinafter "'387 patent").
3 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003519
Reexamination Control 90/008,352 and 90/010,035

2
The Patent Owner (hereinafter "Appellant") appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a Final Rejection of claims 1-12, 15-27 and
29-53. Claims 13, 14 and 28 have been canceled. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306 (2002). The '387 patent is presently
involved in the following infringement litigation proceedings (App. Br. 4):
1. Automotive Technologies International, Inc. v. American
Honda Motor Co., Inc. et al., Civil Action No. 06-187-GMS (D. Del.); and
2. Automotive Technologies International, Inc. v. Hyundai Motor
America, Inc. et al., Civil Action No. 06-391-GMS (D. Del.).
In addition to the Appeal Brief, the Appellant relies on the declaration
under 37 C.F.R. § 1.132 of inventor Mr. David Breed. An oral hearing with
the Appellant's representative was held before the Board of Patent Appeals
and Interferences on July 14, 2010.
The claimed invention is directed to an arrangement for controlling
deployment of a side airbag in a vehicle where the deployment is suppressed
if the occupant in a seat has characteristics of a child and the head of the
child is against the airbag module.
Representative independent claim 1 reads as follows (App. Br.,
Claims App'x.):
1. An arrangement for controlling deployment of a side
airbag from an airbag module on a side of the vehicle to protect
an occupant in a seat of a vehicle in a crash when the occupant
is present, comprising
Appeal 2010-003519
Reexamination Control 90/008,352 and 90/010,035

3
determining means for identifying the occupant to
determine whether the occupant has characteristics of a child
and for determining the position of [at least a part of] the
occupant relative to the airbag module, said determining means
determining based on the identification of the occupant as
having characteristics of a child and the position of the
occupant relative to the airbag module whether the head of the
child is against the airbag module, and
a control circuit coupled to said determining means for
controlling deployment of the side airbag based on the
determined position of the [at least a part of the] occupant
relative to the airbag module,
said determining means comprising at least one receiver
adapted to receive waves from a space above a seat portion of
the seat and a processor coupled to said at least one receiver for
generating a signal representative of the position of the [at least
a part of the] occupant relative to the airbag module based on
the waves received by said at least one receiver, said at least
one receiver being capable of receiving electromagnetic waves,
said control circuit being arranged to suppress
deployment of the side airbag when the occupant is determined
to have characteristics of a child by said determining means and
the head of the child is determined to be against the airbag
module by said determining means.

The Examiner rejected all of the appealed claims under 35 U.S.C.
§ 112, first paragraph, as failing to satisfy the written description
requirement.
We REVERSE.

ISSUE
The sole issue raised in the appeal is whether the Examiner erred in
finding that the Specification does not include a written description for
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Reexamination Control 90/008,352 and 90/010,035

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"identifying the occupant to determine whether the occupant has
characteristics of a child," and suppressing deployment of the side airbag if
the occupant has characteristics of a child and the head of the child is
determined to be against the airbag module as required by the claims.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The BACKGROUND OF THE INVENTION section of the '387
patent states:
A. Side impact airbag systems began appearing on 1995
vehicles. The danger of deployment induced injuries will exist
for side impact airbags as they now do for frontal impact
airbags. A child with his head against the airbag is such an
example. The system of this invention will minimize such
injuries.
(Col. 2, ll. 29-34).

B. The above applications illustrate the wide range of
opportunities, which become available if the identity and
location of various objects and occupants, and some of their
parts, within the vehicle were known.
(Col. 3, ll. 1-4).

C. "Pattern recognition" as used herein will mean any
system which processes a signal that is generated by an object,
or is modified by interacting with an object, in order to
determine which one of a set of classes that the object belongs
to. Such a system might determine only that the object is or is
not a member of one specified class, or it might attempt to
assign the object to one of a larger set of specified classes, or
find that it is not a member of any of the classes in the set.
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(Col. 3, ll. 45-52).

D. "To identify" as used herein will mean to determine that
the object belongs to a particular set or class. The class may be
one containing all rear facing child seats, one containing all
human occupants, all human occupants not sitting in a rear
facing child seat, or all humans in a certain height or weight
range depending on the purpose of the system.
(Col. 3, ll. 59-64).

2. The OBJECTS AND SUMMARY OF THE INVENTION section of
the '387 states:
A. The claimed inventions are methods and arrangements
for controlling deployment of a side airbag from an airbag
module in a crash in which the presence and/or position of an
occupant in a passenger compartment of the vehicle is
determined and the deployment is controlled based thereon. The
deployment can be suppressed if no occupant is present, or if
the seat is occupied by, e.g., a rear-facing child seat, and a child
leaning against the door. Principle objects and advantages of
this invention, or other disclosed inventions, are:
(Col. 5, ll. 24-33).

B. 5. To determine the position, velocity or size of an
occupant in a motor vehicle and to utilize this information to
control the rate of gas generation, or the amount of gas
generated, by an airbag inflater system or otherwise control the
flow of gas into or out of an airbag.
(Col. 5, ll. 53-57).

C. 8. To determine the presence and/or position of
occupants relative to the side impact airbag systems and to use
this information to affect the operation of a side impact
protection airbag system.
(Col. 6, ll. 1-4).
Appeal 2010-003519
Reexamination Control 90/008,352 and 90/010,035

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3. The DESCRIPTION OF THE PREFERRED EMBODIMENTS
section of the '387 patent states:
A. The use of the vehicle interior monitoring system to
control the deployment of an airbag is discussed in detail in
U.S. Pat. No. 5,653,462 cross referenced above. In that case,
the control is based on the use of a simple pattern recognition
system to differentiate between the occupant and his extremities
in order to provide an accurate determination of the position of
the occupant relative to the airbag. If the occupant is
sufficiently close to the airbag module that he is more likely to
be injured by the deployment itself than by the accident, the
deployment of the airbag is suppressed. This process is carried
further by the interior monitoring system described herein in
that the nature or identity of the object occupying the vehicle
seat is used to contribute to the airbag deployment decision.
(Col. 14, ll. 27-40).

B. Side impact airbags are now beginning to be used on
some vehicles. These initial airbags are quite small compared to
the driver or passenger airbags used for frontal impact
protection. Nevertheless, a small child could be injured if he is
sleeping with his head against the airbag module when the
airbag therein deploys and a vehicle interior monitoring system
is needed to prevent such a deployment in that event. In FIG. 9,
a single ultrasonic transducer 330 is shown mounted in the
vehicle door adjacent to the airbag system. This device is not
used to identify, the object that is adjacent the airbag but merely
to measure the position of the object. It is also understood that it
can be used to determine the presence of the object, i.e., the
received waves are indicative of the presence or absence of an
occupant as well as the position of the occupant or a part
thereof.
(Col. 16, ll. 51-65).
Appeal 2010-003519
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PRINCIPLES OF LAW
35 U.S.C. § 112 states “[t]he specification shall contain a written
description of the invention . . . .” The “test for sufficiency [under § 112] is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc). The “test requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id. “[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, … or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Id. at 1352 (citations omitted).
In addition, it is the Examiner's “initial burden [to] present [ ]
evidence or reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims.” In re
Wertheim, 541 F.2d 257, 263 (CCPA 1976). Compliance with the written
description requirement is a question of fact which must be resolved on a
case-by-case basis. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991).
Appeal 2010-003519
Reexamination Control 90/008,352 and 90/010,035

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ANALYSIS
In rejecting the claims, the Examiner asserts that "there is no support
in the disclosure to either identify or determine whether or not the occupant
has the characteristics of a child and controlling the side airbag deployment
based on the identification or determination." (Ans. 4). The Examiner
further states that "while the specification does support identifying
objects[,]" it does not mention the term "characteristics of a child." (Ans. 7).
The Appellant argues that the Specification of the '387 patent
"describes an invention wherein waves/radiation derived from an occupying
item are received and analyzed to create a signal characteristic of the
occupying item with this signal being used to obtain the identity of the
occupying item, and the identity then being used to control deployment of an
occupant protection system." (App. Br. 16; see also FF 1B-1D, 2A-2C, 3A
and 3B). The Appellant also argues that "the person skilled in the art would
recognize that the invention is one that achieves a stated objective to prevent
deployment of a side airbag for a child sleeping having his head against the
airbag module and thus must not only determine the position of the child,
but also that the occupying item is indeed a child, which latter feature is
accomplished using a vehicle interior monitoring system as disclosed in the
patent." (App. Br. 20; see also FF 1A, 2A and 3B).
We agree with the Appellant. In our view, the Examiner is, in
essence, requiring the Specification to recite the claimed invention in haec
verba. While the recited limitation "identifying the occupant to determine
whether the occupant has characteristics of a child," may not be explicitly
mentioned, the Specification is sufficiently clear that the inventors possessed
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Reexamination Control 90/008,352 and 90/010,035

9
the claimed subject matter as evidenced by explicit identification of the
problem of side airbag deployment causing injury to a child when the child's
head is against the airbag module, and statements indicating that the
described invention addresses this identified problem (FF 1A, 2A and 3B).
Thus, the skilled worker would have recognized upon reading the
Specification that the inventors invented the claimed step of "identifying the
occupant to determine whether the occupant has characteristics of a child."
In addition, while the Examiner is correct that the described
embodiment of Figure 4 pertains to a front airbag, we do not consider the
distinction between front and side airbags to be dispositive, especially in
view of the inventors' disclosure that "[t]he danger of deployment induced
injuries will exist for side impact airbags as they now do for frontal impact
airbags." (FF 1A). Furthermore, while the Examiner is also correct that
Specification's disclosure relative to Figure 9 "explicitly states that the
determining means does not identify the object, but merely the determines
the position of the object[,]" (Ans. 5; see also FF 3B), this discussion of a
specific illustrated embodiment does not detract from the significance of the
prior sentence which states that "a small child could be injured if he is
sleeping with his head against the airbag module when the airbag therein
deploys and a vehicle interior monitoring system is needed to prevent such a
deployment in that event." (FF 3B).

CONCLUSION
Therefore, in view of the above, our opinion is that the Examiner has
not met the burden of showing why a person skilled in the art would not
Appeal 2010-003519
Reexamination Control 90/008,352 and 90/010,035

10
recognize in the disclosure, a description of "identifying the occupant to
determine whether the occupant has characteristics of a child," and
suppressing deployment of the side airbag if the occupant has characteristics
of a child and the head of the child is determined to be against the airbag
module as claimed.

ORDER
The Examiner's rejection of claims 1-12, 15-27 and 29-53 is
REVERSED.

REVERSED

ack
cc:
BRIAN ROFFE, ESQ
75 WOOD LANE
WOODSBURGH, NY 11598

Third Party Requestor:

RICHARD K.DEMILLE
BRINKS HOFER GILSON & LIONE
3600 NBC TOWER
455 N. CITYFRONT PLAZA DRIVE
Chicago, IL 60611