Ex Parte 7,012,512 B2 et al

Board of Patent Appeals and Interferences

Jan 30, 2012

90008637 (B.P.A.I. Jan. 30, 2012)

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.
90/008,637 05/16/2007 7,012,512 B2 SA121/000SA 3695
24350 7590 01/31/2012
STITES & HARBISON, PLLC
400 W MARKET ST
SUITE 1800
LOUISVILLE, KY 40202-3352
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/31/2012 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 St. Denis Innovations, LLC1,
Appellant and Patent Owner
____________

Appeal 2011-010494
Reexamination Control No. 90/008,637
Patent US 7,012,512 B22
Technology Center 3900
____________

Before JAMESON LEE, SCOTT R. BOALICK, and KEVIN F. TURNER,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge TURNER.

Opinion Dissenting filed by Administrative Patent Judge LEE.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
St. Denis Innovations, LLC appeals under 35 U.S.C. §§ 134(b) and
306 from a final rejection of 1-11, 13-16, and 18-27. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1 St. Denis Innovations, LLC is the Patent Owner and the real party in
interest (App. Br. 2).
2 Issued March 14, 2006, to Michael St. Denis.
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

2
STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
by Raphael A. Valencia on May 16, 2007, of United States Patent 7,012,512
B2 (the '512 Patent), based on U.S. Patent Application 10/824,296 filed
April 14, 2004.

CLAIMED INVENTION
Patentee’s invention relates to vehicle emissions testing and to a
device that notifies a vehicle operator that the vehicle is ready for an
emissions inspection (Col. 1, ll. 7-10).
The '512 Patent issued with claims 1-21; claims 1-3, 8, 11, 13, 15,
16, 18, 19 and 21 were amended, claims 12 and 17 were cancelled, and
claims 22-27 were added. As such, claims 1-11, 13-16, and 18-27 remain
rejected and are the subject of this appeal. We take independent claim 1 to
be representative:
1. A device for notifying an operator of the readiness of
a vehicle for emissions testing, comprising:
a housing containing a control logic for evaluating a
status of each of a plurality of the monitors of an on-board
diagnostics (OBDII) system of the vehicle;
a connection port adapted to mate with a diagnostic link
connector of the OBDII system, placing the control logic in

3 Our decision will make reference to the Appellant’s Supplemental Appeal
Brief (“App. Br.,” filed February 16, 2010) and Reply Brief (“Reply Br.,”
filed June 1, 2010), and the Examiner’s Answer (“Ans.,” mailed March 29,
2010).
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

3
electrical communication with the OBDII system; and
an indicator light that is illuminated and viewable to the
operator of the vehicle while driving the vehicle for notifying
the operator when the vehicle is determined to be ready for
emissions testing based on the status of each evaluated monitor
of the OBDII system.

REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims under the remaining rejections are:
Nelson 2,960,654 Nov. 15, 1960
Chen 6,941,203 B2 Sep. 6, 2005

The Examiner rejected the claims on the following bases:
 claims 1, 2, 11, 13-16, and 18-21 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement (Ans. 3-4);
 claims 1, 2, 11, 13-16, and 18-21 under 35 U.S.C. § 305 as enlarging
the scope of the claims of the patent being reexamined (Ans. 4-6);
 claims 1-4, 8, 10, 11, 13, 15, 16, 19, 21, 22, 24, and 27 under 35
U.S.C. § 102(e) as being anticipated by Chen (Ans. 6-16); and
 claims 5-7, 9, 14, 18, 20, 23, 25, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Chen and Nelson (Ans. 16-27).
Appellant relies upon the following evidence in rebuttal to the
Examiner’s rejections:
 Declaration of Dr. Michael J. St. Denis, dated January 20, 2009
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

4
(Evidence Appx., Exhibit 1).
 D. Sosnowski and E. Gardetto, Performing Onboard Diagnostic
System Checks as Part of a Vehicle Inspection and Maintenance
Program (EPA June 2001) (“EPA Doc.”).

ISSUES
Appellant disputes that the amended claims lack proper written
description because a portion of the Specification that specifies that the
vehicle operator is notified that the vehicle is ready for emission inspection,
and that to operate means “to control the functioning of; run,” such that a
vehicle operator should be understood as the individual controlling the
functioning, i.e., driving, of the vehicle (App. Br. 38). The Examiner has no
dispute with the definition of “operator” (Ans. 35), but does not find support
for the amended portion in the Specification.
Appellant argues that the Examiner has failed to recognize the
difference between determining whether each monitor of an OBDII system
is ready for emissions testing and determining the pass/fail status in an
emissions test (App. Br. 14). Appellant also argues that the definition of
“readiness” is entirely consistent with the definition promulgated by the
EPA (App. Br. 14-15), and has nothing to do with whether the underlying
emissions control system is functioning properly (App. Br. 17). The
Examiner finds that no additional definition of the claim terms “ready” and
“ready for emissions testing” are needed since their definitions are already
provided in the claims themselves (Ans. 28).
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

5
With respect to the obviousness rejection, Appellant argues that
deficiencies of Chen are not cured by Nelson such that the rejection of
claims 5-7, 9, 14, 18, 20, 23, 25, and 26 which rely on Chen are likewise
improper (App. Br. 35). In addition, Appellant argues that the selector
switch recited in the claims is not taught or suggested by Nelson (App. Br.
35-36). The Examiner finds that the rejection and the combination of Chen
and Nelson are supported (Ans. 33-34).
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
The issues arising from the respective positions of Appellant and the
Examiner, which we consider herein, are:
(i) Did the Examiner err in rejecting claims 1, 2, 11, 13-16, and
18-21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement?
(ii) Did the Examiner err in rejecting claims 1, 2, 11, 13-16, and
18-21 under 35 U.S.C. § 305 as enlarging the scope of the claims of the
patent being reexamined?
(iii) Does Chen anticipate claims 1-4, 8, 10, 11, 13, 15, 16, 19, 21,
22, 24, and 27 anticipated under 35 U.S.C. § 102(e)?
(iv) Do Chen and Nelson render claims 5-7, 9, 14, 18, 20, 23, 25,
and 26 unpatentable under 35 U.S.C. § 103?
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

6
FINDINGS OF FACT
1. The '512 Patent is directed to vehicle emissions testing and to a
device that notifies a vehicle operator that the vehicle is ready for
an emissions inspection (Col. 1, ll. 7-10).
2. The Specification of the '512 Patent provides that: “[t]he present
invention is a device that notifies a vehicle operator that the
vehicle is ready for an I/M OBDII emissions inspection” (col. 5, ll.
52-54).
3. The Specification of the '512 Patent provides that the output of
monitors can be “not ready” (col. 2, l. 39-42), or “unsupported”
(TABLE A, col. 2, ll. 8 and 9), or “ready” (col. 2, l. 21-26), where
“ready” is understood as not necessarily indicative that a particular
emissions control system is operating properly, but only that the
system has been evaluated (id.).
4. Chen is directed to a method and system of diagnosing the status of
a vehicle (Abs.). The system uses a code reader (14) which
receives diagnostic trouble code signals from the on-board
computer, and outputs a passed or a problem status of the vehicle
(col. 5, l. 56- col. 6, l. 23; Fig. 1). One of these systems in the
vehicle’s emission system, including an oxygen sensor (Fig. 7).
5. Chen also discloses that the code reader has indicator lights (30,
32, 34) and is detachable from the on-board computer through a
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

7
connection port (26) so that it can be held in a vehicle operator’s
hand (col. 6, ll. 23-36; Fig. 1).
6. Nelson is directed to an electrical testing apparatus used for testing
electrical system of automobiles and other vehicles (col. 1, ll. 15-
18). The apparatus includes a knob (22) connected to a switch (18)
that controls which lights are illuminated according to what testing
is being performed (col. 1, l. 61 – col. 2, l. 10; Fig. 1).

PRINCIPLES OF LAW
[T]here is no magic formula or catechism for conducting claim
construction. Nor is the court barred from considering any
particular sources or required to analyze sources in any specific
sequence, as long as those sources are not used to contradict
claim meaning that is unambiguous in light of the intrinsic
evidence.
Philips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005)(en banc).
Patent claims in a reexamination proceeding in the USPTO are
ordinarily given their broadest reasonable interpretation consistent with the
patent disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999).
“To render a later invention unpatentable for obviousness, the prior art
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

8
must enable a person of ordinary skill in the field to make and use the later
invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citing
Beckman Instruments, Inc., v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989) and In re Payne, 606 F.2d 303, 314-15 (CCPA 1979)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
(i) Written Description Under 35 U.S.C. § 112, First Paragraph
Claims 1, 2, 11, 13-16, and 18-21
With respect to the written description rejection, the Examiner
identifies the phrase “light that is illuminated and viewable to the operator of
the vehicle while driving the vehicle,” the amended portions of the
independent claims, as new matter because the original disclosure of the '512
Patent does not explicitly refer to a vehicle operator viewing the lights on the
device while driving (Ans. 3). Appellant disputes this by relying on a
portion of the Specification that specifies that the vehicle operator is notified
that the vehicle is ready for emission inspection (FF 2). Appellant continues
that to operate means “to control the functioning of; run,” such that a vehicle
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

9
operator should be understood as the individual controlling the functioning,
i.e., driving, of the vehicle (App. Br. 38). Appellant also argues that the
lights would have to be viewable to notify the vehicle operator (id.).
The Examiner has no dispute with the definition of “operator” (Ans.
35), but does not find support for the amended portion in the Specification.
We agree with the Examiner and do not find support for the limitation. We
find that a key portion of the limitation is “while driving.” Appellant argues
that driving is a natural function of the operator, but we can find no
disclosure in the Specification which discloses that such notification occurs
while the vehicle operator is driving the vehicle. While it might be obvious
to provide such functionality, the burden of written description cannot rest
on what would have been obvious, only what has been explicitly or
inherently disclosed. By way of contrast, a vehicle operator could merely sit
in the vehicle, allow the engine to “run,” and be operating the vehicle, and
may not be driving the vehicle. As such, while we agree with Appellant that
a notification of the operator is clearly disclosed in the Specification, we can
find nothing therein which discloses or requires the notification to occur
while driving.
In addition, Appellant argues that the general purpose of the claimed
device, described in the “Background of the Invention” section makes clear
that it is intended to relieve drivers of the burden of coming back for testing
prematurely (App. Br. 39-40). However, like the above discussion, such
general discussion does not disclose that any notification occurs “while
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

10
driving,” such that we do not find support for the amendment portion. As
such, we find no error in the Examiner’s rejection of claims 1, 2, 11, 13-16,
and 18-21 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.

(ii) Enlargement Of Claim Scope Under 35 U.S.C. § 305
Claims 1, 2, 11, 13-16, and 18-21
Appellant argues that the rejection under 35 U.S.C. § 305 as enlarging
the scope of the claims is improper for the same reasons as discussed above
with respect to the written description rejection (App. Br. 40). Since we
agree with the Examiner that there is no error in the written description
rejection, we might not necessarily address the rejection under § 305, as it is
made with respect to the same claims.
However, in the instant case, we do not find the amendments made to
claims 1, 2, 11, 13, 15, 16, 18, 19, and 21 as enlarging the scope of the
claims. It is not clear how the amended claims would contain within their
scopes any conceivable product or process which would not have infringed
the original patent. Each amendment creates a narrower claim, because any
device that would satisfy the limitation by having a “light that is illuminated
and viewable to the operator of the vehicle while driving the vehicle,” would
also satisfy the non-amended portions of the rejected claims. Thus, we do
not find that the amendments enlarge the claim scope of the '512 Patent. As
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

11
such, we find that the Examiner erred in rejecting the claims under 35 U.S.C.
§ 305.

(iii) Anticipation By Chen
Claims 1-4, 8, 10, 11, 13, 15, 16, 19, 21, 22, 24, and 27
Appellant argues that the Examiner has failed to recognize the
difference between determining whether each monitor of an OBDII system
is ready for emissions testing and determining the pass/fail status in an
emissions test, as in Chen (App. Br. 14). This argument is made with
respect to the limitation “notifying the operator when the vehicle is
determined to be ready for emissions testing based on the status of each
evaluated monitor of the OBDII system,” found in claim 1 and equivalently
in other claims. Appellant also argues that the definition of “readiness” is
entirely consistent with the definition promulgated by the EPA (App. Br. 14-
15), and has nothing to do with whether the underlying emissions control
system is functioning properly (App. Br. 17). Rather, Appellant argues, that
determining the readiness of a monitor is based on an evaluation of a status
of each monitor (id.).
The Examiner finds that no additional definition of the claim terms
“ready” and “ready for emissions testing” are needed since their definitions
are already provided in the claims themselves (Ans. 28). Taking claim 1 as
an example, the Examiner finds that “the vehicle is determined to be ready
for emissions testing based on the status of each evaluated monitor of the
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

12
OBDII system” to be a simple and straightforward definition, and finds there
is no need to consult conflicting or contradictory extrinsic evidence (id.).
On this former point, Appellant apparently agrees (Reply Br. 4).
Looking to independent claim 1, we find nothing recited therein about
“readiness,” or “ready” alone, or “not ready” or “unsupported.” Appellant
argues that these are conditions of possible statuses of the evaluated
monitors (Reply Br. 7). Appellant also argues that these go to the readiness
of the monitors (App. Br. 16). However, the only recitation of “ready” in
claim 1 is in the context of “readiness of a vehicle for emission testing” and
“ready for emissions testing.” These recitations are clearly not the same as
the “ready” status potentially provided by a monitor; one may determine the
other, but they are not the same. An examination of the use of both “ready”
and “ready for an I/M OBDII emissions inspection” in Specification of the
'512 Patent shows that they are not generally the same. Additionally, claim
1 fails to recite any monitors being “ready” or having a state of “readiness.”
Therefore, Appellant’s arguments with respect to the meaning of
“readiness” are moot since the claims do not require the evaluated monitor
to be “ready” or not, only that they provide a status that can be evaluated.
The status of a monitor need not be ready,” or “not ready” or “unsupported,”
even though those examples are provided in the Specification (FF 3).
Likewise we should not import such a meaning of readiness from the
Specification into the claims. It is important not to import into a claim
limitations of the disclosed invention that are not part of the claim. See
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

13
Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
As such, we agree with the Examiner (Ans. 28) that “the vehicle is
determined to be ready for emissions testing based on the status of each
evaluated monitor of the OBDII system.” Those statuses need not be
“ready,” or such, and can be different types of statuses, based on a broadest
reasonable interpretation of that term. If each monitor does not present a
system fault, for example, that might otherwise cause the inspection to fail,
then that lack of a system fault could be the determinable status for each
monitor. Thus, if each evaluated monitor provided no system fault, those
statuses, taken together, would indicate that the vehicle is physically ready,
and thus ready for emissions testing. We do not ignore the examples
provided by Appellant, but do not find that the instant claims are confined to
only the examples provided in the Specification.
Appellant also discusses the EPA Doc. and the standard usage of
“readiness” employed therein (App. Br. 17-20). The Examiner finds
conflicting examples therein (Ans. 28). Appellant acknowledges that the
EPA Doc. contains “imprecise language . . . that could cause some
confusion” (Reply Br. 3), but still finds the usage of the term “ready” to be
consistent (App. Br. 19). We continue to find Appellant’s definition of
“ready” to be immaterial in view of the clear definition recited in the claims.
Appellant also argues that the meaning of “readiness” is clear from
how it was addressed in the Request for Reexamination (App. Br. 21-23).
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

14
However, as we have discussed supra, the issue is not merely “readiness”
but the “readiness of a vehicle for emission testing.” We likewise find the
prior art usage of “readiness,” and its use in subsequent patents (App. Br.
23-24), to be unavailing for Appellant.
Appellant also argues that evaluating a status of each of a plurality of
monitors of an on-board diagnostics system is “totally unrelated to the
evaluation of the underlying emissions control system that the monitors
themselves perform” (App. Br. 24). As discussed above, we do not find that
the subject matter of the claims, like claim 1 for example, cannot be read
onto a system which evaluates the underlying emissions control system, as
discussed below with respect to Chen.
Appellant also argues that the processes detected through the system
disclosed in Chen occur in a different portion of the overall operational
process for emissions testing than those detected by the device disclosed the
'512 Patent (App. Br. 27-29). In other words, Chen determines diagnostic
trouble codes and the instant invention determines the statuses of each of the
readiness monitors (id.). Even taking this to be true, we do not find that this
addresses whether the claims still read upon the device and process of Chen.
To that latter prospect, Appellant argues that claim 1 is not anticipated by
Chen because that reference fails to teach control logic for evaluating a
status of each of the plurality of monitors, nor determining whether a vehicle
is ready for emissions testing based on those statuses (App. Br. 30-31). We
cannot agree.
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

15
Based on our findings as to the meanings of “readiness of a vehicle
for emission testing” and “evaluating a status of each of a plurality of the
monitors,” we find that claim 1 reads upon the disclosure of Chen. As the
Examiner finds (Ans. 29-30), the control logic in the code reader receives
status information from the vehicle’s emission system (FF 4), and presents
that information to a user (FF 5). We further agree with the Examiner that a
“passed condition” is equivalent to the claimed “ready condition,” since the
vehicle would be “physically ready to pass a vehicle inspection, since it has
no system faults that would otherwise cause it to fail (Ans. 30).
Appellant also addresses distinctions between independent claims 3,
11, 16, 22, 24, and 27 and Chen for essentially the same reasons as presented
for claim 1 (App. Br. 31-34). However, we find those arguments no more
persuasive with respect to the former claims than we find for claim 1.
Additionally, Appellant has not separately argued the dependent claims
anticipated by Chen. As such, we find no error in the Examiner’s
anticipation rejection of claims 1-4, 8, 10, 11, 13, 15, 16, 19, 21, 22, 24, and
27 over Chen.

(iv) Obviousness Over Chen and Nelson
Claims 5-7, 9, 14, 18, 20, 23, 25, and 26
With respect to the obviousness rejection, Appellant argues that
deficiencies of Chen are not cured by Nelson such that the rejection of
claims 5-7, 9, 14, 18, 20, 23, 25, and 26 which rely on Chen are likewise
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

16
improper (App. Br. 35). As we do not find Chen to have the deficiencies
alleged, as discussed supra, we do not agree with Appellant.
In addition, Appellant argues that the selector switch recited in the
claims is not taught or suggested by Nelson (App. Br. 35-36). Appellant
argues that Nelson, while describing a device including a switch that is
connected to a knob, it fails to describe a device or method for notifying an
operator of the readiness of a vehicle for emissions testing that includes a
selector switch (App. Br. 36). We do not, however, consider this an issue
since we find that such Chen teaches such a device, although lacking a
selector switch.
Appellant continues that there is no apparent reason for a person of
ordinary skill in the art to combine the switch of Nelson with the portable
code reader of Chen, and nothing in Nelson that would teach or suggest such
incorporation (App. Br. 37). The Examiner finds that Appellant has not
provided any logical or factual rationale as to why the stated rationale to
combine would not be a valid motivation (Ans. 33). In addition, the
Examiner finds that Nelson teaches that the switch selects which lights get
monitored and would be equivalent to the claimed selector switch. We agree
with the Examiner.
Nelson provides the functionality stated by the Examiner (FF 6). We
agree that one of ordinary skill in the art would have incorporated Nelson’s
switch into Chen’s device to allow for the selection of lights to be activated.
We further agree with the Examiner (Ans. 34) that Nelson is not required to
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

17
teach more to allow for the combination contemplated. As such, we find no
error in the obviousness rejection of claims 5-7, 9, 14, 18, 20, 23, 25, and 26.

CONCLUSIONS
We conclude that (i) the Examiner did not err in finding that claims 1,
2, 11, 13-16, and 18-21 lacked proper written description; (ii) the Examiner
erred in finding that the amendments to claims 1, 2, 11, 13-16, and 18-21
enlarged the scope of the claims; (iii) Chen anticipates claims 1-4, 8, 10, 11,
13, 15, 16, 19, 21, 22, 24, and 27 anticipated under 35 U.S.C. § 102(e); and
(iv) Chen and Nelson render claims 5-7, 9, 14, 18, 20, 23, 25, and 26
unpatentable under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s decision to reject claims 1-11, 13-16, and
18-27.

Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

18
AFFIRMED

LEE, Administrative Patent Judge, dissenting.
I would reverse the rejection of claims 1, 2, 11, 13-16, and 18-21
under 35 U.S.C. § 112, first paragraph, for lack of written description in the
specification. It is not in dispute that the specification contains written
description of using indicator lights to notify a vehicle operator that the
vehicle is ready for an I/M OBDII emissions inspection. (Spec. 4:33-48).
However, according to the majority opinion, because a vehicle operator may
simply be sitting in the vehicle with the engine running, and thus be
“operating” the vehicle without “driving” it, the specification does not
describe a light that is viewable to the operator “while driving the vehicle.”
In my view, regardless of whether sitting idle in a running vehicle
constitutes operating the vehicle, one with ordinary skill in the art would
have clearly understood that a vehicle operator is one who drives the vehicle.
It is not merely “obvious” that the vehicle operator drives the vehicle; that is
implicit without need for express articulation.
Therefore, the light viewable to the operator “while driving the
vehicle” has written description in the specification. To satisfy the written
description requirement, the specification must convey with reasonable
clarity that at the time of filing of the application the inventors had
possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed.Cir. 1991). That is the case here. If the feature at issue
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

19
is not “while driving the vehicle” but “while not driving the vehicle,” I
would agree with the majority. But the claim feature here is “while driving
the vehicle” which I find to be implicitly described by Appellant’s reference
to operator of the vehicle.
I would also reverse the anticipation rejection of claims 1-4, 8, 10, 11,
13, 15, 16, 19, 21, 22, 24, and 27 under 35 U.S.C. § 102 as anticipated by
Chen. While it is true that Appellant mistakenly argued about the “ready”
status of each monitor which is not claimed, as a whole it is unmistakable
that Appellant’s argues that evaluating a “status” of each of a plurality of
monitors, which evaluation is used to determine whether the vehicle is ready
for emissions testing, cannot be met by Chen’s obtaining trouble codes from
the onboard computer to determine whether the vehicle has an actual
problem with its emission control system. The argument has merit.
For instance, the portion of Chen cited by the Examiner as satisfying
the feature of “notifying an operator of the readiness of a vehicle for
emissions testing” (Chen 6:16-20 “output device 28 configured to indicate
passed or problem status of the vehicle”) actually provides the outcome of
any emissions testing. The portion of Chen cited by the Examiner as
satisfying the feature of “evaluating a status of each of a plurality of
monitors” which evaluation is used to determine whether the vehicle is ready
for emissions testing (Chen 6:1-4; Fig.3 blocks 104 and 106) actually
provides various vehicle diagnostic codes some of which may indicate an
actual problem with the vehicle’s underlying emissions control system. The
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

20
codes are not for determining whether the vehicle is “ready” for an
emissions test to be performed.
In the context of Appellant’s specification, readiness of a vehicle for
an emissions test refers to the usability of the multiple monitor values as a
reliable indicator of underlying emissions parameters so that an emissions
test may be thereafter effectively performed, and not to the lack of any
problem alert in the trouble codes indicative of a vehicle problem. In that
regard, the Examiner states (Answer 7:17-19):
The vehicle is also physically ready to pass a vehicle emissions
inspection, since it has no system faults that would cause it to
fail.

The statement is misplaced because in the context of Appellant’s
specification it is unreasonable to regard a broad indication that nothing
monitored is out of range as an indication that the vehicle is “ready” for an
emissions test to be performed. In particular, if emissions parameters have
been monitored, it would be unreasonable to regard passing of an actual
emissions evaluation as an indication that the vehicle is ready for emissions
testing. That would not be consistent with Appellant’s specification.
“Physically ready” to pass an emissions test because all monitored emissions
parameters are in range is not what “ready for emissions testing” means in
the context of Appellant’s specification.
I would also reverse the rejection of claims 5-7, 9, 14, 18, 20, 23, 25,
and 26 under 35 U.S.C. § 103 as obvious over Chen and Nelson, because the
Examiner’s application of Nelson does not cure the deficiencies of Chen.
Appeal 2011-010494
Reexamination Control No. 90/008,637
United States Patent 7,012,512 B2

21
I agree with my esteemed colleagues on the reversal of the rejection of
claims 1, 2, 11, 13-16, and 18-21 under 35 U.S.C. § 305 as enlarging the
scope of the original patent claims.
ack
cc:

FOR PATENT OWNER:
STITES & HARBISON, PLLC
400 W MARKET ST
SUITE 1800
LOUISVILLE KY 40202-3352

FOR THE THIRD PARTY REQUESTOR:
Raphael A. Valencia
Baker Hostetler LLP
Washington Square Suite 1100
1050 Connecticut Avenue NW
Washington, DC 20236