Ex Parte 8,565,936 B2 et al

Patent Trial and Appeal Board

Jun 9, 2017

96000062 (P.T.A.B. Jun. 9, 2017)

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.
96/000,062 07/15/2014 8,565,936 B2 216994-556862 1407
55694 7590 06/12/2017
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/12/2017 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HONDA MOTORS CO., LTD.
Appellant, Patent Owner
________________

Appeal 2016-000250
Ex parte Reexamination Control 96/000,062
Patent US 8,565,936 B2
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

After reviewing the briefs and hearing oral argument, we affirmed the 1
Examiner’s decision rejecting claims 1–10 of US 8,565,936 B2, issued 2
October 22, 2013 (“the ʼ936 patent”), under pre-AIA 35 U.S.C. § 103(a) as 3
being unpatentable over Watanabe ʼ334 (JP P2006-347334 A, published 4
December 28, 2005); Wada (JP P2000-155887 A, published June 6, 2000); 5
and Taki ʼ489 (WO 2006/075489 A1, published July 20, 2006).1 (See 6

1 As used in this opinion, citations to “Watanabe ʼ334” and “Wada”
will refer to English-language translations in the record of Reexamination
proceeding 96/000,062. Citations to “Taki ʼ489” will be to the text of the
published English-language PCT application.

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Decision on Appeal, mailed Dec. 16, 2016 (“Decision”), at 3 & 17). Patent 1
Owner Honda Motors Co., Ltd., seeks rehearing of this Decision. (“Request 2
for Rehearing of the Decision on Appeal,” dated Apr. 17, 2017 (“Rehearing 3
Request” or “Reh’g Req.”)). We retain jurisdiction of the appeal under one 4
or more of 35 U.S.C. § 6(b)(2); 35 U.S.C. § 134(b); and 35 U.S.C. § 306. 5
Requests for rehearing are limited to matters misapprehended or 6
overlooked by the Board in rendering the original decision. See 37 C.F.R. 7
§ 41.79(b)(1). We grant the request for rehearing to the extent that we have 8
considered the following four issues: 9
First, did we misapprehend the teachings of Watanabe ʼ334, Wada 10
and Taki ʼ489 so as to reach an erroneous conclusion that the subject matter 11
of claim 1 would have been obvious? 12
Second, did we misapprehend the teaching of paragraph 47 of 13
Watanabe ʼ334, that, “when vehicles are judged . . . to be in operation, all 14
operations by a remote control are forbidden?” 15
Third, should our affirmance of the Examiner’s rejection be 16
designated a new ground of rejection under 37 C.F.R. § 41.77? (See Reh’g 17
Req. 2123). 18
Fourth, should we have separately addressed arguments on pages 24–19
30 of the “Appeal Brief,” dated May 13, 2015, directed to the patentability 20
of independent claims 2 and 3, despite having designated claim 1 21
representative? (See Reh’g Req. 2325). 22
Otherwise, we deny the request. 23
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FIRST ISSUE 1
The Patent Owner argues that we failed to recognize “that Watanabe 2
permits remote control only from a portable instrument of the driver. . . . 3
These misapprehensions result in an improper line of reasoning that it would 4
be easy to combine Watanabe with other teachings about an emergency 5
mode in a way that would result in the claims.” (Reh’g Req. 4). The 6
Decision quotes the Examiner: 7
Watanabe ʼ334 discloses an on-vehicle remote control system 8
comprising: a mobile communications device 3 operated by a 9
user to transmit a remote control request, a service center 2 that 10
receives the remote-control request from the mobile device 3 and 11
relays that request to the appropriate vehicle 1, and an on-12
vehicle remote control device 10 that receives the remote-control 13
request and executes the requested remote control of on-vehicle 14
equipment. [See Watanabe ʼ334, paras. 1, 22, 24 & 25; see also 15
id. at Fig. 1]. 16
(Decision 6, citing “Examiner’s Answer,” mailed June 24, 2015 (“Answer” 17
or “Ans.”), at 2–3 (italics added for emphasis)). The Decision did not 18
misapprehend this point. 19
The Patent Owner also argues that: 20
The Board misapprehended Taki in stating that it teaches ‘a 21
mobile communication device [or portable terminal device] 12 22
operated by a user to transmit a request for emergency 23
intervention” (emphasis added). Decision at 7. The portable 24
terminal device 12 of Taki is not operated by a user to transmit a 25
request for emergency intervention. Instead, the portable device 26
12 is merely a device used to connect the on-vehicle unit 10 to 27
the operation center 14. See, e.g., Taki, 10:30–33 and 12:16–33. 28
(Reh’g Req. 12). This point is well taken. 29
Taki ʼ489 teaches that the “on-vehicle unit 10 has a help button switch 30
10b disposed at a position such that the vehicle occupant, in particular, the 31
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driver, can operate it.” (Taki ʼ489 at 13, ll. 4–9). The on-vehicle unit 10 1
also includes “an airbag unit 10c for operating and expanding an airbag 3.” 2
(Id.) Taki goes on to teach that, “[w]hen the help button 10b switch has 3
been pressed or the airbag 3 has been operated and expanded by the airbag 4
unit 10c, the on-vehicle unit 10 connects with the center 14 via the portable 5
unit 12 for the purpose of notifying the center of this matter.” (Taki ʼ489 at 6
13, ll. 14–21 (italics added for emphasis)). Thus, the user does not operate 7
the portable unit 12 directly. Instead, the user may press the help button 8
switch 10b of the on-vehicle unit 10 and the on-vehicle unit will cause the 9
portable unit 12 to relay a request for emergency intervention to the center 10
14. Alternatively, operation of the airbag 3 signals the on-vehicle unit 10 to 11
transmit a request for emergency intervention via the portable unit 12. 12
What is more significant here is the Patent Owner’s concession that, 13
“in Taki, the portable device 12 merely acts as a bridge between the on-14
vehicle control unit 10 and the operation center 14, with all instructions 15
being issued by the operation center 14.” (Reh’g Req. 13 (italics added for 16
emphasis)). In other words, Taki ʼ489 teaches remote control of vehicle 17
systems by an operation center after a determination is made on board the 18
vehicle that the vehicle is in an emergency condition. 19
The Patent Owner makes a similar argument regarding the teachings 20
of Wada. Once again, the Patent Owner concedes that “the portable 21
telephone of Wada merely acts as a bridge between the on-vehicle control 22
unit 10 and the service center 30, with all instructions being issued by the 23
on-vehicle control unit 10 or the service center 30.” (Reh’g Req. 18 (italics 24
added for emphasis)). Wada likewise teaches remote control of vehicle 25
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systems by a service center after a determination is made on board the 1
vehicle that the vehicle is in an emergency condition. 2
The Patent Owner then argues that: 3
There would be no advantage to remote control of a vehicle by a 4
driver’s portable instrument in an emergency situation. For 5
example, if the driver is incapacitated, the driver would not have 6
any ability to remotely control the vehicle. If the driver is not 7
incapacitated, the driver would have just as much ability to 8
control the vehicle without a remote, because of his presence in 9
the vehicle. 10
(Reh’g Req. 9). On the other hand, the Patent Owner asserts that, in Taki 11
ʼ489: 12
the operation of the emergency switch [or, presumably, the 13
airbag system,] does not affect the ability to perform emergency 14
control or grant permission[.] [I]t is only a condition of 15
emergency notification that happens to occur before remote 16
control [is] performed. . . . In this case, just because Taki 17
describes use of the service center after transmission of an 18
emergency message does not mean that it discloses some kind of 19
control depending on the emergency message, which is a 20
fundamental difference of the claimed subject matter where a 21
control unit on the vehicle enables remote control in an 22
emergency mode. 23
(Reh’g Req. 11–12). The Patent Owner argues that: 24
The Board also misapprehended Taki by alleging that Taki 25
teaches permitting a service center to remotely control on-vehicle 26
equipment after an emergency message was transmitted, as if 27
there was some prohibition prior to the emergency message 28
transmission. Decision at 13. Taki provides no disclosure of an 29
on-vehicle control device or means that permits or prohibits 30
remote control. 31
(Reh’g Req. 14–15). Similar arguments are made concerning Wada. (See 32
Reh’g Req. 17 & 19). 33
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The rejection on appeal contemplates a trade-off between the 1
teachings of Watanabe ʼ334, on the one hand, and those of Wada and Taki 2
ʼ489, on the other. In the Examiner’s words: 3
Watanabe et al. ʼ334 teaches prohibiting remote control when it 4
is determined that the vehicle is in use. Further, Wada and Taki 5
et al. ʼ489 teach the additional feature of providing for remote 6
control when it is determined that the vehicle is in an emergency 7
mode, and these references explain the benefits of remote control 8
in such an emergency mode. These teachings of Wada and Taki 9
et al. ʼ489 would have led one of ordinary skill in the art to add 10
to Watanabe et al. ʼ334 the additional feature of remote control 11
in an emergency mode for the benefits explained in Wada and 12
Taki et al. ʼ489. In adding this feature to Watanabe et al. ʼ334, 13
the person of ordinary skill would have appreciated the benefit 14
of retaining the disclosed feature of Watanabe et al. ʼ334, i.e., 15
prohibiting remote control when the vehicle is in normal use and 16
not in an emergency mode. Thus, the teachings of the prior art, 17
taken as a whole, are considered to render the claimed invention 18
obvious. 19
(Final Office Action, mailed Nov. 18, 2014 (“Final Off. Act.”), at 13; Ans. 20
10–11). 21
On the one hand, Wada and Taki ʼ489 teach that it is desirable for a 22
service center to exercise remote control over at least some vehicle systems 23
after it is determined on board the vehicle that the vehicle is in an emergency 24
condition. The service center might respond to the emergency condition by 25
remotely controlling vehicle systems, including the vehicle’s horns, lights 26
and door locks, in the case of Wada; or the vehicle’s engines, brakes, 27
transmissions, heating and cooling systems, lights and horns, in the case of 28
Taki ʼ489. The service center may remotely control these vehicle systems 29
when the vehicle is in an emergency condition in order to help identify the 30
vehicle in which the emergency had occurred; to assist others in accessing 31
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incapacitated occupants of the vehicle; and to prevent the vehicle from 1
harming others. (See Wada, para. 33; Taki ʼ489, p. 7, l. 24 – 8, l. 27 & p. 24, 2
ll. 8–32). 3
On the other hand, in the Examiner’s words, “Watanabe ʼ334 also 4
discloses that it is desirable to prohibit remote control in order to avoid 5
unnecessary or unwanted operation by remote control when an occupant is 6
present in the vehicle or the vehicle is in use.” (Ans. 3, citing Watanabe 7
ʼ334, paras. 2–6). The Patent Owner is more specific: 8
The Examiner acknowledges that, based on the teachings of 9
[Watanabe ʼ334], remote control can create a safety hazard, and 10
this fact is true during both “normal use” and emergency use. 11
Remote control during an emergency can make the emergency 12
situation worse, since a remote controller would not be able to 13
assess whether the remote control would be beneficial or 14
detrimental to the occupants of the vehicle. For example, the use 15
of horns, lights, windows, etc. at inopportune times could make 16
an emergency situation worse. 17
(“Reply Brief under 37 C.F.R. § 41.41,” dated August 24, 2015, at 5; see 18
also Reh’g Req. 9). 19
One familiar with the teachings of Watanabe ʼ334, Wada and Taki 20
ʼ489, considered as a whole, would have had reason to balance the risks and 21
benefits of remote control differently in an emergency condition than in 22
normal use of the vehicle. The benefits of remote control as taught by Wada 23
and Taki ʼ489 relate to emergency conditions rather than to normal use of 24
the vehicle. Watanabe ʼ334 teaches configuring an on-vehicle system to 25
prohibit remote control when a determination is made that the vehicle is in 26
use. Absent a determination that an emergency condition exists, one of 27
ordinary skill in the art could believe that prohibiting remote control 28
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promotes the convenience and safety of the vehicle’s occupants, as taught or 1
suggested by Watanabe ʼ334. Wada and Taki ʼ489 teach or suggest that, if 2
an emergency condition is detected, remote control by a service center might 3
promote the safety and comfort of the occupants, as well as assist others in 4
accessing the occupants. Although the Patent Owner points out the risk that 5
the remote control exercised by a service center in an emergency might harm 6
or discomfort, rather than help, the occupants, that risk would be mitigated 7
to a degree by a communication device, such as the communication device 8
12 of Taki ʼ489 or the communication device 10 of Wada, providing a 9
channel of communication between the service center and the occupants. 10
Neither Wada nor Taki ʼ489 addresses whether remote control should 11
be permitted absent an emergency, any more than Watanabe ʼ334 12
contemplates whether remote control should be permitted if an emergency 13
condition is detected. Nevertheless, one familiar with the collective 14
teachings of Watanabe ʼ334, Wada and Taki ʼ489 reasonably would have 15
believed that the benefits of remote control by a service center when the 16
vehicle was in an emergency condition outweighed the risks. Cf. Medichem, 17
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given 18
course of action often has simultaneous advantages and disadvantages, and 19
this does not necessarily obviate motivation to combine.”). That said, if the 20
service center issued remote control instructions to the on-vehicle remote 21
control device 10 described by Watanabe ʼ334 when the vehicle was in an 22
emergency condition, the device as described would have prohibited remote 23
control. In order to implement the trade-off suggested by the collective 24
teachings of Watanabe ʼ334, Wada and Taki ʼ489, it would have been 25
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necessary to configure the on-vehicle system of Watanabe ’334 to permit 1
remote control if the on-vehicle system determined that an emergency 2
condition existed, and to prevent the on-vehicle system from prohibiting 3
remote control during such an emergency condition. 4
Furthermore, it would have been necessary to configure the on-vehicle 5
system of Watanabe ’334 to permit remote control by the service center after 6
an emergency condition had been detected, even if the system was 7
configured to permit remote control signals from a driver during periods 8
when it was determined that the vehicle was not in use. It would have been 9
within the level of skill of those in the art (though not necessarily easy) to 10
configure a system such as that described by Watanabe ʼ334 to permit 11
remote control by a service center in an emergency. The on-vehicle remote 12
control device 10 described by Watanabe ʼ334 receives remote control 13
instructions relayed through the service center 2. (See Watanabe ʼ334, 14
paras. 1, 22, 24 & 25; see also id. at Fig. 1). Watanabe ʼ334 does not 15
describe the on-vehicle remote control device 10 as capable of 16
discriminating between remote control signals initiated by the service center 17
2, on the one hand, and those initiated by a user and merely relayed by the 18
service center, on the other. In any event, the teachings of Wada and Taki 19
ʼ489 would have provided one familiar with those teachings reason to permit 20
remote control by the service center rather than a vehicle owner or occupant 21
after a determination was made that an emergency condition existed. 22
The Patent Owner argues that “the claimed subject matter is more 23
than the predictable use of prior art elements according to their established 24
functions or advantages.” (Reh’g Req. 22). This argument is premised on 25
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the teachings of Watanabe ʼ334 to permit remote control of a vehicle by a 1
user in the absence of either a determination that the vehicle is in use or a 2
determination that the vehicle is in an emergency condition. (See id.) 3
Watanabe ʼ334 teaches prohibiting any remote control once a determination 4
is made that the vehicle is in use, albeit without specifically addressing 5
emergency conditions. Wada and Taki teach remote control of a vehicle by 6
a service center after it is determined that an emergency condition exists. 7
The Examiner proposes combining these prior art elements according to 8
their functions and advantages as taught in the references; and the 9
implementation of that combination would have yielded the claimed subject 10
matter. 11
Claim 1 recites the steps of “prohibiting the remote control of the on-12
vehicle device if an in-use determination is made that the vehicle is in use 13
and if it is determined that the vehicle is not in an emergency mode;” and 14
“permitting remote control of the on-vehicle device if an emergency mode 15
determination is made.” Thus, claim 1 recites two determinations, an in-use 16
determination and a determination that the vehicle is in an emergency mode. 17
Independent claim 3 recites an apparatus including “a use-state determining 18
device configured to determine whether the vehicle is in use as an in-use 19
determination; [and] an emergency-mode determining device configured to 20
determine whether the vehicle is in an emergency mode as an emergency-21
mode determination.” In the Appeal Brief, the Patent Owner argued that, 22
“[a]s can be seen from the recitations in independent claim 1, remote control 23
of an on-vehicle device is permitted/prohibited based upon two 24
determinations: (1) an in-use determination; and (2) the vehicle is not in an 25
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emergency mode.” (App. Br. 12 (emphasis omitted)). In the Rehearing 1
Request, the Patent Owner argues that “each of claims 2 and 3 explicitly 2
requires a remote-control-execution determining device or means that 3
performs the permission/prohibition based on two determinations.” (Reh’g 4
Req. 24). 5
As we pointed out in the Decision: 6
The determination whether the ignition system is in an ACC OFF 7
or ignition-off condition is a poor criterion for determining 8
whether an emergency condition exists in the vehicle. One of 9
ordinary skill in the art seeking to combine the advantages of the 10
systems described by Watanabe ̓ 334, Taki ̓ 489 and Wada would 11
have relied on different signals to indicate that the vehicle was 12
in-use and in an emergency condition because an in-use 13
determination alone would not have sufficed to indicate an 14
emergency condition. Although reliance on different signals to 15
indicate that the vehicle was in-use and in an emergency 16
condition would have required modification of the system to 17
receive and process both indications, one having sufficient skill 18
to implement the system described by Watanabe ʼ334 would 19
have been capable of such modification. The desire to combine 20
the advantages taught by Watanabe ʼ334, Taki ʼ489 and Wada 21
would have provided sufficient reason to undertake the necessary 22
modification. 23
(Decision 16–17). Given the teachings of Watanabe ʼ334 to determine 24
whether the vehicle is in use based on a one type of signal, such as an 25
ignition-off signal, and the teachings of Wada and Taki ʼ489 to determine 26
whether the vehicle is in an emergency mode based on another type of 27
signal, namely, an airbag activation (see Taki ʼ489 at 13, ll. 14–21), one 28
familiar with the teachings of Watanabe ʼ334, Wada and Taki ʼ489 would 29
have had reason to make separate in-use and emergency-mode 30
determinations based on the two types of signals. 31
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With the exception of our characterization of Taki ʼ489 elaborated 1
supra, we did not misapprehend or overlook any of these points. 2
3
SECOND ISSUE 4
Paragraph 47 of Watanabe ʼ334 says that, “when vehicles are judged 5
. . . to be in operation, all operations by a remote control are forbidden.” The 6
Patent Owner argued in the Appeal Brief that this statement teaches away 7
from permitting remote control when an emergency condition is detected. 8
(See App. Br. 9 & 21). The Decision quotes the Examiner, finding that: 9
[Watanabe ʼ334] appreciates the need to prohibit remote control 10
when the vehicle is in use, that is, during normal use, because 11
remote control during normal use would be unnecessary and also 12
undesirable to the occupant present in the vehicle. Further, one 13
of ordinary skill in the art would [have] appreciate[d] from the 14
teachings of [Watanabe ʼ334] that remote control during normal 15
use may create a safety hazard. 16
(Decision 10, quoting Ans. 10). 17
The Patent Owner argues that, “[t]o provide a reason to combine 18
Watanabe with the emergency systems of Taki or Wada, the Examiner 19
asserted that the description of prohibiting remote control in Watanabe 20
applied to only normal use.” (Reh’g Req. 3). This argument fails to 21
accurately characterize the Examiner’s findings. In the two sentences 22
immediately following the block quotation immediately above, the Examiner 23
found that “[Watanabe ʼ334] does not contemplate the situation in which the 24
vehicle is in use but becomes involved in an emergency. This scenario is 25
addressed by Wada and [Taki ʼ489], which teach the desirability of enabling 26
remote control in an emergency and how such remote control is 27
accomplished.” (Decision 10, quoting Ans. 10). Thus, neither the Examiner 28
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nor we misapprehended the teachings of Watanabe ʼ334 as alleged here by 1
the Patent Owner. 2
On pages 14 and 15 of the Decision, we addressed the Patent Owner’s 3
arguments that Watanabe ʼ334 teaches away from the subject matter of 4
representative claim 1: 5
The Patent Owner’s arguments emphasize the teachings of 6
paragraphs 47 and 48 of Watanabe ʼ334. (See, e.g., App. Br. 9 7
& 21). Paragraph 46 of Watanabe ̓ 334 teaches that some remote 8
control vehicle ignition systems are configured to prevent remote 9
ignition when the hood or a door of the vehicle is open. The 10
implication is that remote control of other systems, such as 11
systems designed to help to find the vehicle, may be permitted 12
while the hood or a door is open. On the other hand, paragraph 13
47 teaches that the on-vehicle remote control system may be 14
configured to prohibit the remote control of any vehicle system, 15
and not simply the ignition system, whenever the use-state and 16
remote-control determining means 9 determines that the vehicle 17
is in use. Paragraph 48 affirms that prohibiting the remote 18
control of any vehicle system whenever the use-state and remote-19
control determining means 9 determines that the vehicle is in use 20
provides a reliable or predictable criterion governing whether 21
remote control will be allowed. 22
Leaving a hood or a door open does not necessarily 23
indicate an emergency condition. More generally, the 24
description of the embodiment detailed in paragraphs 46–48 of 25
Watanabe ʼ334 does not address permitting remote control when 26
a vehicle in use enters an emergency condition. Paragraphs 46–27
48 alone do not suggest permitting remote control in an 28
emergency; on the other hand, the paragraphs do not criticize or 29
disparage remote control systems that permit remote control in 30
an emergency. As such, paragraphs 46–48 of Watanabe ʼ334 do 31
not teach away from the claimed invention [sic]. 32
Seizing on the second and third sentences of the quoted passage, the Patent 33
Owner argues that paragraph 46 of Watanabe ʼ334: 34
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is consistent with the rest of Watanabe in describing a system 1
that prohibits remote control when the vehicle is in use, and does 2
not provide any suggestion that the remote control should be 3
permitted at any time while the vehicle is in use, even an 4
emergency use. . . . This misapprehension of Watanabe was used 5
by the Board to dispute [the Patent Owner’s] argument that 6
Watanabe teaches away from remote control at any time while 7
the vehicle is occupied. 8
(Reh’g Req. 8). 9
The thrust of the passage quoted from pages 14 and 15 of the Decision 10
is that Watanabe ʼ334 does not teach away from permitting remote control 11
of vehicle systems in an emergency condition. The Examiner correctly finds 12
that “Watanabe et al. ʼ334 does not contemplate the situation in which the 13
vehicle is in use but becomes involved in an emergency.” (Ans. 10). As 14
such, Watanabe ʼ334 does not criticize or disparage permitting remote 15
control of vehicle systems in an emergency condition. 16
Our findings regarding paragraph 46 of Watanabe ʼ334 are consistent 17
with the finding that Watanabe ʼ334 does not contemplate the situation in 18
which the vehicle is in use but becomes involved in an emergency. Even 19
assuming that paragraph 46 of Watanabe ʼ334 implies that remote control of 20
vehicle systems, such as systems designed to help to find the vehicle, may be 21
permitted even if a hood or a door is open, we found that leaving a hood or a 22
door open does not necessarily indicate an emergency condition. As such, 23
any teachings or suggestions regarding remote control when a hood or a 24
door is open would not have been understood by one of ordinary skill in the 25
art as either suggesting or criticizing remote control in an emergency 26
condition. Because the teachings of Watanabe ʼ334, and in particular 27
paragraphs 46–48 of Watanabe ʼ334, do not address whether to permit 28
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remote control of vehicle systems when the vehicle is in an emergency 1
condition, Watanabe ʼ334 does not teach away from the subject matter of 2
representative claim 1. 3
4
THIRD ISSUE 5
On pages 13 and 14 of the Decision, we explained that: 6
The Supreme Court advises us that, in assessing whether 7
the subject matter of a claim would have been obvious, it must 8
be asked “whether the improvement [was] more than the 9
predictable use of prior art elements according to their 10
established functions.” KSR Int’l Inc. v. Teleflex Co., 550 U.S. 11
398, 417 (2007). Remote control of on-vehicle equipment was 12
known. Watanabe ʼ334 taught that it was desirable to prohibit 13
remote control of on-vehicle equipment in an occupied vehicle 14
and that a determination whether the vehicle was in use might 15
serve as a proxy for whether the vehicle was occupied. Taki ̓ 489 16
and Wada taught that it was desirable to permit remote control of 17
on-vehicle equipment after an emergency message was 18
transmitted in order to identify the vehicle in which the 19
emergency had occurred; assist in accessing incapacitated 20
occupants of the vehicle; and prevent the vehicle from harming 21
others. One of ordinary skill in the art would have desired to 22
incorporate both teachings into a remote control system for their 23
combined functionality. The Patent Owner does not deny that 24
one having sufficient skill to implement the teachings of 25
Watanabe ʼ334 also would have had sufficient skill to modify 26
those teachings to permit remote control after an emergency 27
message was transmitted. Therefore, the combination would 28
have been obvious. 29
The Patent Owner argues that our explanation constitutes a new 30
ground of rejection of the appealed claims. More specifically, the Patent 31
Owner seizes on the quotation from the Supreme Court in the first sentence 32
above in order to argue that”[t]his rationale for combining Watanabe and 33
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Wada or Taki to find the claims obvious was newly presented by the Board 1
in the Decision.” (Reh’g Req. 21). 2
The significance of this citation lies in the antepenultimate sentence of 3
the quoted paragraph, however: the claimed subject matter is no more than 4
the predictable use of prior art elements according to their established 5
functions in the sense that the proposed modification retains the benefits 6
obtained by prohibiting remote control when the vehicle is in use, as taught 7
by Watanabe ʼ334, while permitting remote control, at least of certain 8
systems, when an emergency condition is detected, as taught by either Wada 9
or Taki ʼ489. The Examiner says the same thing: 10
Watanabe et al. ʼ334 teaches prohibiting remote control when it 11
is determined that the vehicle is in use. Further, Wada and Taki 12
et al. ʼ489 teach the additional feature of providing for remote 13
control when it is determined that the vehicle is in an emergency 14
mode, and these references explain the benefits of remote control 15
in such an emergency mode. These teachings of Wada and Taki 16
et al. ʼ489 would have led one of ordinary skill in the art to add 17
to Watanabe et al. ʼ334 the additional feature of remote control 18
in an emergency mode for the benefits explained in Wada and 19
Taki et al. ʼ489. In adding this feature to Watanabe et al. ʼ334, 20
the person of ordinary skill would have appreciated the benefit 21
of retaining the disclosed feature of Watanabe et al. ʼ334, i.e., 22
prohibiting remote control when the vehicle is in normal use and 23
not in an emergency mode. Thus, the teachings of the prior art, 24
taken as a whole, are considered to render the claimed invention 25
obvious. 26
(Final Office Action, mailed Nov. 18, 2014 (“Final Off. Act.”), at 13; 27
Examiner’s Answer, mailed June 24, 2015 (“Ans.”), at 10–11 (italics added 28
for emphasis)). 29
Even though the Examiner did not cite KSR Int’l in the Final Office 30
Action or the Examiner’s Answer, our reasoning in the Decision is that of 31
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17
the Examiner. See In re Krammes, 314 F.2d 813, 816–17 (CCPA 1963) (“It 1
is well established that mere difference in form of expression of the reasons 2
for finding claims unpatentable or [obvious] over the references does not 3
amount to reliance on a different ground of rejection.”). 4
Our observation that the “Patent Owner does not deny that one having 5
sufficient skill to implement the teachings of Watanabe ʼ334 also would 6
have had sufficient skill to modify those teachings to permit remote control 7
after an emergency message was transmitted” (Decision 14) was meant to 8
imply that the Patent Owner had waived any argument to this effect. See 37 9
C.F.R. § 41.37(c)(1)(iv). The Examiner in Final Office Action and the 10
Examiner’s Answer had found that one of ordinary skill in the art would 11
have been motivated to provide a method permitting remote control, at least 12
of certain systems, when an emergency condition is detected, as taught by 13
either Wada or Taki ʼ489, while retaining as far as possible the benefits 14
obtained by prohibiting remote control when the vehicle is in use, as taught 15
by Watanabe ʼ334. (See Final Off. Act. 13; Ans. 10–11). Having been 16
placed on notice of this finding, the Patent Owner had reason to raise any 17
arguments the evidence or sound technical reasoning might have supported 18
challenging the capacity of one of ordinary skill in the art to implement a 19
method combining these benefits. Nothing in the Request for Rehearing 20
persuades us that good cause exists for taking up such an argument now. 21
Because the Decision sustained the ground of rejection adopted by the 22
Examiner, we decline to designate our affirmance a new ground of rejection 23
under 37 C.F.R. § 41.50(b). 24
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18
FOURTH ISSUE 1
In the Appeal Brief, the Patent Owner discussed claims 2 and 3 under 2
a separate subheading. Nevertheless, as we observe on page 5 of the 3
Decision: 4
the errors the Patent Owner alleges the Examiner committed in 5
rejecting claims 2 and 3 are the same as those the Patent Owner 6
alleges the Examiner committed in rejecting claim 1. The Patent 7
Owner does not suggest any persuasive reason why claims 2 or 8
3 might be patentable if claim 1 is not. 9
For this reason, we did not analyze claim 2 or claim 3 separately in the 10
Decision. 11
The Patent Owner argues that, “[a]lthough the reasons for 12
patentability provided in the Appeal for claim 1 versus claims 2–10 are 13
similar, they are not identical. Thus, claims 2–10 should stand or fall 14
separately from claim 1.” (Reh’g Req. 23). In particular, the Patent Owner 15
asserts that the “Board overlooked the fact that how the arguments apply to 16
the claim language is different for the method claim 1 compared to the 17
apparatus claims 2–10.” (Id.) As an example of this, the Patent Owner cites 18
the argument on page 27 of the Appeal Brief regarding whether Watanabe 19
ʼ334, Wada or Taki ʼ489 individually describes “permission/prohibition 20
based on two determinations in the manner recited.” (Reh’g Req. 23–24). 21
We remain convinced that the Patent Owner did not suggest any 22
persuasive reason in the Appeal Brief why claims 2 or 3 might be separately 23
patentable if claim 1 is not. In particular, as discussed earlier, the Patent 24
Owner argued in the Appeal Brief that: 25
As can be seen from the recitations in independent claim 1, 26
remote control of an on-vehicle device is permitted/prohibited 27
based upon two determinations: (1) an in-use determination; and 28
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(2) the vehicle is not in an emergency mode. More specifically, 1
remote control of an on-vehicle device is prohibited based upon 2
two determinations: (1) the vehicle is determined to be in use; 3
and (2) the vehicle is not in an emergency mode. Also, remote 4
control of an on-vehicle device is permitted based on two 5
determinations: (1) the vehicle is determined to be in use; and 6
(2) the vehicle is in an emergency mode. Additionally, claim 1 7
has been amended to make clear that the in-use determination 8
and the emergency-mode determination are determined based on 9
different signals. The Examiner has parsed the recited 10
determinations in order to cite different references for different 11
parts of such determinations, and then compiled the constituent 12
parts in an attempt to reconstruct the recited limitations. 13
(App. Br. 12 (emphasis omitted)). This is the same argument made by the 14
Patent Owner as establishing patentability of claims 2 and 3. (See App. Br. 15
21). Although we did not expressly address the limitations of claim 1 16
reciting two determinations, we dealt with the question indirectly in the 17
paragraph bridging pages 16 and 17 of the Decision. 18
Because the Patent Owner did not present any persuasive argument 19
for the patentability of claim 2 or claim 3 beyond what was argued relative 20
to independent claim 1, once claim 1 was held unpatentable, we affirmed the 21
rejection claims 2 and 3 for the same reasons as claim 1 without separately 22
addressing them, so to avoid repetition. 23
24
DECISION 25
We grant the Request for Rehearing to the extent that we have 26
considered the Patent Owner’s argument, and otherwise DENY the same. 27
No time period for taking any subsequent action in connection with 28
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 29
§ 1.136(a). 30
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1
DENIED 2
3
4
5
6
7
lv 8