Ex Parte ABE et al

Patent Trials and Appeals Board

Jun 25, 2019

13615794 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/615,794 09/14/2012
23911 7590 06/27/2019
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
YusukeABE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106250.6493 lUS 7902
EXAMINER
WHALEN, MICHAEL F
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
edocket@crowell.com
tche@crowell.com
apomeroy@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUSUKE ABE, KOJI YUASA, and TOSHIHISA ARAI
Appeal2017-010553
Application 13/615,794 1
Technology Center 3600
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Yusuke Abe et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the
Examiner's decision in the Final Office Action (dated Aug. 12, 2016, hereinafter
"Final Act.") rejecting claims 1, 3-8, and 10-14. 2 Appellants' representative
presented oral argument on June 13, 2019.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 Hitachi Automotive Systems, Ltd. is identified as the real party in interest in
Appellants' Appeal Brief (filed Jan. 6, 2017, hereinafter "Appeal Br."). Appeal
Br. 1.
2 Claims 2 and 9 are canceled. See Appellants' Amendment (filed Apr. 27, 2016)
2, 4.
Appeal2017-010553
Application 13/615,794
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention is directed to "an electronic control unit for a vehicle
and method of executing [a] program." Spec. para. 2. 3
Claims 1 and 8 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. An electronic control unit for a vehicle, configured to receive a
first program from a writing tool by communication, comprising a
processor and a nonvolatile memory,
wherein a second program, which is stored in the nonvolatile
memory, expands the received first program in a volatile memory
and executes the expanded first program;
wherein the expanded first program changes a communication
environment, including at least one of communication speed and
encryption scheme, for communication between the electronic
control unit and the writing tool that is a transfer source of the first
program, to match a communication environment for
communication between the electronic control unit and another
unit; and
wherein the electronic control unit is removably connected to
the writing tool through a communication line, and the electronic
control unit is configured to tum on when connected to the writing
tool and configured to tum off when disconnected from the writing
tool.
3 As both Examiner and Appellants refer to the published application, US
2013/0073116 Al, pub. Mar. 21, 2013, for consistency purposes, we shall as well.
See Final Act. 3, Appeal Br. 2.
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Application 13/615,794
REJECTIONS
I. The Examiner rejects claims 1, 3-8, and 10-14 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
II. The Examiner rejects claims 1, 3-8, and 10-14 under 35 U.S.C.
§I03(a) as being unpatentable over Terada et al. (US 6,249,848 Bl,
iss. June 19, 2001, hereinafter "Terada").
ANALYSIS
The Written Description Rejection
The Examiner finds that the limitation "'wherein the electronic control unit
is configured to tum on ... and configured to tum off ... '," as recited by each of
independent claims 1 and 8, "is not taught by the [S]pecification." Final Act. 3.
According to the Examiner, although paragraphs 45 and 59 of Appellants'
Specification describes "the control unit ... [as being] turned on and off,"
nonetheless, "the [S]pecification does not indicate that the control unit is
performing these steps itself." Id. The Examiner explains that because the phrase
"'configured to' means that the device is designed to perform a certain task," the
disputed limitation of "the electronic control unit is configured to tum on" means
that "the electronic control unit is designed to perform the task of turning on when
the device[] is connected to the writing tool." Examiner Answer (dated June 16,
2017, hereinafter "Ans.") 4. Thus, the Examiner determines that "'configured to
tum on' ... is different than 'is powered on' ... because 'is powered on' would
require a device/person to power on the electronic unit," whereas "'configured to
tum on' ... would not." Id. Moreover, the Examiner notes that "[t]he
Specification does not provide any disclosure that the [ claimed] electronic control
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Application 13/615,794
unit has the ability to automatically tum on when connected to the writing tool."
Id.
To satisfy the written description requirement, the disclosure must convey
with reasonable clarity to skilled artisans that the Appellants were in possession of
the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991). While there is no in haec verba requirement,
when an explicit limitation in a claim is not present in the written description it
must be shown that a person of ordinary skill would have understood that the
description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed.
Cir. 1998).
In this case, paragraph 45 of Appellants' Specification states "[t]he operator
connects ECU 100 to writing tool 200. Once connected, ECU 100 is powered on"
( emphasis omitted). An ordinary and customary meaning of the term 'once," when
used as a conjunction, as in this case, means "at the moment when: AS SOON
AS."4 Hence, the Specification provides written descriptive support for a device
where as soon as the operator connects ECU 100 to writing tool 200, ECU 100 is
powered on, that is, it is turned on. We, thus, agree with Appellants the
Specification reasonably supports a device where "the ECU 100 turns itself on
when it is connected [to] the writing tool 200." Reply Brief (filed Aug. 10, 2017,
hereinafter "Reply Br.") 2.
As to the portion of the limitation requiring that the ECU is configured to
tum off when disconnected, paragraph 59 states that "[a]fter completion of writing,
ECU 100 is disconnected from writing tool 200, and hence the power is turned off'
4 See https:// www.merriam-webster.com/dictionary/once (last visited June
13, 2019).
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Application 13/615,794
(emphasis omitted). As the Specification employs the use of the adverb "hence,"5
the Specification evidences possession of a device in which, when disconnecting
ECU 100 from writing tool 200, ECU 100 is powered off, that is, it is turned off.
Accordingly, we agree with Appellants that the Specification reasonably supports a
device where the ECU 100 "turns itself off when it is disconnected from the
writing tool 200." Reply Br. 2.
Accordingly, for the foregoing reasons, we do not sustain the rejection of
claims 1, 3-8, and 10-14 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
The obviousness rejection
The Examiner finds that Terada discloses most of the limitations of
independent claims 1 and 8, but does not disclose that "the electronic control unit
is configured to tum on when connected to the writing tool and configured to tum
off when disconnected from the writing tool." Final Act. 4--5 (citing Terada, col.
3, 11. 35--45, 55---65, col. 4, 11. 17-27, col. 18, 1. 46-col. 19, 1. 5, 7-19, Figs. 1, 3, 4,
12). Nonetheless, the Examiner finds that "it was old and well known at the time
the invention was made ... to tum a controller on when it is being used and off
when it is not being used." Id. at 5. Thus, the Examiner concludes that "it would
have been obvious to one of ordinary skill in the art ... to modify the teachings of
Terada by ... turning the controller on when being used and off when not being
used, in order to save power." Id.
5 An ordinary and customary meaning of the term "hence" is "because of a
preceding fact or premise: THEREFORE." See https:// www.merriam-
webster.com/dictionary/hence (last visited June 13, 2019).
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Application 13/615,794
Appellants argue that "[t]he claims of the present application do not simply
state 'tum a controller on when it is being used and off when it is not being used."'
Appeal Br. 5. Rather, according to Appellants, the claims require "that 'the
electronic control unit is configured to tum on when connected to the writing tool
and configured to tum off when disconnected from the writing tool."' Id.
Appellants assert that "Terada is completely silent with respect to this feature of
the claims." Id.
In response, the Examiner takes the position that because in "Appellants'
[S]pecification the term power on/off is used and in the claims turned on/off is
used," the broadest reasonable interpretation consistent with the Specification of
turning on/off the claimed electronic control unit is "providing or not providing
power to" the unit. Ans. 6. The Examiner further explains that "Terada teaches
providing power when writing tool #4 is connected to microprocessor #8 and not
providing power when writing tool #4 is not connected to microprocessor #8." Id.
at 5 ( citing Terada, col. 4, 11. 40-52, col. 5, 11. 20-46, Fig. 1 ).
The Examiner and Appellants have presented us with two different
interpretations of the limitation "the electronic control unit is configured to tum on
when connected to the writing tool and configured to tum off when disconnected
from the writing tool," as recited by each of independent claims 1 and 8. We
appreciate that the Examiner correctly looks to apply a broadest reasonable
interpretation of the claim terms under examination. Nonetheless, the correct
inquiry in giving a claim term its broadest reasonable interpretation in light of the
Specification is not whether the Specification proscribes or precludes some broad
reading of the claim term adopted by the Examiner. Rather, the inquiry is whether
the interpretation corresponds with what and how the inventor describes his
invention in the Specification, i.e., an interpretation that is consistent with the
Specification. In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
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Application 13/615,794
Here, the Examiner's broad interpretation that includes "providing or not providing
power to" a control unit when a writing tool is connected or disconnected,
respectively, is not consistent with Appellants' Specification, which describes ECU
100 as powered on as soon as the operator connects it to writing tool 200 and as
powered off when it disconnects from writing tool 200. See Spec. paras. 45, 59.
Accordingly, like Appellants, we construe the limitation to mean that the claimed
electronic control unit "turns itself on and off based on its connection to and
disconnection from the writing tool." Reply Br. 2-3. "Terada simply does not
teach or suggest this feature." Id. at 3.
Specifically, Appellants are correct that in Terada, ECU 2 is powered on
(i.e., turned on) "when the ignition switch of the vehicle turns on so that the boot
program stored in the mask ROM 20b is started." Id. at 3 (citing Terada, col. 10,
11. 18-22). Afterwards, Terada discloses that the boot program then determines
whether the system is in a write mode, when memory-rewriting device 4 (writing
tool) is connected to ECU 2 and write-switch SW is switched on, or in an engine-
control mode, when memory-rewriting device 4 (writing tool) is not connected to
ECU and write-switch SW is not switched on. See Terada, col. 7, 11. 6-32, col. 10,
11. 44--50, Fig. 1. In other words, Terada merely discloses that when memory-
writing device 4 is connected to ECU 2, write-switch SW is switched on, which
says nothing about turning on ECU 2. As such, "in Terada, the microprocessor 8
[of ECU 2] does not tum on when the memory-writing device 4 is connected to the
microprocessor [8]." Reply Br. 3.
In conclusion, as the Examiner's modification of Terada does not remedy
the deficiency of Terada discussed above, we do not sustain the rejection under 35
U.S.C. § 103(a) of independent claims 1 and 8, and their respective dependent
claims 2-7 and 10-14, as unpatentable over Terada.
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Application 13/615,794
SUMMARY
The Examiner's decision to reject claims 1, 3-8, and 10-14 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is reversed.
The Examiner's decision to reject claims 1, 3-8, and 10-14 under 35 U.S.C.
§ 103(a) as unpatentable over Terada is reversed.
REVERSED
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