Ex Parte Andres

Board of Patent Appeals and Interferences

Oct 31, 2007

10396649 (B.P.A.I. Oct. 31, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROBERT M. ANDRES
_____________

Appeal 2007-2980
Application 10/396,649
Technology Center
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Decided: October 31, 2007
_______________

Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and
ANTON W. FETTING, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals from a rejection of claims 1-8, 11-18 and 21-
25, which are all of the pending claims.
THE INVENTION
The Appellant claims a method for sensitizing an air bag deployment
threshold. Claim 1 is illustrative:

Appeal 2007-2980
Application 10/396,649

1. A method of sensitizing an air bag deployment threshold
comprising the steps of:

(1) measuring a first acceleration;

(2) measuring a second acceleration in a direction generally
opposite the first acceleration;

(3) measuring a third acceleration;

(4) determining if the first acceleration exceeds a
predetermined acceleration;

(5) comparing the third acceleration to a reference value, the
reference value having an origin biased in the direction of the
second acceleration; and

(6) increasing a crash-pulse energy term in response to the
third acceleration increasing above the reference value of said
step (5).

THE REFERENCE
Feser US 6,584,386 B2 Jun. 24, 2003
(filed Mar. 5, 2001)

THE REJECTIONS
Claims 1-8, 11-18 and 21-25 stand rejected as follows: under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter the Appellant
regards as the invention; under 35 U.S.C. § 112, first paragraph, written
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Application 10/396,649

description requirement;1 and under 35 U.S.C. § 103 as being unpatentable
over Feser.
OPINION
We affirm the rejections under 35 U.S.C. § 112, first and second
paragraphs.2 Due to the indefiniteness of the claims we do not reach the
rejection under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 112, second paragraph
The first five steps of the Appellant’s claim 1 require:
(1) measuring a first acceleration (p1 in figure 4), 3

(2) measuring a second acceleration in a direction generally opposite
the first acceleration (p2 in figure 4),

(3) measuring a third acceleration (p3 in figure 4),
(4) determining if the first acceleration exceeds a predetermined
acceleration (ROW1_MAX_MIN in figure 4 (Spec. ¶ 25; Br. 7)),

(5) comparing the third acceleration to a reference value, the reference
value having an origin biased in the direction of the second
acceleration….

In comparing step (5) the limitation “a reference value, the reference
value having an origin biased in the direction of the second acceleration”
was added by amendment (filed August 22, 2005). Regarding the
comparing step the Specification states (Spec. ¶ 25):

1 The Examiner makes a corresponding objection to the Specification under
35 U.S.C. § 132 (Ans. 4-5).
2 We also sustain the objection to the Specification under 35 U.S.C. § 132.
3

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Acceleration peak p3 is in the crash direction and exceeds the
ROW1_MAX_MIN level to again qualify for a minimum significant
level. Where acceleration peak p3 crosses the ROW_1_MAX_MIN
level initiates an increase in the CPR term (CPE1) because the energy
of [p3] is greater than p1 when considering the origin of p3 and the
time interval between p1 and p3.

The origin of p3 referred to appears to be the horizontal line at the lower end
of the line having circles in it that extends downwardly from p3 in figure 4.
That horizontal line is the p2 peak clipped to approximately half (or other
percentage) of the previous peak (p1) size (Spec. ¶ 24).
The added limitation “having an origin biased in the direction of the
second acceleration” is broader than the original disclosure. It encompasses
not only the disclosed clipped p2 peak but also any other value that
arguably can be considered biased in the direction of p2.
The Appellant argues that the reference value in step (5) is the vertical
line having horizontal dashes through p2 in figure 4 (Br. 7). 4 The origin of
the reference value, the Appellant argues, is the horizontal line above p2 in
figure 4, i.e., p2 clipped to approximately 50% of p1. See id. Apparently
the Appellant is arguing that the reference value is the horizontal clipped p2
line. Otherwise, it is not clear which point on the vertical line with
horizontal dashes through p2 is the reference value. Regardless, the

3 References herein to figure 4 are to the figure as amended August 22,
2005.
4 The Appellant does not include the rejection under 35 U.S.C. § 112, second
paragraph, in the Appellant’s list of rejections (Br. 8). However, because the
Appellant has set forth the Appellant’s argued meaning of the claims (Br. 7-
8), we address the claim clarity issue.
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Application 10/396,649

Appellant’s original disclosure states that peak p3 is compared to
ROW1_MAX_MIN, not to the clipped p2 value (Spec. ¶ 25). Because
ROW1_MAX_MIN is toward p2 from p3, ROW1_MAX_MIN arguably can
be considered biased in the direction of p2. Because any other point in the
direction of p2 also could be considered biased in the direction of p2, the
claim limitation “having an origin biased in the direction of the second
acceleration” is unclear. It is a generic expression that arguably
encompasses the Appellant’s claim interpretation but also encompasses an
undeterminable number of other claim interpretations.
The last step of claim 1 is:
(6) increasing a crash-pulse energy term in response to the third
acceleration increasing above the reference value of said step (5).

Step (5) recites that the reference value has an origin biased in the direction
of the second acceleration. The Appellant’s Specification, however, states
that “[w]here acceleration peak 3 crosses the ROW1_MAX_MIN level
initiates an increase in the CPE term (CPE 1)…” (Spec. ¶ 25). Thus, the
Specification indicates that the reference value that p3 must exceed in
step (6) to increase the crash-pulse energy term is ROW1_MAX_MIN, not
the horizontal clipped p2 line as apparently argued by the Appellant with
respect to step (5). Arguably, like the horizontal clipped p2 line,
ROW1_MAX_MIN is biased in the direction of p2, but so is any other value
in the p2 direction.
The Appellant argues that the reference value in step (6) to which p3
is compared is the vertical line with horizontal dashes to the left of the
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vertical line with circles ending at p3 in figure 4 (Br. 7). That vertical line
with horizontal dashes extends between the horizontal clipped p2 line and
ROW1_MAX_MIN. What determines whether the crash-pulse energy term
is increased, however, is the relationship of p3 to ROW1_MAX_MIN
(Spec. ¶ 25), not a line origin. Regardless, even if the vertical line with
horizontal dashes can somehow be considered a reference value, the claim 1
language “origin biased in the direction of the second acceleration”
encompasses an origin at any point on that line and any other origin in the p2
direction. For this additional reason the “origin biased in the direction of the
second acceleration” limitation renders the scope of claim 1 unclear.
The Appellant’s claim 12 differs from claim 1 by reciting that the
third acceleration is in a direction generally the same as the first
acceleration. That limitation appears to be implicit in claim 1 because, as
disclosed in the Appellant’s Specification (Spec. ¶¶ 23 and 25), both the first
and third accelerations are in the crash direction. Regardless, as in claim 1,
“origin biased in the direction of the second acceleration” renders claim 12
indefinite.
The Examiner argues that it is unclear whether “origin” refers to
magnitude or the timing (Ans. 6).5 The Appellant responds (Br. 10):
As to it not being clear if the original [sic, origin] stands for the
“magnitude” or the “timing,” the entirety of the specification makes
this clear. Note labels t0, “crash direction” and “anti-crash direction.”

5 This argument was set forth by the Examiner with respect to the rejection
under 35 U.S.C. § 112, first paragraph, written description (Ans. 6), but we
discuss it with respect to the rejection under 35 U.S.C. § 112, second
paragraph, because it is a claim clarity issue.
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Appellant also labels the timing bars TL0, TL1, etc., to illustrate the
time periods as discussed in the specification.

As indicated in the Appellant’s figure 4, “t0” and the timing bars pertain to
time whereas “crash direction” and “anti-crash direction” pertain to
magnitude. Hence, the Appellant’s argument that mixes t0, “crash
direction”, “anti-crash direction”, TL0 and TL1 supports the Examiner’s
argument that it is unclear whether “origin” pertains to time or magnitude.
For the above reasons the Appellant’s independent claims 1 and 12
and dependent claims 2-8, 11, 13-18 and 21-27 fail to comply with the
35 U.S.C. § 112, second paragraph, claim clarity requirement.
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner argues that the Appellant’s original disclosure does not
provide adequate written descriptive support for “reference value having an
origin biased in the direction of the second acceleration” in step (5) of
independent claims 1 and 12 (Ans. 10). The Appellant argues that “[a]s
illustrated in Figure 4, the horizontal line which cuts across peak P2 defines
the origin that is biased in the direction of the second acceleration” (Br. 10).
That line may be an origin biased in the direction acceleration, but it does
not define the origin biased in the direction of the second acceleration. Any
point in the direction of the second acceleration arguably can also be an
origin biased in the direction of the second acceleration. The Appellant’s
original disclosure does not provide adequate written descriptive support for
that breadth of “reference value having an origin biased in the direction of
the second acceleration” added by amendment (filed August 22, 2005).
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For the above reasons the Appellant’s independent claims 1 and 12
and dependent claims 2-8, 11, 13-18 and 21-25 fail to comply with the
35 U.S.C. § 112, first paragraph, written descriptive support requirement.
The Examiner argues that the recitations in claims 21-25 regarding the
origin do not have adequate written descriptive support in the Appellant’s
original disclosure (Ans. 6). The Appellant does not respond to the
Examiner’s argument. For this additional reason we find that claims 21-25
fail to comply with the 35 U.S.C. § 112, first paragraph, written descriptive
support requirement.
Objection to the Specification under 35 U.S.C. § 132
Because the Specification and the claims contain new matter and the
Examiner has both objected to the Specification and rejected the claims
based upon that new matter, we rule on the propriety of the objection to the
Specification. See Manual of Patent Examining Procedure § 2163.06(II)(8th
ed., rev. 5, Aug. 2006).
The Examiner argues that “The origin of the first peak reference value
(dashed vertical line) is located at a percentage of the first peak value” added
to Specification paragraph 24 is new matter (Ans. 4-5). The Appellant
argues that support appears in the notation in figure 4 that “The minimum is
clipped below zero to a percentage of the first peak (p1) size (ex. 50%)” (Br.
9). That argument is not well taken because the Appellant’s original
disclosure indicates that the first peak reference value is ROW1_MAX_MIN
(Spec. ¶ 23), not the clipped p2 peak. The Appellant also argues that “still
further explanation is provided throughout the Appellant’s specification”
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(Br. 9). Because the Appellant does not point with reasonable specificity to
any relied-upon portion of the Specification, that argument is not persuasive.
The Examiner argues that “That is, the origin of the first peak
reference value is biased in the direction of the second peak” added by
amendment (filed Aug. 22, 2005) to Specification paragraph 25 is new
matter (Ans. 5). The Appellant argues that “Appellant’s added statement
‘that is, the origin of the first peak reference value is biased in the direction
of the second peak’ simply recites what Appellant had previously stated in a
more concise sentence” (Br. 9). The previous sentence originally read:
“Where acceleration peak p3 crosses the ROW1_MAX_MIN level initiates
an increase in the CPE term (CPE1) because the energy of [sic] is greater
than p1 when considering the origin of p3 and the time interval between p1
and p3.” The Appellant amended that sentence to read: “Where acceleration
peak p3 increases above the first peak reference value the CPE term (CPE1)
is increased because the energy is greater than p1 when considering the
origin of p3 and the time interval between p1 and p3.” Both of those
sentences pertain to the CPE term increasing when acceleration peak p3
crosses the first peak reference value which is ROW1_MAX_MIN. It does
not follow from either the original or the modified sentence that the origin of
the first peak reference value is biased in the direction of the second peak as
stated in the next sentence added by amendment. The added sentence is
broader and introduces the concept of the first peak reference value, rather
than being limited to ROW1_MAX_MIN, being any value biased in the
direction of the second peak. Hence, the added sentence adds new matter to
the Specification.
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We therefore sustain the Examiner’s objection to the Specification
under 35 U.S.C. § 132.
Rejection under 35 U.S.C. § 103
In some instances, it is possible to make a reasonable, conditional
interpretation of claims adequate for the purpose of resolving patentability
issues to avoid piecemeal appellate review. In the interest of administrative
and judicial economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. &
Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other
instances, however, it may be impossible to determine whether or not
claimed subject matter is anticipated by or would have been obvious over
references because the claims are so indefinite that considerable speculation
and assumptions would be required regarding the meaning of terms
employed in the claims with respect to the scope of the claims. See In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). For the
reasons set forth above the Appellants’ claims are sufficiently indefinite that
application of the prior art to the claims is not possible.
The Appellant argues that “the horizontal lines which extend from an
apex of a peak (or are clipped to a percentage thereof) and then pass through
a subsequent peak are for reference only to define the biased origin for
measurement of subsequent peaks” (Br. 9). Feser’s statement that “[t]he
CPF term exclusively supplies a contribution to the threshold when the level
of the minimum Am2 occurring later in time is greater than the level of the
minimum Am1 earlier in time” (col. 8, ll. 53-56) indicates that a crash pulse
energy term (CPF) is increased when Am2 exceeds the horizontal line
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through Am1 in Feser’s figure 7. Hence, if the Appellant’s claim limitation
“reference value having an origin biased in the direction of the second
acceleration” encompasses a horizontal line from a previous peak, then in
Feser’s figure 7 the horizontal line at Am1 can be a reference value for peak
Am2 having an origin biased in the direction of the second acceleration (Am).
However, because, as discussed above regarding the rejection under
35 U.S.C. § 112, second paragraph, that claim limitation can have other
meanings that render the scope of the claims unclear, Feser cannot be
applied to the claims. Consequently we do not reach the rejection under
35 U.S.C. § 103.
DECISION
The rejections of claims 1-8, 11-18 and 21-25 under 35 U.S.C. § 112,
second paragraph, and under 35 U.S.C. § 112, first paragraph, written
description requirement, are affirmed. We sustain the objection to the
Specification under 35 U.S.C. § 132. Due to the indefiniteness of the claims
we do not reach the rejection under 35 U.S.C. § 103.
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AFFIRMED

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

vsh

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