Ex parte Asanuma

Board of Patent Appeals and Interferences

Apr 15, 1999

08218136 (B.P.A.I. Apr. 15, 1999)

Application for patent filed March 25, 1994.1
1
Paper No. 23
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte NOBUYOSHI ASANUMA
______________
Appeal No. 96-1920
Application 08/218,1361
_______________
HEARD: APRIL 8, 1999
_______________
Before KRASS, JERRY SMITH and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1 and 3-12, which
constitute all the claims remaining in the application.
Appeal No. 96-1920
Application 08/218,136
2
The disclosed invention pertains to a control system for
controlling the steering device of a vehicle. More
particularly, the invention estimates the driving skill of a
vehicle operator and uses this estimate to determine a level
of intervention for the control system. In this manner the
level of intervention for an automatic control system can be
decreased as the operator’s skill level increases.
Representative claim 1 is reproduced as follows:
1. A system for controlling a vehicle steering device
according to an operating condition of a vehicle, comprising:
means for detecting an operating condition of said
vehicle;
means for controlling said vehicle steering device
according to data on said operating condition detected by said
detecting means;
means for estimating a driving skill of a vehicle
operator according to an operation executed by said vehicle
operator;
means for modifying a property of said controlling means
according to said driving skill estimated by said driving
skill estimating means;
said operating condition includes at least one of a yaw
movement and a lateral acceleration of said vehicle; and
a level of intervention of said control means on said
steering device is decreased when said estimated driving skill
is relatively high.
Appeal No. 96-1920
Application 08/218,136
3
The examiner relies on the following references:
Furukawa et al. (Furukawa) 4,412,594 Nov. 01, 1983
Nishikawa et al. (Nishikawa) 4,949,268 Aug. 14, 1990
Takahashi (Takahashi ’997) 5,162,997 Nov. 10, 1992
Takahashi (Takahashi ’785) 5,172,785 Dec. 22, 1992
The following rejections have been made against the
claims and are on appeal before us:
1. Claims 9-12 stand rejected under 35 U.S.C. § 112,
first paragraph, based on the disclosure being inadequate to
support claims directed to use of a global positioning system.
2. Claims 8-12 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the invention.
3. Claims 1, 3 and 5-7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by the disclosure of Furukawa.
4. Claims 4 and 10 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Furukawa taken
alone.
5. Claims 8, 9, 11 and 12 stand rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of
Appeal No. 96-1920
Application 08/218,136
4
Furukawa in view of Nishikawa.
6. Claim 1 stands rejected under 35 U.S.C. § 102(e) as
being anticipated by the disclosure of Takahashi ’997.
7. Claim 1 stands rejected under 35 U.S.C. § 102(e) as
being anticipated by the disclosure of Takahashi ’785.
8. Claims 3-7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Takahashi ’785 in
view of Furukawa.
9. Claims 8-12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the teachings of Takahashi ’785 in
view of Furukawa, and further in view of Nishikawa.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of anticipation
Appeal No. 96-1920
Application 08/218,136
5
and obviousness relied upon by the examiner as support for the
prior art rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the specification and the claims comply with
the requirements of the first and second paragraphs of 35
U.S.C.
§ 112. We are also of the view that none of the examiner’s
prior art rejections is adequately supported by the prior art
of record in this case except for the rejection of claim 1
under 35 U.S.C.
§ 102(e) as anticipated by Takahashi ’785. Accordingly, we
affirm-in-part.
We consider first the rejection of claims 9-12 under
the first paragraph of 35 U.S.C. § 112. The examiner asserts
that the present disclosure is not sufficient to enable one of
ordinary skill in the art to use a global positioning system
Appeal No. 96-1920
Application 08/218,136
6
(GPS) to determine actual and target trajectories in order to
control steering as claimed [answer, pages 2-3]. The examiner
also questions the accuracy of GPS systems for use in the
instant invention and questions whether there are
preprogrammed maps provided to users of GPS [id., pages 11-
13].
Appellant argues that the Nishikawa GPS system, which
is cited by the examiner, “would be sufficient for determining
if a vehicle had strayed from the dimensions of a given road,
and would be sufficient for determining a target travel
trajectory according to the present invention” [brief, page
12]. Appellant
also argues that the examiner bases his position on his
alleged personal knowledge which has not been properly
factually supported on this record [reply brief].
The examiner has the burden of giving reasons,
supported by the record as a whole, why the specification is
not enabling. Showing that the disclosure entails undue
experimentation is part of the examiner’s initial burden. In
Appeal No. 96-1920
Application 08/218,136
7
re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976).
The examiner’s position is based on his personal assessment of
the capabilities of GPS systems. Appellant has argued that
the GPS system of the cited prior art could be used to
implement the claimed invention.
We will not sustain this rejection. First, we note
that only claims 9 and 12 recite a GPS system. Dependent
claims 10 and 11 are not directed to this area of the
invention. Second, we agree with appellant that the examiner
has not properly supported his assertion of nonenablement in
this case. The claims merely recite that a reference travel
trajectory is determined from data given from a preprogrammed
map of a GPS. We see no reason why the artisan would have
difficulty preparing a preprogrammed map of an area based on
GPS data. Once the map is generated, a path on the map can be
monitored and a reference trajectory can be easily determined
as asserted by appellant. On this record we find no support
for the examiner’s position that the disclosure is not
enabling. Therefore, we do not sustain this rejection of
claims 9-12.
Appeal No. 96-1920
Application 08/218,136
8
We next consider the rejection of claims 8-12 under
the second paragraph of 35 U.S.C. § 112. The examiner’s
rejection states the following:
Claims 8,9 and 11,12 claim a GPS
system forming the reference path of
the vehicle. The claims are rejected
for the same reason as in the 112,
first paragraph rejection above
[answer, page 4].
Appellant argues that the claims would be clearly understood
by persons of ordinary skill in the art, especially when
considered in light of the disclosure [brief, pages 14-15].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
Appeal No. 96-1920
Application 08/218,136
9
We will not sustain this rejection because the
examiner has offered no explanation as to why the claims are
indefinite within the meaning of the second paragraph of 35
U.S.C. § 112. The examiner states that this rejection is made
for the same reasons as the rejection under the first
paragraph of 35 U.S.C.
§ 112, but we see no basis for using the alleged nonenablement
of the disclosure to reject claims as being indefinite.
Nevertheless, we agree with appellant that the artisan having
considered the specification of this application would have no
difficulty ascertaining the scope of the invention recited in
claims 8-12. Therefore, we do not sustain this rejection of
claims 8-12.
We now consider the rejection of claims 1, 3 and 5-7
under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Furukawa. Anticipation is established only when
a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Appeal No. 96-1920
Application 08/218,136
10
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore and
Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he reads independent
claim 1 on the disclosure of Furukawa [answer, page 4].
Appellant argues that “the Furukawa reference does not
disclose or in any way suggest means for estimating the
driving skill of the vehicle operator as defined by
independent claim 1" [brief, page 15]. The examiner responds
that Figures 2A and 2B of Furukawa disclose skill level of a
vehicle operator, and this data is used to control automobile
steering [answer, pages 13-14]. Appellant argues that
Furukawa does not detect or estimate a driver’s skill level
nor use this information to control steering compensation
[reply brief].
We will not sustain this rejection. Appellant is
absolutely correct that Furukawa does not disclose a means for
Appeal No. 96-1920
Application 08/218,136
11
estimating a driving skill of a vehicle operator nor the
modification of a property of the controlling means according
to this estimated driving skill. Furukawa merely uses the
graphs of three skill levels to select a steered angle ratio
for use with all drivers. The skill of any single driver is
not measured in Furukawa, and consequently, no modification of
the control in Furukawa is based on the individual skill level
of the vehicle
operator. Therefore, Furukawa does not fully meet the
invention of independent claim 1. Therefore, we do not
sustain this rejection of claims 1, 3 and 5-7.
We now consider the rejection of claims 4 and 10 under
35 U.S.C. § 103 as unpatentable over the teachings of Furukawa
taken alone and the rejection of claims 8, 9, 11 and 12 under
35 U.S.C. § 103 as unpatentable over the teachings of Furukawa
in view of Nishikawa. Each of independent claims 1, 8 and 9
on appeal recites either a means for estimating a driving
skill of
Appeal No. 96-1920
Application 08/218,136
12
a vehicle operator [claim 1] or a means for evaluating driving
skill based on a comparison [claims 8 and 9]. As we noted
above, Furukawa does not disclose or suggest either of these
features
of the claimed invention. Nishikawa does not overcome this
deficiency in Furukawa. Therefore, we do not sustain the
examiner’s rejection of these claims under 35 U.S.C. § 103.
We now consider the rejection of claim 1 under 35
U.S.C. § 102(e) as being anticipated by the disclosure of
Takahashi ’997. The examiner indicates how he reads claim 1
on the disclosure of Takahashi ’997 on pages 6-7 of the
answer. Appellant argues that Takahashi ’997 “does not
include or in any way suggest means for estimating a driving
skill of the vehicle operator according to an operation
executed by the operator” [brief, page 18]. The examiner
responds that Takahashi ’997 teaches a means for learning a
driver’s unique characteristics and a control output which
recalls the relationship between vehicle driving parameters
and the personal driving characteristics of the driver
[answer, page 15]. Appellant argues that Takahashi ’997 never
Appeal No. 96-1920
Application 08/218,136
13
estimates the driver’s driving skill nor specifically estimate
the skill according to an operation executed by the driver as
required by claim 1 [reply brief, page 10].
We will not sustain this rejection. We agree with the
arguments offered by appellant. The driving characteristics
stored in Takahashi ’997 are not an estimation of the driving
skill of a vehicle operator. Although it may be possible to
make this determination based on the stored data, Takahashi
’997 never discloses or suggests that this data is used to
estimate the driving skill of the operator. Takahashi ’997
simply allows control of a vehicle to be based on an
operator’s previous driving habits at the option of the
driver. Although the driving habits of a vehicle operator may
be evidence of his driving skill, Takahashi ’997 does not
estimate this skill or adjust the
level of control based on the individual skill level of the
operator. Since Takahashi ’997 does not fully meet the
invention of claim 1, we do not sustain this rejection of
Appeal No. 96-1920
Application 08/218,136
14
claim 1.
We now consider the rejection of claim 1 under 35
U.S.C. § 102(e) as being anticipated by the disclosure of
Takahashi ’785. The examiner indicates how he reads claim 1
on the disclosure of Takahashi ’785 on pages 7-8 of the
answer. Appellant argues that Takahashi ’785 “does not
include a control means for controlling a steering device
according to a detected vehicle operating condition such as
yaw rate and/or lateral acceleration, as well as means for
modifying a property of the controlling means based on an
estimated driver’s skill level as claimed” [brief, pages 18-
19]. The examiner responds that Takahashi ’785 determines a
driver’s skill level and uses this determination to adjust the
level of control [answer, page 15]. Appellant argues that
Takahashi ’785 controls the vehicle steering system
exclusively based on detected data of a driver’s steering
input to a steering wheel rather than on an actual operating
condition of the vehicle [reply brief, pages 11-12].
Appellant also argues that the intervention in Takahashi ’785
may not necessarily decrease the level of control based on the
Appeal No. 96-1920
Application 08/218,136
15
skill of the operator.
We will sustain this rejection of claim 1. Takahashi
’785 discloses one embodiment for controlling vehicle
steering, a second embodiment for controlling vehicle braking,
and a third embodiment for controlling vehicle acceleration.
We are concerned only with the vehicle steering embodiment.
Takahashi ’785 discloses that his control system receives
steering angle 2 as an input signal and produces a control
signal as an output signal based on a transfer function
[column 4, lines 42-46]. The transfer function
characteristics are adjusted based on estimated steering
characteristics determined by monitoring actual operations
executed by a driver.
We consider the commanded steering angle in Takahashi
’785 to be an operating condition of the vehicle. Since
steering angle is a demand for yaw movement, we consider the
steering angle in Takahashi ’785 to meet the claim recitation
of at least one of a yaw movement and a lateral acceleration
of the vehicle. Appellant’s argument that Takahashi ’785 does
not disclose yaw rate is not commensurate in scope with the
Appeal No. 96-1920
Application 08/218,136
16
invention of claim 1. We are also not persuaded by
appellant’s argument that the level of intervention in
Takahashi ’785 may not always correspond to the actual skill
level of the operator. Even though Takahashi ’785 allows for
age to be considered, which may not always directly correlate
to a driver’s skill level, it is clear that Takahashi ’785
discloses a system in which the desired result is to make the
vehicle easier to operate for an unskilled driver [see
abstract]. Therefore, Takahashi ’785 discloses the control
operation recited in claim 1 even though his preferred
embodiment also uses age which does not always correlate to
skill level. The thrust of his invention is to decrease the
level of intervention when the driving skill is relatively
high.
Based on our discussion above, we conclude that the
invention as broadly recited in claim 1 is fully met by the
disclosure of Takahashi ’785. Therefore, we sustain this
rejection of claim 1.
We now consider the rejection of claims 3-7 under
35 U.S.C. § 103 as being unpatentable over the teachings of
Appeal No. 96-1920
Application 08/218,136
17
Takahashi ’785 in view of Furukawa. In rejecting claims under
35 U.S.C. § 103, it is incumbent upon the examiner to
establish
a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
expected to make the actual determinations set forth in Graham
v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide
a reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
Appeal No. 96-1920
Application 08/218,136
18
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner has addressed the recitations of these
claims and the obviousness of the differences between these
claims and Takahashi ’785 on pages 8-10 of the answer.
Although appellant’s argument that Takahashi ’785 is deficient
has been decided adversely to appellant as discussed above,
appellant also argues that there is no suggestion to combine
the teachings of Takahashi ’785 with Furukawa except for the
examiner’s improper hindsight suggestion [brief, pages 19-22].
The examiner responds that the references are combinable
because both references deal with the subject matter of
controlling steering. Appellant argues that the examiner’s
reasoning does not establish a prima facie case of
obviousness.
We agree with appellant. In our view, the manner in
which Takahashi ’785 and Furukawa control steering is so
Appeal No. 96-1920
Application 08/218,136
19
different that there would be no motivation to use Furukawa’s
technique in the Takahashi ’785 steering control system. As
appellant points out, Furukawa is uniquely designed for use in
a system where the steered angle ratio between the rear and
front wheels is modified based on various operating parameters
of the vehicle. Thus, Furukawa is uniquely concerned with a
vehicle having steering wheels in the front and the back and
with the controlling of the rear steering wheels based on the
measured operating parameters. We agree with appellant that
there is no suggestion within the applied references to apply
teachings of Furukawa to the Takahashi ’785 control system.
Therefore, we do not sustain this rejection of claims 3-7.
We now consider the rejection of claims 8-12 under
35 U.S.C. § 103 as being unpatentable over the teachings of
Takahashi ’785 in view of Furukawa, and further in view of
Nishikawa. The examiner has addressed the recitations of
these claims and the obviousness of the differences between
these claims and the applied references on pages 10-11 of the
answer. Appellant again argues that there is no suggestion
to combine the teachings of Takahashi ’785 with Furukawa and
Appeal No. 96-1920
Application 08/218,136
20
Nishikawa except for the examiner’s improper hindsight
suggestion [brief, page 22]. In addition to the repeated
arguments of the examiner and appellant, appellant also argues
that none of the references discloses or suggests the
integrating of a deviation between a reference trajectory and
an actual trajectory and a comparison of this integration as
recited in these claims [reply brief, page 16].
We agree with all of appellant’s arguments.
Specifically, even though we have previously determined that
Takahashi ’785 does determine or estimate the driving skill of
the vehicle operator, there is no disclosure in Takahashi ’785
of how this
is done except that fuzzy linguistic inference rules are used.
There is no suggestion in Takahashi ’785 that the specific
operations recited in claims 8-12 are performed. Therefore,
we do not sustain this rejection of claims 8-12 under 35
U.S.C.
§ 103.
Appeal No. 96-1920
Application 08/218,136
21
In summary, we have not sustained any of the
examiner’s rejections of the claims except for the rejection
of claim 1 under 35 U.S.C. § 102(e) as anticipated by the
disclosure of Takahashi ’785. Accordingly, the decision of
the examiner rejecting claims 1 and 3-12 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )

Appeal No. 96-1920
Application 08/218,136
22
JS/cam
Appeal No. 96-1920
Application 08/218,136
23
CARRIER, BLACKMAN & ASSOCIATES, P.C.
24101 Novi Road, Suite 100
Novi, MI 48375