Ex Parte Desens et al

Board of Patent Appeals and Interferences

Jan 13, 2009

10497770 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JENS DESENS, STEFAN HAHN, and FRIDTJOF STEIN
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Appeal 2008-2619
Application 10/497,770
Technology Center 3600
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Decided: January 13, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jens Desens et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1-7. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
Appeal 2008-2619
Application 10/497,770

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The claimed invention is directed to an improvement in an automatic
following-distance control system that includes automatic lane change
operations. (Specification 2:¶0006.) In particular, the improvement
comprises the addition of lateral sensors that monitor the space next to the
vehicle and the space behind the vehicle. (Specification 6:¶00020.)
The claimed feature, reproduced below, is representative of the
subject matter on appeal.
at least one lateral sensor (8; 10) for monitoring a
lateral space (12; 14) in an adjacent lane beside
and/or behind the motor vehicle (E).

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Dobler US 6,038,496 Mar. 14, 2000
Yano US 6,282,483 B1 Aug. 28, 2001
Nakamura US 6,311,123 B1 Oct. 30, 2001

THE REJECTIONS
The following Examiner’s rejections are before us for review:
Claims 1-3, 5, and 6 are rejected under 35 U.S.C. § 102(a)1 as being
anticipated by Yano.

1 While the Examiner rejected claims 1-3, 5, and 6 under § 102(a) as being
anticipated by Yano (and the Appellants agree, see Br. 3), Yano qualifies
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Appeal 2008-2619
Application 10/497,770

Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yano and Nakamura.
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yano and Dobler.

ISSUE
The Appellants contend the Examiner erred in rejecting the claims
because the lateral sensor disclosed in Yano is not “capable of monitoring a
lateral space in an adjacent lane besides [sic] and/or behind the motor
vehicle.” (Br. 5.)
The Examiner posits the lateral sensor in Yano “is capable of
detecting a lateral distance to a vehicle (B) if it is arranged to the rear side
of the motor vehicle (E).” (Ans. 5-6.)(Emphasis ours.)
The issue before us is as follows:
Does Yano’s lateral sensor expressly or inherently monitor a lateral
space in an adjacent lane beside and/or behind the motor vehicle?

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
also as prior art under § 102(e)(2), i.e., a patent (US 6,282,482 B1) granted
on an application for patent (Appl. No.: 09/628,442) by another (Yano) filed
in the United States (filed: Jul. 28, 2000) before the invention by the
applicant for patent (Appellants’ asserted priority date is Dec. 5, 2001).
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Appeal 2008-2619
Application 10/497,770

1. Yano discloses a lateral sensor 1507 that detects the traveling
direction distance and the lateral distance to a front obstacle. (Yano,
col. 17, ll. 25-27.) As such, Yano’s lateral sensor monitors the space
in front of the vehicle.
2. The Examiner has not used Nakamura or Dobler to disclose, teach, or
suggest a lateral sensor that monitors a lateral space in an adjacent
lane beside and/or behind the motor vehicle.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
When relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art. See Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990).
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Application 10/497,770

ANALYSIS
The claims require that the lateral sensor on the motor vehicle
monitors the lateral space in an adjacent lane beside and/or behind the motor
vehicle. Therefore, in order for the prior art to anticipate the claim, the
lateral sensor must expressly or inherently monitor the lateral space in an
adjacent lane beside and/or behind the motor vehicle.
Yano’s lateral sensor monitors the space in front of the motor vehicle
and not beside and/or behind the motor vehicle. (Fact 1.) The Examiner
commented that Yano’s lateral sensor could monitor the lateral space as
called for in the claim, “if it is arranged to the rear side of the motor vehicle
(E).” (See Ans. 6.) As such, the Examiner concluded Yano anticipates the
claims. However, for a single prior art reference to anticipate a claimed
feature, it must disclose, either explicitly or inherently, the claimed feature
as arranged in the claim. Yano’s lateral sensor, as it is arranged on the
motor vehicle, does not expressly monitor the lateral space in an adjacent
lane beside and/or behind the motor vehicle. Neither can the lateral sensor
inherently monitor the lateral space in an adjacent lane beside and/or behind
the motor vehicle because there is no basis in fact or technical reason to
conclude such monitoring necessarily flows from the teachings of Yano, i.e.
the lateral sensor’s present location and position preclude it from inherently
monitoring the lateral space as claimed. The Examiner’s rejection requires
a structural change to the position of Yano’s lateral sensor, viz., moving it to
the rear side of the motor vehicle (E), for the sensor to monitor the space
claimed and this is the error in the Examiner’s rejection.
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Application 10/497,770

The rejections of claims 4 and 7 under § 103(a) are grounded in part
on the Examiner’s flawed finding that Yano’s lateral sensor monitors the
lateral space in an adjacent lane beside and/or behind the motor vehicle. The
Examiner does not use Nakamura or Dobler to cure this deficiency in Yano.
(Fact 2.) Accordingly, these rejections of claims 4 and 7 are improper for
the reason discussed above.

CONCLUSION
Yano’s lateral sensor does not expressly or inherently monitor the
adjacent lane beside and/or behind the motor vehicle.

DECISION
The Examiner’s decision to reject claims 1-3, 5, and 6 as being
anticipated by Yano; claim 4 as being unpatentable over Yano and
Nakamura; and claim 7 as being unpatentable over Yano and Dobler is
reversed.

REVERSED

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Appeal 2008-2619
Application 10/497,770

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