Ex Parte Goettsch et al

Patent Trial and Appeal Board

Jun 14, 2016

13056950 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/056,950 04/15/2011
24972 7590 06/16/2016
NORTON ROSE FULBRIGHT US LLP
666 FIFTH A VE
NEW YORK, NY 10103-3198
FIRST NAMED INVENTOR
Gerhard Goettsch
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.
10191/6403 8073
EXAMINER
MARNE, KEVIN P
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD GOETTSCH and DOMINIK MERLEIN
Appeal2014-005237
Application 13/056,9501
Technology Center 3600
Before NEALE. ABRAMS, ERIC C. JESCHKE, and MARK A. GEIER,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerhard Goettsch and Dominik Merlein (Appellants) seek review,
under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 11-
21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Robert Bosch GmbH as the real party in interest.
Appeal Br. 1.
2 Claims 1-21 are listed as rejected in the Office Action Summary
(Final Act. 1 (mailed June 27, 2013)) but the Examiner acknowledges that
only "[ c ]laims 11 thorough 21 are presently pending" (id. at 2). Thus, we do
not address claims 1-10.
Appeal2014-005237
Application 13/056,950
BACKGROUND
The disclosed subject matter relates to "preventing the lateral rollover
of motor vehicles." Spec. 1, 11. 12-13.3 Claims 11, 20, and 21 are
independent. Claim 11 is reproduced below:
11. A method for preventing a lateral rollover of
a motor vehicle, comprising:
ascertaining, by a computer processor, a
transverse variable that represents lateral transverse
dynamics of the motor vehicle;
comparing, by the computer processor, the
transverse variable to at least one threshold value;
a brake control module making a braking
intervention to prevent the lateral rollover,
depending on the comparison; and
ascertaining, by the computer processor, an
inclination variable that represents a lateral
inclination of a vehicle body, wherein the threshold
value is a function of the inclination variable.
REJECTIONS
1. Claim 20 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 11, 12, 14, 16, and 19-21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lu '248 (US 2008/0086248 Al, published
Apr. 10, 2008) and Le (US 2009/0150021 Al, published June 11, 2009).
3 All citations to the Specification refer to the Substitute Specification
filed on January 31, 2011, which includes the footer "SUBSTITUTE
SPECIFICATION." The original Specification was filed the same day.
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Application 13/056,950
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lu '248, Le, and Lu '112 (US 2006/0085112 Al, published Apr. 20,
2006).
4. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lu '248, Le, and Lim (US 2006/0076741 Al, published Apr. 13, 2006).
5. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lu '248, Le, and Woywod (US 2008/0133101 Al,
published June 5, 2008).
DISCUSSION
Rejection I -The rejection of claim 20
under 3 5 U.S. C. § 112, first paragraph
The Examiner rejected claim 20, finding that the Specification lacks
written description support for "a computer processor configured to"
perform the recited functions because "[t]here is no reference to either a
computer or a processor in the ... written disclosure and the figures do not
show a computer or processor." Final Act. 13. The Examiner stated that the
Specification discloses: (1) a control unit (citing Spec. Fig. 1 ); (2) that the
control unit "stores a rollover stabilization algorithm and includes a sensor
system for detecting a critical driving state and an actuator for carrying out a
stabilization intervention" (citing Spec. 5, 11. 16-25)4; and (3) a "controller"
(citing Spec. 4, 11. 10-21; 4, 1. 30-5, 1. 4). Id. The Examiner stated that the
4 In the Rejection, the Examiner refers to the Specification using the
paragraph numbers assigned when the Specification published as US
2011/0190976 Al. For clarity, we convert these citations to the page/line
numbering of the Substitute Specification.
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Application 13/056,950
Specification does not, however, disclose "that the control unit or the
controller is configured to perform the activities listed in Claim 20." Id.
Appellants argue that "[ o ]ne of ordinary skill in the art would
appreciate that the [S]pecification as originally filed implicitly and/or
inherently discloses a control unit configured to perform the ascertainment
and comparison steps of claim 20." Appeal Br. 4. Appellants state that the
Specification describes "a control unit 1 storing a rollover stabilization
algorithm 4" (citing Spec. 5, 11. 16-17) and describes the algorithm (citing
Spec. 5, 1. 27+ ). Id. Appellants argue that "a device that executes an
algorithm is by definition a computer processor" and that "[i]t is understood
that a stored algorithm for performing described process steps is executed by
the control unit in order to achieve such processing." Id.
The Examiner responds that Appellants do not address all the recited
limitations because Appellants do not "provide reasoning as to why the
original disclosure explicitly, inherently, or implicitly discloses a computer
processor that is configured to conduct a braking intervention to prevent
lateral rollover, depending on the comparison." Ans. 4. According to the
Examiner, "it is clear from [Appellants'] original disclosure that the actuator
(e.g. brake control module) carries out the stabilization intervention not the
control unit which includes the algorithm." Id. (citing Spec. 5, 11. 16-25 and
discussing the "brake control module" recited in claims 11 and 21 ).
The test for compliance with the written description requirement is
"whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). We find, on the record
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Application 13/056,950
here, that the Specification provides sufficient written description support of
the subject matter recited in claim 20.
As noted by Appellants (Appeal Br. 3), the Examiner acknowledges
that the control unit (see Spec. 5, 11. 16-17) inherently includes a generic
computer processor. See Final Act. 5 ("It is acknowledged that a computer
processor is inherent in the control unit (1) which stores a rollover
stabilization algorithm (4) ([S]pecification pg 5, ln 16-25) and the disclosure
implicitly teaches a computer processor as part of the control unit."). The
Specification also, as noted by Appellants (Appeal Br. 4), provides that
control unit 1 stores rollover stabilization algorithm 4 (see Spec. 5, 11. 16-
17), and describes that algorithm starting at page 5, line 27. Based on these
disclosures, we find that Appellants have demonstrated possession of the
claimed subject matter because a person of ordinary skill in the art would
reasonably infer that the processor necessarily required to perform the
disclosed stored algorithm (reflected in the functions recited in claim 20) and
the processor inherently in control unit 1 are the same processor. 5
We tum now to the Examiner's positions regarding the last limitation
of claim 20, which requires a computer processor configured to "conduct a
braking intervention to prevent the lateral rollover, depending on the
comparison." Appeal Br., Claims App. 2 (emphasis added). Although the
5 To the extent argued, however, we find that Appellants have not
demonstrated possession of a processor other than that inherently in control
unit 1 that is configured to perform the recited functions. See Appeal Br. 4
(stating "one of ordinary skill in the art would understand that the described
steps are indeed performed by a processor executing the algorithm"
(emphasis added)); see also Reply Br. 2 ("Thus, the [S]pecification, which
describes a device that executes a roll stabilization algorithm, by definition,
discloses the claim 20 feature of a computer processor." (emphasis added)).
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Application 13/056,950
Specification describes "actuator 3 for carrying out a stabilization
intervention" (Spec. 5, 11. 18-19 (emphasis added)) and although claims 11
and 21 each recite "a brake control module making a braking intervention"
(Appeal Br., Claims App. 1, 2 (emphasis added)), the Examiner has not
shown that "conduct" should be construed as "carrying out" or "making."
The Specification does not use the term "conduct." In light of the
description of the rollover stabilization system as a whole (see Spec. 5, 1. 16
- 6, 1. 6), we construe the term "conduct" in claim 20 as "to direct or
control." See The American Heritage® Dictionary of the English Language,
http ://literati. credoreference. com/ content/ entry /hmdictenglang/ conduct
(Definition 1 - "To direct the course of; manage or control") (last visited
June 10, 2016).
Based on that construction, we find that Appellants have demonstrated
possession of the claimed subject matter because a person of ordinary skill
in the art would understand that the claimed "processor" (inherently in
control unit 1) directs or controls actuator 3 (i.e. the "brake control module"
in claims 11 and 21 ), which actually performs or carries out the braking
operation. See Reply Br. 3 ("Thus, the processor conducts a braking
intervention in the sense that the processor makes the ultimate determination
of whether and in what manner to conduct the braking intervention, and
accordingly triggers the actuator."). For these reasons, we do not sustain the
rejection of claim 20 under 35 U.S.C. § 112, first paragraph.
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Rejection 2- The rejection of claims 11, 12, 14, 16,
and 19-21under35 U.S.C. § 103(a)
Appellants state that each of the independent claims in this
Rejection---claims 11, 20, and 21-"recites comparing the transverse
variable [which represents lateral transverse dynamics of a vehicle] to at
least one threshold value, where the threshold value is a function of the
inclination variable." Appeal Br. 5 (emphasis omitted). Appellants contend
that relied-upon prior art "does not disclose or suggest this feature." Id.
To address the "comparing" limitations in claims 11, 20, and 21 (a
subset of the limitations argued by Appellants), the Examiner relied on
various aspects of Le, which, according to the Examiner, teaches "a rollover
detection system with a control module that generates a vehicle control
signal based on a first rollover threshold and a second rollover threshold."6
Final Act. 15 (claim 11 ), 18 (claim 20), 19 (claim 21 ). According to the
Examiner, "[t]he first rollover threshold in [Le] reads on the limitation at
least one threshold value" and the "second rollover threshold taught by [Le]
reads on the limitation 'the transverse variable.'" Ans. 6.
The record here does not support the Examiner's findings that Le
satisfies the "comparing" limitations. As argued by Appellants, the
Examiner "relies on Le's description of a control module that generates a
vehicle control signal based on the two threshold values as assertedly
disclosing making a comparison between the transverse variable and at least
6 As the "comparing" limitations, we collectively refer to the
following claim language: (1) in claim 11: "comparing by the computer
processor, the transverse variable to at least one threshold variable"; (2) in
claim 20: "compare the transverse variable to at least one threshold value";
and (3) in claim 21: "comparing, by the computer processor, the transverse
variable to at least one threshold value."
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Application 13/056,950
one threshold value, as recited in the independent claims." Reply Br. 3
(citing Le i-f 5) (emphasis in original omitted and new emphasis added); see
also Ans. 11 (stating that Le teaches "a control module that generates a
vehicle control signal based on (compare): (1) a first rollover threshold ...
and (2) a second rollover threshold"); Ans. 7 ("The vehicle control signal
which is establish[ ed] by the control module based on the first rollover
threshold and a second rollover threshold taught by [Le] reads on the
limitation 'comparing, by the computer processor the transverse variable to
at least one threshold value.'").
As further argued by Appellants, "more accurately, Le describes a
control module adapted to 'generate a control signal in response to the first
threshold or the second threshold,"' but that description "does not disclose
or suggest comparing two values, because the generation described by Le
may be based on just one of the values, in which case, a comparison cannot
be made, because a comparison requires two values." Reply Br. 3 (quoting
Le i-f 5); see also Le, claim 34 (relied on at Final Act. 15, 18, 19-20).
Thus, we do not sustain the rejection of claims 11, 20, and 21, or the
rejection of claims 12, 14, 16, and 19, which depend from claim 11.
Rejections 3-5 -The rejections of claim 13, 15,
17, and 18 under 35 U.S.C. § 103(a)
Claims 13, 15, 17, and 18 depend from claim 11. Appeal Br., Claims
App. 1-2. The Examiner's added reliance on Lu '112 (regarding Rejection
3), Lim (regarding Rejection 4), and Woywod (regarding Rejection 5) does
not remedy the deficiencies in the combined teachings of Lu '248 and Le,
discussed above (see supra Rejection 2). Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 13, 15, 17, and 18.
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Application 13/056,950
DECISION
We REVERSE the decision to reject claim 20 under 35 U.S.C. § 112,
first paragraph and REVERSE the decision to reject claims 11-21 under
35 U.S.C. § 103(a).
REVERSED
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