Ex Parte Hochkirchen et alDownload PDFPatent Trial and Appeal BoardJun 27, 201311427594 (P.T.A.B. Jun. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/427,594 06/29/2006 Thomas Hochkirchen 81145281 2675 32997 7590 06/27/2013 TUNG & ASSOCIATES 838 WEST LONG LAKE, SUITE 120 BLOOMFIELD HILLS, MI 48302 EXAMINER NGUYEN, CHUONG P ART UNIT PAPER NUMBER 3665 MAIL DATE DELIVERY MODE 06/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte THOMAS HOCHKIRCHEN, MARK EIFERT, MAURICE RIENKS, CHRISTIAN RESS, ARIA ETEMAD, and MARCUS BOERGER ________________ Appeal 2011-001998 Application 11/427,594 Technology Center 3600 ________________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001998 Application 11/427,594 2 STATEMENT OF THE CASE1 Thomas Hochkirchen, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-3, 6, 7, 9, and 10. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellants’ claimed invention relates to a method by means of which it is possible to identify and to predict journey situations in defined categories, so that the information obtained can be used for different applications, for example for controlling a battery charger cycle, or a particle filter regeneration cycle. Spec. 1, ll. 5-12. Claim 1, reproduced below, is illustrative of the subject matter on appeal [bracketed matter and some paragraphing added]. 1. A method for prediction of journey situations, comprising the following steps: [1] defining a plurality of standard journey situations, [2] each standard journey situation based on a plurality of driving state parameters, [3] wherein the plurality of driving state parameters are chosen from a group of variables comprising a mean overall speed, a mean cruise speed, a maximum speed, a stop frequency, an amount of idling operation, an amount of relative deceleration operation, an amount of relative travel operation, an amount of relative acceleration operation, and a mean positive acceleration, said step of defining the plurality of standard journey situations includes obtaining values of the driving state parameters and combining the values to form 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed Jun. 2, 2010) and Reply Brief (“Reply Br.,” filed Oct. 18, 2010), and the Examiner’s Answer (“Ans.,” mailed Aug. 16, 2010). Appeal 2011-001998 Application 11/427,594 3 individual clusters by means of a grouping procedure whereby each cluster identifies a standard journey situation, with each standard journey situation having a unique identifier assigned thereto, the standard journey situations constituting a discrete number of categories; [4] defining a plurality of route state parameters describing the state of a journey route; [5] determining at least one association rule which associates a set of route state parameter values with one of the standard journey situations; [6] recording an intended journey route; [7] determining values of the route state parameters for the intended journey route; and [8] associating the intended journey route with one of the standard journey situations on the basis of the association rule, such that the unique identifier of the standard journey situation is associated with the intended journey route whereby monitoring the unique identifier provides information regarding the driving state parameters along the intended journey route. The Examiner relies upon the following evidence: Murphy US 5,913,917 Jun. 22, 1999 Lutz US 6,249,723 B1 Jun. 19, 2001 Sakamoto US 2003/0050742 A1 Mar. 13, 2003 Neiss US 2004/0068359 A1 Apr. 8, 2004 Claims 1-3, and 6 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Neiss. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Neiss and Sakamoto. Appeal 2011-001998 Application 11/427,594 4 Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Neiss and Murphy. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Neiss, Murphy, and Lutz. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below 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). ANALYSIS Anticipation based on Neiss Claims 1-3 and 6 We agree with Appellants that the Examiner has not made a prima facie showing that any of claims 1-3 or 6 is anticipated by Neiss. In In re Jung, the Federal Circuit held that, during prosecution, an examiner is governed by 35 U.S.C. § 132, which requires notification to an applicant of the reasons for a rejection with “such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Chester v. Miller, 906 F.2d 1574, 1578 (1990)). We find that the Examiner’s broad and unbounded citation to extensive portions of Neiss, with minimal accompanying analysis as to how these citations are applied to the claims, was so uninformative as to prevent Appellants from recognizing and seeking to counter the grounds for rejection. Here the rejection fails to adequately Appeal 2011-001998 Application 11/427,594 5 cite to the argued claim limitations in the prior art reference and a prima facie case has not been established. For example, Appellants contend that Neiss fails to disclose the determining limitation [7] of claim 1. See App. Br. 8. The Examiner initially cites 116 paragraphs ([0045]-[0160]) of Neiss as disclosing limitation [7] of claim 1, with no analysis as to how these paragraphs disclose the claimed determining step. See Ans. 4. Even, in response to Appellants’ arguments, the Examiner still provides no rational explanation of where Neiss actually discloses the claimed determining step. See Ans. 10. In a similar fashion, with respect to claim 6 (which is dependent on claim 1), the Examiner cites, among other portions, 113 paragraphs ([0080]-[0192]) of Neiss as disclosing the additional limitations of claim 6, again with no further analysis. See Ans. 5. With respect to the additional limitations of dependent claim 3, the Examiner cites other unbounded portions, including Neiss “[0035]+” and “[0046]+.” See Id. As a result, we find that the Examiner has not adequately shown where Neiss discloses the at least aforementioned claim limitations. Accordingly, we cannot sustain the Examiner’s rejection of claims 1-3 and 6 as anticipated by Neiss. Obviousness based on Neiss and Sakamoto Claim 7 Claim 7 depends upon claim 1. The Examiner relies on Neiss for the disclosure of the same limitations as discussed above with respect to the anticipation rejection of claim 1. Accordingly, for the reasons discussed above with respect to the anticipation rejection of claim 1, we cannot sustain the Examiner’s rejection of claim 7 as obvious over Neiss and Sakamoto. Appeal 2011-001998 Application 11/427,594 6 Obviousness based on Neiss and Murphy Claim 9 Claim 9 depends upon claim 1. The Examiner relies on Neiss for the disclosure of the same limitations as discussed above with respect to the anticipation rejection of claim 1. Accordingly, for the reasons discussed above with respect to the anticipation rejection of claim 1, we cannot sustain the Examiner’s rejection of claim 9 as obvious over Neiss and Murphy. Obviousness based on Neiss, Murphy, and Lutz Claim 10 Claim 10 depends upon claim 1. The Examiner relies on Neiss for the disclosure of the same limitations as discussed above with respect to the anticipation rejection of claim 1. Accordingly, for the reasons discussed above with respect to the anticipation rejection of claim 1, we cannot sustain the Examiner’s rejection of claim 10 as obvious over Neiss, Murphy, and Lutz. CONCLUSIONS OF LAW We conclude that Appellants have overcome the Examiner’s rejection of claims 1-3, and 6 under 35 U.S.C. § 102(b) as being anticipated by Neiss. We further conclude that Appellants have overcome the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Neiss and Sakamoto. We further conclude that Appellants have overcome the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Neiss and Murphy. Appeal 2011-001998 Application 11/427,594 7 We further conclude that Appellants have overcome the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Neiss, Murphy, and Lutz. DECISION We REVERSE the decision of the Examiner to reject claims 1-3, 6, 7, 9, and 10. REVERSED msc Copy with citationCopy as parenthetical citation