Ex Parte Liu et al

Patent Trial and Appeal Board

Aug 23, 2018

13795461 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/795,461 03/12/2013
28395 7590 08/27/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
YiminLiu
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.
83350806 7017
EXAMINER
ROBERSON, JASON R
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIMIN LIU, PERRY ROBINSON MACNEILLE, and
MICHAEL EDWARD LOFTUS
Appeal2018-000900
Application 13/795,461
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Ford Global Technologies, LLC ("Appellant"), is the applicant, as
provided by 37 C.F.R. § 1.46, and is identified as the real party in interest.
Appeal Br. 2.
Appeal2018-000900
Application 13/795,461
CLAIMED SUBJECT MATTER
Claims 1, 7, and 13 are independent. Claim 1 is illustrative of the
subject matter on appeal, and reads:
1. A system comprising:
a processor configured to:
receive data from a remote server indicating a vehicle
system for which prevention of utilization for a journey's
duration increases the probability of successfully reaching a
destination on a remaining power charge;
determine if the indicated vehicle system corresponds to a
lockable system; and
automatically lock-out the lockable system to prevent
lockable system utilization for the journey's duration.
Appeal Br. (Claims App. 1 ).
REJECTIONS
1. Claims 1, 7, and 13 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1, 7, and 13 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. Claims 1-18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Luke (US 2013/0030630 Al, published Jan. 31, 2013) and
Gutman (US 2012/0173134 Al, published July 5, 2012).
4. Claims 1-18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Luke, Gutman, and Hofbeck (US 2006/0044124 Al,
published March 2, 2006).
5. Claims 1-18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Luke, Gutman, and Sadler (US 8,800,701 Bl, issued Aug.
12, 2014).
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ANALYSIS
Rejection 1: Written Description
Claim 1 recites the limitation, "determine if the indicated vehicle
system corresponds to a lockable system," and claims 7 and 13 both recite a
substantially identical "determining" limitation. 2 Appeal Br. (Claims App.
1-3 ( emphasis added). The Examiner determines that a "lockable system" is
not well-known in the art of vehicle navigation, and there is not "an
adequate written description as to enable a person having ordinary skill in
the art to make or use the claimed invention." Final Act. 2-3 ( emphasis
added). The Examiner acknowledges that paragraph 10 of the Specification
describes "lockable vehicle systems" "as systems that are configured to be
locked-out to prevent utilization for duration of a journey," but states this
term is not further described "as to what kind of lock ( electronic, electric,
mechanical, software, etc.) it is, what differentiates a lockable system from a
non-lockable system, or how the lockable system is differentiated." Id. at 3.
Additionally, the Examiner determines, even assuming a "lockable vehicle
system" is a "lockable option," as described in paragraphs 50 and 60-65 of
the Specification, the term "lock-out" is not described such that a person of
ordinary skill in the art "could understand exactly what is claimed, what kind
of lock it is ( electronic, electric, mechanical, software, etc.), what
differentiates a lockable system from a non-lockable system, or how the
lockable system is differentiated." Id. (emphasis added).
Claim 1 further recites the limitation, "automatically lock-out the
lockable system to prevent lockable system utilization for the journey's
2 Herein, we also refer to these limitations as the "determining limitation."
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duration," and claims 7 and 13 both recite a substantially identical
"automatically locking-out" limitation. 3 Appeal Br. (Claims App. 1-3
( emphasis added). For this limitation, the Examiner determines the
Specification "does not contain a clear written description of the invention in
such full, clear, concise, and exact terms as to enable any person skilled in
the art to which it pertains to make and use the invention." Id. ( emphasis
added). Final Act. 3. The Examiner states that the Specification "fails to
disclose exactly how a vehicle system becomes locked-out." Id.
Appellant points out that paragraph 10 of the Specification describes
both the terms "lock-out" and "lockable" in the passage "lock out the
lockable vehicle systems to prevent utilization of the lockable vehicle
systems for the duration of the journey." Appeal Br. 6. The Examiner
responds that this paragraph does not describe what kind of lock is used or
how the lock-out is achieved. Ans. 4. Appellant also contends that
paragraph 50 of the Specification "is clear that 'locking out' a system means
preventing the driver from using the system." Appeal Br. 6. The Examiner
agrees, but asserts this paragraph also fails to describe what kind of lock is
used or how the lock-out is achieved. Ans. 5.
As for the Examiner's position that the Specification fails to
distinguish between lockable and unlockable systems, Appellant contends
that paragraph 61 states what a "lockable system" is, that is, "lockable
options, in this example, are options such as the HVAC or media that can be
locked out by the vehicle ... the driver may have preset an automatic ... non-
lock-out of various options." Appeal Br. 6-7 (emphasis added). Appellant
3 Herein, we also refer to these limitations as the "automatic lock-out"
limitation.
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further contends this paragraph "states that the driver may present certain
systems to be automatically non-lock[able] ... (nonlockable being the actual
opposite of lockable)." Id. at 6. The Examiner agrees with these
contentions, but asserts paragraph 61 also fails to describe what kind of lock
is used or how the lock-out is achieved. Id.
According to the written description requirement of§ 112, first
paragraph, the Specification "shall contain a written description of the
invention." The test for the sufficiency of the written description "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." See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Claims 1, 7, and 13
recite the terms "lockable system" and "lock-out," but do not claim "a lock."
Although the Examiner seems to agree that paragraph 61 of the Specification
describes what a "lockable system" is (Ans. 6), the Examiner takes the
position that the Specification fails to provide "an adequate written
description as to enable a person having ordinary skill in the art to make or
use the claimed invention" (Final Act. 2-3 (emphasis added)). However,
this position seems more akin to the enablement requirement of§ 112, first
paragraph, rather than the written description requirement. Further, although
the Examiner agrees that paragraph 50 describes what "locking out" a
system means (Ans. 6), the Examiner asserts that the Specification needs to
describe how the lock-out is achieved. This assertion also seems more akin
to the enablement requirement, that is, "how to use" the claimed invention.
Claims 1, 7, and 13 recite that the processor is configured to
"automatically lock-out the lockable system." Appellant contends that "the
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Application 13/795,461
notion of locking out an electronic system is already known." Reply Br. 2.
Appellant also points out that the claims do not recite a particular type of
lock or "a particular methodology of 'how the lockout is achieved,"' "which
is essentially just a re-iteration ... about a lack of the type of lock, because
the how would obviously be 'engaging the lock."' Id. at 2-3. We agree
with Appellant that the Specification need only describe the invention, as
claimed. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1333 (Fed. Cir. 2003). Accordingly, the Specification is not required to
describe what particular kind of lock is used to achieve the "lock-out," or a
particular methodology of achieving the "lock-out."
Thus, we do not sustain the rejection of claims 1, 7, and 13 as failing
to comply with the written description requirement of 35 U.S.C. § 112.
Rejection 2: Indefiniteness
Regarding the "determining" and "automatic lock-out" limitations in
claims 1, 7, and 13, the Examiner determines that the Specification fails to
clearly describe "what kind of lock ( electronic, electric, mechanical,
software, etc.) it is, what differentiates a lockable system from an unlockable
system, or how the lockable system is differentiated," making the claims
indefinite. Final Act. 4. The Examiner also determines that the
Specification "fails to demonstrate what a system 'lock-out' is such that one
of ordinary skill in the art could distinctly understand the claimed invention,
or what structure in the [Specification] is performing the determination of a
lockable system, or what is performing the system lock-out." Id. The
Examiner states, "to overcome this rejection without removal of the term
'lock' or 'lockable' from the claims," Appellant is required to "clearly place
on the record exactly what a system lock (or option lock) is." Id. The
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Examiner then states that a "system/option 'lock-out'" has been interpreted
"as a system that is disabled electronically from use for the duration of the
journey," and a "lockable system" has been interpreted as "a system that is
disabled electronically for the duration of the journey." Id. at 5.
Appellant contends the specific type of "lock" used would be based
on what system is being "locked out." Appeal Br. 7. Appellant also
contends there is no requirement to enumerate the lock possibilities in detail,
as long as a skilled artisan could read the Specification and understand the
appropriate form of lock that could be used in the system. Id.
Regarding the requirement that "applicant clearly place on the record
exactly what a system lock (or option lock) is" (Final Act. 4), Appellant
submits, "a system lock-out or an option lock-out is an action taken that
prevents usage of the system or the option until the system is unlocked ( or
another specified condition for ending the lock occurs)." Appeal Br. 8.
Referencing paragraph 61 of the Specification, Appellant contends that
"lockable options are systems that can be locked out by the vehicle" and
"any skilled artisan would understand this limitation as a determination as to
whether a system that was designated as being preferably prevented from
use by a server, in order to preserve power, could, in fact, be prevented from
being used by a vehicle. I.e., is it lockable." Reply Br. 3--4. Appellant's
interpretation of a "system lock-out" is consistent with the Specification.
We agree with Appellant that one of ordinary skill in the art would
understand the meaning of "lock-out" in view of the Specification.
We understand Appellant's position to be that a "lockable system" is a
system that the processor can lock-out to prevent its usage by a vehicle.
This meaning is consistent with the Specification. For example, the
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Specification describes, with respect to the embodiment shown in Figure 5,
"the process receives a selection of one or more changes that may affect the
efficiency of the vehicle and its ability to reach a destination with a degree
of likelihood 501" and "then the process checks to see if the option is a
'lockable' option 505." Spec. ,r 60 (emphasis added). The Specification
further describes, "[l]ockable options, in this example, are options such as
HVAC or media that can be locked out by the vehicle." Id. ,r 61 (emphasis
added). We agree with Appellant that a skilled artisan would also
understand the meaning of a "lockable system" in view of the Specification.
For these reasons, we do not sustain the rejection of claims 1, 7, and
13 under 35 U.S.C. § 112, second paragraph.
Rejection 3: Obviousness over Luke and Gutman
As to claim 1, the Examiner finds that Luke discloses a processor
configured to meet both the "determining" and "automatic lock-out"
limitations. Final Act. 6. The Examiner states that the claimed vehicle
"lockable system[ s ]" "are simply components/options/systems that are
disabled from use on a temporary basis for the duration of a journey." Final
Act. 6. The Examiner finds that Luke discloses the "shutdown of non-
essential components for the duration of a journey," thereby meeting this
limitation. Id.; see also id. at 5 ( citing Luke ,r,r 17, 21, 102, Fig. 5 (item
508)). The Examiner determines that Luke differs from claim 1 only by
incorporating the invention into a single onboard controller, rather than in
the claimed server/client systems. Final Act. 6. The Examiner relies on
Gutman to teach server/client systems (id. (citing Gutman ,r,r 37--41)), and
concludes that it would have been obvious to incorporate Gutman's teaching
into Luke (id.).
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Luke discloses a vehicle system including a controller that can
determine whether to limit the supply of power to vehicle components.
Luke ,r 21. Luke describes, "[ t ]he controller may cease a supply of power to
at least one non-essential component of the vehicle in response to the
determination." Id. ( emphasis added). Luke further discloses:
As part of limiting the operation, in addition to limiting speed
and/or acceleration the controller may shut down, or reduce
power consumption of other "non-necessary" or "non-essential"
components, such as components not necessary to operation
and/or safety.
Id. ,r 102 (emphasis added).
Appellant contends "locking" a system is different from "turning off'
or "powering down" a system, and a skilled artisan would understand that
"locking" means ''preventing use," whereas "[t]urning off a system leaves
open the possibility that the system can simply be turned back on." Appeal
Br. 9. Appellant contends its "systems are not merely turned off, they
cannot be turned back on, without first being unlocked." Id.
Appellant also contends:
[DJ etermination of whether a system corresponds to a lockable
system is not mere determination as to whether a system
corresponds to a system that can be turned off (e.g., non-
essential system). Instead, the claims require that the system
have the capability to be locked, and that the processor identify
if a recommended system corresponds to a system having the
defined capability to be locked (which is what a skilled artisan
would understand "lockable system" to mean).
Id. (emphasis added). Appellant contends that "[l]ockable means 'locked"
as in, prevented from use," not "disabled from use." Id. at 10. Appellant
acknowledges that shutting down non-essential components, as described in
Luke, prevents use of the components when this occurs (i.e., the device is
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turned off), but contends that Luke does not suggest that "the user can't
simply tum the component back on (i.e., it isn't locked out from use)." Id.
Thus, Appellant contends, the limiting and/or shut-down in Luke is not
taught to be "for the duration of the journey," as alleged by the Examiner,
and also differs from the claimed locking-out. Id.
Even accepting the contention that "[lockable] systems are not merely
turned off, they cannot be turned back on, without first being unlocked"
(Appeal Br. 9), we are unpersuaded Luke fails to teach this. Luke discloses:
Optionally at 512, the controller of the vehicle determines
if the rider or operator has selected to override the limiting
function. For example, the vehicle may include one or more
rider or operator operable switches or other controls that allow
the rider or operator to override the limiting function, for
example where maintaining speed and/or accelerator or some
other operating parameter may be deemed essential to safe
operation.
Id. ,r 95 ( emphasis added). Accordingly, Luke teaches the vehicle can
include components to allow overriding of a limiting function. Luke teaches
that such "limiting" can include "shut[ting] down" "non-necessary" or "non-
essential" components. Id. ,r 102. We agree with the Examiner that such
overriding of a limiting function is functionally equivalent to accessing a
locked-out "lockable system." Ans. 14. Such overriding can be considered
as "un-locking" the limiting function, so that the "shut down" system can
then be used. Accordingly, we are unpersuaded that Luke fails to teach the
"automatically lock-out" limitation.
However, Appellant also contends that Luke does not teach the
"determining" limitation of claims 1, 7, and 13. Appeal Br. 11. The
Examiner finds this limitation to be an "inherent characteristic" in Luke.
Final Act. 6. According to the Examiner:
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Luke et al. discloses ceasing a supply of power to a non-
essential components, and/or preventing use of an accessory or
non-essential components, as needed, to ensure adequate range
to reach a site of replacement or replenishment ( of the battery).
There is no other way that a nonessential component could be
prevented from use other than an inherent determination
(intuitively or by design) of whether the system is capable of
ceasing the supply of power to the system, or preventing the use
of the system. Therefore, this is clearly an inherent
characteristic.
Ans. 15 ( emphasis added).
Appellant disagrees:
In Applicant's claims, it is possible to identify a system
whereby prevention of use of that system would result in power
gain, but it is also possible that the system is not appropriate for
prevention of use. In Luke, no such identification of
"inappropriate" systems is ever discussed, and therefore there is
simply no need for the claimed determination. The point is, Luke
is designed to only consider the non-essential systems, and never
needs to make the determination because the outcome is already
known.
Reply Br. 5.
We also note paragraph 61 states, "Lockable options, in this example,
are options such as HVAC or media that can be locked out by the vehicle.
Since the driver may not want to automatically lock out an option, the
process may ask the driver if a lock-out is desired 507. If the driver agrees,
the option can be locked out from use 509, or at least prevented on a
temporary basis. In other cases, the driver may have preset an automatic
lock-out or non-lock-out of various options or all options (emphasis added)."
We understand that, when a driver presets one or more automatic non-lock-
out(s), the processor would be unable to lock-out the preset option(s).
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Although we agree with the Examiner that Luke's "non-essential"
components can be considered lockable systems, as claimed, we are
persuaded that the Examiner has not established Luke teaches a processor
configured to make a determination if such a "non-essential" component is
one that corresponds to a lockable system before the processor shuts down
the component. As recited in claims 1, 7, and 13, the "indicated vehicle
system" received by the processor from the remote server may or may not be
a lockable system. The processor is configured to determine if the indicated
vehicle system is a lockable system in order to automatically "lock-out" such
system. Even assuming this is a possible configuration of the controller in
Luke, "[i]nherency ... may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) ( citations and internal quotation marks omitted). Accordingly, we
are persuaded that the Examiner has not established Luke inherently teaches
the "determining" limitation.
Thus, we do not sustain the rejection of claims 1, 7, and 13, or of
dependent claims 2---6, 8-12, or 14--18, as unpatentable over Luke and
Gutman.
Rejection 4: Obviousness over Luke, Gutman, and Hofbeck
In rejecting claims 1, 7, and 13 further over Hofbeck, the Examiner
applies an alternative construction of a "lockable system," and finds that
Luke does not disclose, but Hofbeck discloses, a lockable system and the
"determining" and "automatic lock-out" limitations. Final Act. 9-11.
Particularly, the Examiner construes a "lockable system" as "a system
comprising a lock." Ans. 17. For the "determining limitation," the
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Examiner finds that, in Hofbeck, an "inherent characteristic for the central
control device [is] to see if data linked individual door locks are lockable,
and correspond to occupancy detection." Final Act. 9 (citing Hofbeck ,r 11).
As for the "automatic lock-out" limitation, the Examiner finds Hofbeck
"automatically switches the door locks." Id. at 10 ( citing Hofbeck ,r 11 ).
Appellant contends there is no reason that, in Hofbeck, "the central
system would need to determine if the door lock system is a lockable
system, the central system already knows that the door lock system is
lockable [ and the] only decision to be made in Hofbeck is whether or not to
engage the child lock." Appeal Br. 12.
Appellant's contention is persuasive. Applying the Examiner's
construction of a "lockable system" as "a system comprising a lock" to
claims 1, 7, and 13, we agree with Appellant there does not appear to be any
need in Hofbeck for the central system to determine whether a door lock
system comprises a lock before that system proceeds to automatically lock a
door lock. And even assuming this is a possible configuration of the central
system in Hofbeck, this is insufficient to establish inherent disclosure of the
"determining" limitation.
Thus, we do not sustain the rejection of claims 1, 7, and 13, or of
dependent claims 2---6, 8-12, or 14--18, as unpatentable over Luke, Gutman,
and Hofbeck.
Rejection 5: Obviousness over Luke, Gutman, and Sadler
As noted by the Examiner, Appellant presents no argument against
this rejection in the Appeal Brief. Ans. 18. However, in the Reply Brief,
Appellant presents arguments addressing Sadler. Reply Br. 6. We note
these arguments do not appear to be responsive to any argument raised in the
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Examiner's Answer. Regarding this situation, 37 C.F.R. § 4I.41(b)(2)
states:
Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new
ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.
(Emphasis added). Accordingly, we will not consider Appellant's untimely
arguments in this appeal. Thus, we sustain the rejection of claims 1-18 as
unpatentable over Luke, Gutman, and Sadler.
DECISION
We reverse the rejection of claims 1, 7, and 13 under 35 U.S.C. § 112,
first paragraph, written description requirement.
We reverse the rejection of claims 1, 7, and 13 under 35 U.S.C. § 112,
second paragraph.
We reverse the rejection of claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Luke and Gutman.
We reverse the rejection of claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Luke, Gutman, and Hofbeck.
We affirm the rejection of claims 1-18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Luke, Gutman, and Sadler.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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