Ex Parte Ohl et al

Board of Patent Appeals and Interferences

Apr 12, 2010

10491929 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTIAN OHL, OLIVER KOHN,
JOCHEN SCHOMACKER, and MICHAEL ULMER
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Appeal 2009-003870
Application 10/491,929
Technology Center 2600
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Decided: April 12, 2010
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Before ROBERT E. NAPPI, KENNETH W. HAIRSTON,
and JOSEPH F. RUGGIERO, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 10 to 20. Claims 1 to 9 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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Appellants’ claimed invention is directed to a method and device for
transmitting data from a sensor to a control unit using a receiver block, and
is particularly suited for data sent to and from sensors for airbags in vehicles
(Figure 1; Spec. 1:4-11, 3:14-15). The method and device use an 11-bit
frame for data transmission which is broken up into a first portion
representing a sensor value; a second portion representing status and error
signals; and a third portion containing sensor ID data, ID codes, and block
IDs (Fig. 3; Spec. 1:25-2:3; claim 1 on appeal). Appellants’ claimed
invention is also directed at a device for receiving data at a lower data rate
than transmitted from the sensor (Spec. 3:32-4:14; claims 16 and 20).
Claim 10 is representative of the claims on appeal, and reads as
follows:
10. A method for transmitting data from at least one sensor to a
control unit, a line being used for each of the at least one sensor and a
predefined value range being available for the data, the method comprising:
using a first portion of the value range for at least one sensor value;
using a second portion of the value range for one of at least one status
signal and at least one error signal;
using a third portion of the value range for sensor identification data;
separating the first portion, the second portion, and the third portion
from each other; and
causing the first portion, the second portion, and the third portion to
follow each other in succession.

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The Examiner rejected claims 10 to 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
The Examiner contends that the Specification does “not provide the
specifics of block processor 3 by way of specific structural elements, flow
charts, that enables the construction of such a transmitter for using first,
second, and third portions, separating the first portion, and causing the first,
second, and third portions to follow each other in succession” (Ans. 3-4).
The Examiner also contends that “[t]here is no specific structure for a
receiver block that reads data from the line at a lower data rate than a rate at
which a transmitter block of the at least one sensor transmits data” (Ans. 4).
Appellants contend that the Specification (Spec. 4:4-33, 5:8-16, 5:18-
23; 5:25-32; Figs. 1, 3, 4) teaches a control unit 1, receiver 2, and processor
3 for transmitting data over a line 6 using the method of claims 10 to 15 and
the device of claims 16 to 20 (App. Br. 13-15; Reply Br. 3-10). Specifically,
Appellants contend that the separation of the data into first, second, and third
portions following each other in succession (claims 10 to 15), and the
receiver block for reading a data rate lower than the rate sent by the
transmitter of the sensor (claims 16 to 20), are enabled by the description
and figures mentioned supra.
Accordingly, the issue presented on appeal concerns the enablement
rejection of claims 10 through 20: Are the limitations of a processor
(claimed as a “control unit”) and a receiver block described in the
Specification in such a way as to enable one skilled in the art to make and/or
use the invention without undue experimentation?
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
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without “‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561
(Fed. Cir. 1993). Some experimentation, even a considerable amount, is not
“undue” if, e.g., it is merely routine, or if the specification provides a
reasonable amount of guidance as to the direction in which the
experimentation should proceed. In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). The “undue experimentation” component examines (1) the quantity
of experimentation; (2) the amount of direction or guidance present; (3) the
presence or absence of working examples; (4) the nature of the invention;
(5) the state of the prior art; (6) the relative skill of those in the art; (7) the
predictability or unpredictability of the art; and (8) the breadth of the claims
(hereinafter, “the Wands factors”). Id. at 737. The Examiner’s analysis of
the “undue experimentation” component must consider all the evidence
related to each of the Wands factors, and any conclusion of non-enablement
must be based on the evidence as a whole. Id. at 737, 740; see MPEP
§ 2164.01(a).
In making the § 112, first paragraph, non-enablement rejection, the
Examiner simply states that the receiver block 2 and the processor 3 are not
shown (citing Figs. 3-5) or described (citing page 3, lines 26 to 30) in the
Specification in enough detail to achieved the claimed results of (i)
separating data into three portions following each other in succession
(claims 10 to 15), and (ii) reading data from the line at a lower data rate than
the transmitting data rate (claims 16 to 20) (see Ans. 3-8).
In determining whether the Specification as filed enables claims 10 to
20, and whether “undue experimentation” would have been required by one
of ordinary skill in the art to make and/or use the claimed invention, the
Examiner failed to support the conclusion of non-enablement with any
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evidence other than to refer to page 3, lines 26 to 30 of the Specification (see
Ans. 3-8). The Examiner failed to discuss any of the Wands factors (see the
Wands factors set forth, supra), or address the portions of the Specification
cited by Appellants in the Brief (see App. Br. 13-14 citing Spec. 4:4-23;
4:25-33; 5:18-23). Thus, the Examiner’s conclusion of non-enablement is
based only on a single specific reference to the Specification (page 3, lines
26 to 30), and not on any specific evidence. See Wands, 858 F.2d at 737,
740 (requiring conclusion of non-enablement to be based on evidence as a
whole); see also MPEP § 2164.01(a). The Examiner also failed to explain
why one of ordinary skill in the art, upon reading Appellants’ detailed
description and viewing Appellants’ drawings, would have needed to
experiment unduly in order to make and/or use Appellants’ claimed
invention.
The Specification, at the portions cited by Appellants and shown in
Figures 1 and 3 to 5, provides a reasonable amount of guidance as to how to
make and/or use the invention, as well as the direction in which the
experimentation, if any, should proceed. Wands, 858 F.2d at 737. The
Specification describes a method for transmitting data from a sensor to a
control unit in which data “is divided into three portions” (Spec. 3:23-4:1).
Appellants’ Figures 3 and 4 clearly show that three separate portions (12, 13,
and 14) follow each other in succession. And, the Specification describes
that “the sensor typically transmits the data at a higher rate than a rate at
which the control unit is reading the data from the line” (Spec. 4:9-10).
The skilled artisan, at the time of the filing of Appellants’
Specification, would have known that a processor could divide a data signal
into multiple portions and transmit them one after another over a line. The
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skilled artisan would have known how to make and/or use a control unit,
processor, transmitter, and/or receiver for (i) separating and sending such a
signal (as in claims 10 to 15), and (ii) reading at a data rate lower than the
transmitter sending rate (claims 16 to 20), especially in light of Appellants’
description (see original claims 1-9; Spec. 3:32 to 6:11; see also Figures 1,
3, 5).
In view of the foregoing, Appellants have adequately shown that the
Examiner erred in determining that claims 10 to 20 are not enabled by the
Specification and in rejecting those claims under § 112, first paragraph.
Accordingly, we will not sustain the rejection of claims 10 to 20 under 35
U.S.C. § 112.

REVERSED

KIS

KENYON & KENYON
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