Ex Parte Peters

Board of Patent Appeals and Interferences

Jan 28, 2003

09596975 (B.P.A.I. Jan. 28, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEOFFREY W. PETERS
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Appeal No. 2002-1598
Application No. 09/596,975
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ON BRIEF
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Before ABRAMS, STAAB, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 21-27
and 31-40, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-1598
Application No. 09/596,975
Page 2
BACKGROUND
The appellant's invention relates to controlling toy vehicles. An understanding of
the invention can be gained from a reading of exemplary claim 21, which has been
reproduced below.
The single prior art reference of record relied upon by the examiner in rejecting
the appealed claims is:
Booth et al. (Booth) 4,986,187 Jan. 22, 1991
The examiner’s rejections are as follows:
Claims 21-27 and 31-40 stand rejected under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventor, at the time
the application was filed, had possession of the claimed invention, i.e., new matter.
Claims 21-27 and 31-40 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention.
Claims 21-27, 31-36, 39 and 40 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Booth in view of the Official Notice taken that using a controller such
as a switch to control a vehicle/train is conventional.
Appeal No. 2002-1598
Application No. 09/596,975
Page 3
Claims 37 and 38 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Booth and the Official Notice raised with regard to claim 21, taken further with
Official Notice that providing an airwave link between two antennas is conventional.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 11) and the final rejection (Paper No. 6) for the examiner's complete
reasoning in support of the rejections, and to the Brief (Paper No. 10) and Reply Brief
(Paper No. 12) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention is directed to a method of controlling a toy vehicle. The
invention is set forth in claim 21 in the following manner:
A method comprising:
receiving video from a toy vehicle;
automatically identifying an image element in said video; and
using said image element to automatically control the vehicle.
The Rejection Under The First Paragraph Of Section 112
Appeal No. 2002-1598
Application No. 09/596,975
Page 4
This rejection is based upon the examiner’s conclusion that the term
“automatically,” which was added to the claim during prosecution, constitutes new
matter, and therefore the claimed invention was not in the possession of the appellant
when the application was filed (Paper No. 6, page 2). The appellant argues in
response that this is not the case, for “automatically” appears in two places in the
specification as filed. The first is on page 7, where it is stated that the control of the
vehicle “may be implemented by the user, physically or automatically, using software
operating on the control station 24" (lines 21-24), and the second on page 10, where it
is explained that the vehicle may “automatically go around the cones [in a racetrack] in
response to processor-based system control which recognizes the cones and their
locations” (lines 14-16). In response to this assertion in the Brief, the examiner further
states in the Answer that while “automatically” appears in the specification, it does not
provide support for automatically identifying an image element and automatically using
it to control the vehicle, as stated in claim 21.
We find ourselves in agreement with the appellant that the presence of the
disputed term in these two places provides the necessary support for the steps of claim
21. Specifically, it is explained on page 7 that the camera in the vehicle recognizes
patterns and colors, from which the system can control the car manually or
automatically, and on page 10 that it recognizes cones on a racetrack and controls the
car to go around them. These instances clearly provide support for the two steps of the
Appeal No. 2002-1598
Application No. 09/596,975
Page 5
1The second paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008,
1015, 194 USPQ 187, 193 (CCPA 1977). In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by one possessing the ordinary
level of skill in the pertinent art. Id.
method to which the examiner referred, and thus it is our conclusion that this is
evidence that the disputed information was in the appellant’s possession at the time the
application was filed.
The rejection under 35 U.S.C. § 112, first paragraph is not sustained.
The Rejection Under The Second Paragraph Of Section 112
The examiner raises four matters in this indefiniteness1 rejection. The first is that
claim 21 is indefinite because it is not clear how “automatically” as now inserted in the
claim “is intended to further limit the method” (Paper No. 6, page 2). As was argued by
the appellant, this term distinguishes the method from non-automatic techniques, and
we agree that its use does not cause the claim to be indefinite.
The second issue raised by the examiner is that it is not clear in claim 39
whether or not “a vehicle” in line 2 is the same vehicle recited in claim 21. The
appellant has pointed out that claim 39 was amended to change “a” to “the” in this
instance, which would remove any semblance of a problem in interpreting the claim.
We agree.
Appeal No. 2002-1598
Application No. 09/596,975
Page 6
As to the assertion that the language in claim 39 is confusing with regard to the
vehicle following another vehicle, such a technique is disclosed on pages 6 and 7 of the
specification, and it is our view that one of ordinary skill in the art therefore would have
understood the language of the claim.
We reach the same conclusion with regard to the examiner’s rejection of claim
40 because it is not clear how a video guides the vehicle. This is the basic concept of
the appellant’s invention, and is explained in detail in the specification, beginning on
page 3 with the first embodiment and continuing throughout as each of the other
embodiments is presented. We do not agree that the language in issue is indefinite.
The rejection under 35 U.S.C. § 112, second paragraph, is not sustained.
The Rejections Under Section 103
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie
case of obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
Appeal No. 2002-1598
Application No. 09/596,975
Page 7
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The first of these rejections is that claims 21-27, 31-36, 39 and 40 are
unpatentable over Booth in view of Official Notice that using a controller such as a
switch to control a vehicle/train is conventional. The examiner’s theory is that Booth
discloses all of the structure recited in claim 21 except for the controller, but that it
would have been obvious to one of ordinary skill in the art to provide the Booth system
with a controller, on the basis of Official Notice that this is a known feature in the art.
Booth discloses a toy electric train that runs along a track. The engine is
equipped with an “optical sensing means” that detects images or scenes that appear in
front of the engine, which are reproduced on a television monitor for viewing by the
operator. There is no mention in Booth of utilizing this video presentation for anything
other than enhancing the attractiveness of operating the train. While we would agree
with the examiner that controllers for toy vehicles are known in the art, we fail to
perceive any teaching, suggestion or incentive which would have led one of ordinary
skill in the art to provide the Booth system with a controller that automatically identifies
the image element in the video and then uses that video image to automatically control
the vehicle.
Appeal No. 2002-1598
Application No. 09/596,975
Page 8
It therefore is our conclusion that the evidence adduced by the examiner fails to
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 21, and we will not sustain the rejection of claim 21 or, it follows, of claims 22-27,
31-36, 39 and 40, all of which are dependent from claim 21.
Claims 37 and 38 stand rejected as being unpatentable over the evidence
provided against claim 21, taken further with Official Notice that providing an airlink
between two antennas is conventional. Be that as it may, the second Official Notice
does not alleviate the deficiency in the references applied against claim 21, from which
claims 37 and 38 depend. This being the case, we will not sustain this rejection.
CONCLUSION
Appeal No. 2002-1598
Application No. 09/596,975
Page 9
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/lbg
Appeal No. 2002-1598
Application No. 09/596,975
Page 10
TROP, PRUNER & HU, P.C.
8554 KATY FREEWAY, STE 100
HOUSTON, TX 77024-1805
APPEAL NO. 2002-1598 - JUDGE ABRAMS
APPLICATION NO. 09/596,975
APJ ABRAMS
APJ STAAB
APJ McQUADE
DECISION: REVERSED
Prepared By: LESLEY BROOKS
OB/HD
GAU: 3700
3 MEM. CONF. Y N
DRAFT TYPED: 09 Oct 03
FINAL TYPED: