Ex Parte Shimizu

Board of Patent Appeals and Interferences

Oct 14, 2008

10698394 (B.P.A.I. Oct. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte TESSEI SHIMIZU 8
____________________ 9
10
Appeal 2008-4092 11
Application 10/698,394 12
Technology Center 3600 13
____________________ 14
15
Decided: October 15, 2008 16
____________________ 17
18
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and FRED A. 19
SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE 27
Appellant appeals under 35 U.S.C. § 134 (2002) from a Final Office 28
Action of claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b) (2002).29
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SUMMARY OF DECISION 1
We AFFIRM. 2
THE INVENTION 3
The Appellant’s claimed invention is to a system and a method for 4
encouraging energy-saving driving in an environmentally friendly way by 5
acquiring information from a vehicle, analyzing the information and 6
providing comments to a user based on the analyzed information (e.g., how 7
to reduce emissions). Claim 1, reproduced below, is representative of the 8
subject matter on appeal. 9
1. An Eco-Driving diagnostic system comprising: 10
a vehicle; 11
a center; 12
a user terminal; 13
a network; and 14
a radio communication network; wherein: 15
the vehicle includes a vehicle sensor, an in-vehicle 16
device, a radio communication terminal, wherein: 17
the in-vehicle device acquires information about at least 18
the number of engine revolutions, fuel consumption, vehicle 19
speeds, vehicle positional information and time information 20
from the vehicle sensor, and temporarily processes the acquired 21
data for subsequent use; and 22
the radio communication terminal transmits the 23
information to the center via the radio communication network, 24
and receives information from the center; 25
the center includes a communication control device, a 26
management server, a database, a mail server, and a Web 27
server, wherein: 28
the communication control device in the center transmits 29
and receives the information to and from the radio 30
communication terminal in the vehicle; 31
the management server: 32
manages the information transmitted from the 33
vehicle; 34
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calculates, on the basis of the managed 1
information, at least fuel consumption and 2
environmental-load emissions with respect to each of 3
events which may occur and corresponding to a total of 4
events over a total driving time of the vehicle; 5
stores in the database the calculated information 6
with user information; 7
retrieves the information stored in the database; 8
processes the retrieved information into contents 9
for diagnosis and advices by combining and comparing 10
the information; 11
provides the contents from the mail server to the 12
user terminal via the network; 13
and 14
provides the contents from the Web server to the 15
user terminal via the network; 16
and 17
the user terminal: 18
is a mobile terminal or a personal computer; 19
sets up at least personal information, timing of 20
providing the contents, and detail of the contents; 21
displays the contents; and 22
informs with sound. 23
24
THE REJECTIONS 25
The Examiner relies upon the following as evidence of 26
unpatentability: 27
Satoshi JP 2002-089349 Mar. 27, 2002 28
Riu JP 2002-19755 Dec. 7, 2002 29
Lightner US 6,636,790 B1 Oct. 21, 2003 30
Kapolka US 6,714,857 B2 Mar. 30, 2004 31
32
The following rejections are before us for review: 33
1. Claims 1, 2, and 4 are rejected under 35 U.S.C. § 103(a) as being 34
unpatentable over Kapolka in view of Riu and Lightner. 35
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2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable 1
over Kapolka in view of Riu, Lightner, and Satoshi. 2
3
ISSUES 4
The issues before us are whether the Appellant has shown that the 5
Examiner erred in rejecting claims 1, 2, and 4 over Kapolka in view of Riu 6
and Lightner, and claim 3 over Kapolka in view of Riu, Lightner, and 7
Satoshi. These issues turn on whether: (1) the Examiner has failed to 8
articulate a reason with rational underpinning to combine the teachings of 9
Kapolka, Riu, and Lightner (claims 1, 2, and 4), and in addition Satoshi 10
(claim 3); and (2) the Examiner has failed to identify art, even when the 11
references are combined, that teaches or suggests all of the limitations of the 12
independent claims. 13
14
FINDINGS OF FACT 15
We find that the following enumerated findings are supported by at 16
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 17
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 18
proceedings before the Office). 19
1. The Appellant’s Specification discloses an in-vehicle device 102 20
that acquires various types of information, e.g., engine revolutions, 21
fuel consumptions, vehicle speeds, vehicle positional information, 22
time information from a car sensor 101 (Spec. pp. 12, ll. 26-30 and 23
p. 15, l. 5-10), a radio communication terminal 103 that transmits 24
the information to a remote location for calculating fuel 25
consumption and emissions with respect to multiple events and for 26
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the driving time of a vehicle, and offering advices on the basis of 1
combination and comparison of the information (Spec. p. 13, l. 20 2
and p. 15, ll. 7-10). 3
2. Kapolka discloses gathering information and transmitting the 4
information to a remote location for processing and evaluation for 5
fuel tax purposes comprising a vehicle 105 using a communication 6
link available in the vehicle. 7
3. Kapolka’s communication link also provides a single access point 8
for diagnostic analysis of the components on the vehicle (col. 4, ll. 9
59-67). 10
4. In Kapolka, the remote processing includes a management server 11
for managing the information transmitted from the vehicle by: (1) 12
calculating the vehicle’s location, bearing, fuel levels, total fuel 13
used, total idle fuel used, and (2) route traveled to determine if any 14
jurisdictional boundaries were crossed; (3) calculating the mileage 15
driven in each jurisdiction to compute the fuel used in each 16
jurisdiction (col. 6, ll. 29-63 and col. 7, ll. 34-58); (4) storing the 17
information (col. 7, l. 55); and (5) providing the information to a 18
user's terminal via a web server (col. 7, ll. 55-58 and col. 4, ll. 45-19
50). 20
5. Riu discloses an environmental load total amount monitoring 21
system that remotely monitors emissions emitted from a user’s 22
moving vehicles against a total amount allotted to a user by 23
utilizing a rotational frequency test to measure engine speed (pp. 24
0012 and 0027) and a gas analyzer to measure the discharge 25
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concentration of the exhaust gas discharged through an exhaust 1
pipe (p. 0012). 2
6. Riu’s monitoring system records information regarding the 3
discharge concentration of the emissions (p. 0012) and computes 4
the discharge of the emissions by each vehicle by analyzing the 5
recorded information using a formula (p. 0030). 6
7. Riu’s monitoring system (1) determines when the emissions are 7
below the allotted amount to create a surplus and enable a person 8
to sell the surplus emissions (abstract; pp. 0027 and 0029), (2) 9
stores calculated information in a database (pp. 0020; 0036), and 10
(3) retrieves and processes the information (p. 0043). 11
8. Lightner discloses a wireless diagnostic system and method for 12
remotely characterizing a vehicle’s performance by generating 13
information of the vehicle’s performance; using and analyzing the 14
generated information to characterize driving patterns (e.g., vehicle 15
speed, emission characteristics and vehicle location) (col. 4, ll. 52-16
61) by processing the information (col. 3, ll. 6-21, ll. 35-50; and 17
col. 4, ll. 52-59); and displaying the processed information (col. 8, 18
ll. 56-67). 19
9. Lightner further discloses that the information generated can be 20
compared with a predetermined value (col. 3, ll. 44-47). 21
10. Satoshi discloses remotely evaluating fuel consumption of vehicles 22
by comparing generated information against known variables 23
written to a memory card (pp. 0039 and 0046) and informing an 24
operator when fuel consumption worsens (i.e., sudden braking and 25
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sudden accelerating) (pp. 0005 and 0023) by emitting a warning to 1
an operator (pp. 0026, 0094, 0096, and 0097). 2
11. Satoshi discloses displaying to an operator the calculated fuel 3
consumption (p. 0023). 4
12. The Appellant’s Specification discloses that the events for 5
calculating fuel consumption and emissions are idling, rapid and 6
sudden acceleration, engine racing, constant-speed driving and the 7
like (Spec. p. 2, ll. 17-19). 8
13. Kapolka discloses calculating fuel consumption for three events: 9
an idling event - when the vehicle is idling (col. 10, ll. 31-53 and 10
col. 11, ll. 7-10), a running event - when the vehicle is running 11
(col. 7, ll. 39-49 and 66-67), and a border event - when the vehicle 12
crosses a jurisdiction (Figure 10, col. 6, l. 63, col. 7, ll. 26-33 and 13
ll. 34-58). 14
15
PRINCIPLES OF LAW 16
Appellant has the burden on appeal to the Board to demonstrate error 17
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 18
2006) (“On appeal to the Board, an applicant can overcome a rejection 19
[under § 103] by showing insufficient evidence of prima facie obviousness 20
or by rebutting the prima facie case with evidence of secondary indicia of 21
nonobviousness.”) (Quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 22
1998)). 23
“Section 103 forbids issuance of a patent when ‘the differences 24
between the subject matter sought to be patented and the prior art are such 25
that the subject matter as a whole would have been obvious at the time the 26
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invention was made to a person having ordinary skill in the art to which said 1
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 2
1734 (2007). The question of obviousness is resolved on the basis of 3
underlying factual determinations including (1) the scope and content of the 4
prior art, (2) any differences between the claimed subject matter and the 5
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 6
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 7
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these 8
questions might be reordered in any particular case, the [Graham] factors 9
continue to define the inquiry that controls.”) 10
In KSR, the Supreme Court emphasized “the need for caution in 11
granting a patent based on the combination of elements found in the prior 12
art,” id. at 1739, and discussed circumstances in which a patent might be 13
determined to be obvious. In particular, the Supreme Court emphasized that 14
“the principles laid down in Graham reaffirmed the ‘functional approach’ of 15
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S. 16
at 12), and reaffirmed principles based on its precedent that “[t]he 17
combination of familiar elements according to known methods is likely to be 18
obvious when it does no more than yield predictable results.” Id. The Court 19
explained: 20
When a work is available in one field of endeavor, 21
design incentives and other market forces can 22
prompt variations of it, either in the same field or a 23
different one. If a person of ordinary skill can 24
implement a predictable variation, § 103 likely 25
bars its patentability. For the same reason, if a 26
technique has been used to improve one device, 27
and a person of ordinary skill in the art would 28
recognize that it would improve similar devices in 29
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the same way, using the technique is obvious 1
unless its actual application is beyond his or her 2
skill. 3
Id. at 1740. The operative question in this “functional approach” is thus 4
“whether the improvement is more than the predictable use of prior art 5
elements according to their established functions.” Id. 6
The Supreme Court stated that there are “[t]hree cases decided after 7
Graham [that] illustrate the application of this doctrine.” Id. at 1739. “In 8
United States v. Adams, … [t]he Court recognized that when a patent claims 9
a structure already known in the prior art that is altered by the mere 10
substitution of one element for another known in the field, the combination 11
must do more than yield a predictable result.” Id. at 1739-40. “Sakraida 12
and Anderson’s-Black Rock are illustrative – a court must ask whether the 13
improvement is more than the predictable use of prior art elements according 14
to their established function.” Id. at 1740. 15
The Supreme Court stated that “[f]ollowing these principles may be 16
more difficult in other cases than it is here because the claimed subject 17
matter may involve more than the simple substitution of one known element 18
for another or the mere application of a known technique to a piece of prior 19
art ready for the improvement.” Id. The Court explained: 20
Often, it will be necessary for a court to look to 21
interrelated teachings of multiple patents; the 22
effects of demands known to the design 23
community or present in the marketplace; and the 24
background knowledge possessed by a person 25
having ordinary skill in the art, all in order to 26
determine whether there was an apparent reason to 27
combine the known elements in the fashion 28
claimed by the patent at issue. 29
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Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis 1
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. 2
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by 3
mere conclusory statements; instead, there must be some articulated 4
reasoning with some rational underpinning to support the legal conclusion of 5
obviousness”)). However, “the analysis need not seek out precise teachings 6
directed to the specific subject matter of the challenged claim, for a court 7
can take account of the inferences and creative steps that a person of 8
ordinary skill in the art would employ.” Id. 9
The Federal Circuit recently concluded that it would have been 10
obvious to combine (1) a mechanical device for actuating a phonograph to 11
play back sounds associated with a letter in a word on a puzzle piece with 12
(2) an electronic, processor-driven device capable of playing the sound 13
associated with a first letter of a word in a book. Leapfrog Ent., Inc. v. 14
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (“[a]ccommodating 15
a prior art mechanical device that accomplishes [a desired] goal to modern 16
electronics would have been reasonably obvious to one of ordinary skill in 17
designing children’s learning devices”). In reaching that conclusion, the 18
Federal Circuit recognized that “[a]n obviousness determination is not the 19
result of a rigid formula disassociated from the consideration of the facts of a 20
case. Indeed, the common sense of those skilled in the art demonstrates why 21
some combinations would have been obvious where others would not.” Id. 22
at 1161 (citing KSR, 127 S.Ct. 1727, 1739 (“The combination of familiar 23
elements according to known methods is likely to be obvious when it does 24
no more than yield predictable results.”)). The Federal Circuit relied in part 25
on the fact that Leapfrog had presented no evidence that the inclusion of a 26
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reader in the combined device was “uniquely challenging or difficult for one 1
of ordinary skill in the art” or “represented an unobvious step over the prior 2
art.” Id. (citing KSR, 127 S.Ct. at 1740-41). 3
4
ANALYSIS 5
Appellant argues claims 1, 2, and 4 as a group. As such, we select 6
claim 1 as representative of the group, and claims 2 and 4 will stand or fall 7
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). The Appellant argues 8
claim 3 separately. 9
Kapolka, Riu, Lightner, and Satoshi disclose collecting information 10
from a vehicle and transmitting the information to a remote location for 11
processing and evaluation. Kapolka discloses using an available 12
communication link for collecting the information and providing a single 13
access point for diagnostic analysis of the components on the vehicle (col. 4, 14
ll. 59-67) (Fact 3). Kapolka differs from the claimed subject matter in that 15
Kapolka transmits information relevant to fuel tax collection rather than the 16
number of engine revolutions, fuel consumption, vehicle speeds, vehicle 17
positional information and time information from the vehicle sensor as 18
called for in claim 1. We conclude that with all the information available at 19
Kapolka’s communication link, it would have been obvious to a person 20
having ordinary skill in the art that the particular information transmitted to 21
the remote location could vary as the need arises. Riu, Lightner, and Satoshi 22
disclose that it is old and well known in the art to collect different kinds of 23
information. Riu discloses monitoring remotely emissions emitted from a 24
user’s moving vehicles against a total amount allotted to the user (Fact 5), 25
and recording information regarding the discharge concentration of the 26
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emissions (p. 0012) and computing the discharge of the emissions by each 1
vehicle by analyzing the recorded information using a formula (p. 0030) 2
(Fact 6). Lightner discloses that information generated can be compared 3
with a predetermined value (col. 3, ll. 44-47) (Fact 9). Regarding claim 3, 4
Satoshi discloses informing an operator when fuel consumption worsens 5
(i.e., sudden braking and sudden accelerating) by emitting a warning to an 6
operator (Fact 10) and displaying to an operator the calculated fuel 7
consumption (p.0023) (Fact 11). As such, we conclude that to combine the 8
teachings of Kapolka, Riu, and Lightner (claims 1, 2 and 4), and in addition 9
Satoshi (claim 3) as set forth by the Examiner (Ans. 3-6) would have been 10
obvious at the time the invention was made to a person having ordinary skill 11
in the art. In KSR the Supreme Court held that if a technique has been used 12
to improve one device and a person of ordinary skill in the art would 13
recognize that it would improve similar devices in the same way, using the 14
technique is obvious. See KSR at 1740. 15
Appellant argues that the Examiner has failed to provide motivation to 16
combine the teachings of Kapolka, Riu, Lightner in rejecting claim 1 17
(Amended Br. 10-11) and the teachings of Kapolka, Riu, Lightner and 18
Satoshi in rejecting claim 3, that is, there is no motivation in the prior art that 19
would cause a person having ordinary skill in the art to make the proposed 20
combination of references (Amended Br. 12). However, in KSR the 21
Supreme Court held that a rigid application of such a mandatory formula as 22
TSM [teaching, suggestion or motivation] was incompatible with its 23
precedent concerning obviousness. See KSR at 1741. 24
Appellant further argues that the references even when combined do 25
not teach multiple events, as Kapolka only deals with a single event 26
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(Amended Br. 7 and 8). We agree with the Examiner (Ans. 7) as we also 1
find that Kapolka discloses calculating fuel consumption for three events: an 2
idling event, a running event, and a border event (Fact 13). 3
Appellant still further argues that in Kapolka a calculation is based 4
upon a single event (idling) and not over a total driving time as recited in 5
claim 1 (Amended Br. 9). Kapolka (Figure 10, col. 6, l. 63, col. 7, ll. 26-33 6
and ll. 34-58) teaches determining if a vehicle crosses a jurisdiction border 7
(the border event) (Fact 13), and then calculating the fuel consumption for 8
the running event (col. 7, ll. 39-49 and 66-67) and idling event (col. 10, ll. 9
31-53 and col. 11, ll. 7-10) for each jurisdiction the vehicle has traveled. 10
Kapolka encompasses calculating the fuel consumption in each event over a 11
total driving time as called for in the claim because the claim does not 12
indicate how much time the total driving time limitation called for in the 13
claim includes, and Kapolka does not limit the size of a jurisdiction. If in 14
Kapolka, the jurisdiction is defined as the whole area of a country, a vehicle 15
that completed a trip within the country would calculate the fuel 16
consumption for running and idling events over a total driving time of the 17
vehicle. We agree with the Examiner’s analysis (Ans. 7 and 8) as the set 18
time period for monitoring consumption or the size of a particular 19
jurisdiction would not appear to add patentable significance. 20
21
CONCLUSION OF LAW 22
We conclude that the Appellant has not shown that the Examiner 23
erred in rejecting claims 1, 2, and 4 under 35 U.S.C. § 103(a) as being 24
unpatentable over Kapolka in view of Riu and Lightner. We conclude that 25
the Appellant has not shown that the Examiner erred in rejecting claim 3 26
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under 35 U.S.C. § 103(a) as being unpatentable over Kapolka in view of 1
Riu, Lightner, and Satoshi. 2
3
DECISION 4
The decision of the Examiner to reject claims 1-4 is affirmed. 5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 7
8
AFFIRMED 9
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hh 17
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DICKSTEIN SHAPIRO LLP 19
1177 AVENUE OF THE AMERICAS (6TH AVENUE) 20
NEW YORK, NY 10036-2714 21