Ex Parte Takamatsu

Patent Trial and Appeal Board

Dec 21, 2012

10991858 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIDEKI TAKAMATSU
____________

Appeal 2010-011862
Application 10/991,858
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and ANNETTE R.
REIMERS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011862
Application 10/991,858

2
STATEMENT OF THE CASE
Hideki Takamatsu (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-4, 6, 8-13, 15 and 17-23, the
only claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing was conducted on December 11, 2012, with
Scott Schulte, Esq., appearing on behalf of Appellant.
We REVERSE.

THE INVENTION
Appellant’s invention is directed to a control device for a vehicle.
Independent claim 1 is illustrative:
1. A control device for a vehicle causing a vehicle to
move by a small distance, comprising:

a determination unit configured to determine whether
movement by the small distance is necessary;

an acquisition unit, when it is determined that said
movement by the small distance is necessary, configured to
acquire positional information on a control start position where
said movement by the small distance is to be started and
positional information on a control finish position where said
movement by the small distance is to be finished, said
positional information on a control start position being acquired
from a navigation unit; and

a control unit configured to control a driving device and a
braking device mounted to said vehicle, based on said acquired
positional information, to move said vehicle from said control
start position to said control finish position;

said determination unit including
Appeal 2010-011862
Application 10/991,858

3
a first determination unit configured to determine
whether movement by the small distance is necessary, based on
information on an external environment of the vehicle acquired
by an external information acquisition unit acquiring
information on the external environment of said vehicle and
information on an obstacle blocking a driver's view that is
stored in advance in association with said information on the
external environment, and

a second determination unit configured to determine
whether movement by the small distance is necessary, based on
information on motions of a driver of said vehicle and said
information on an obstacle blocking a driver's view that is
stored in advance in association with said information on
motions.

THE REJECTIONS
The Examiner has rejected claims 1-4, 6, 8-13, 15 and 17-23 under 35
U.S.C. §112, first paragraph, as failing to comply with the written
description requirement, and under 35 U.S.C. § 103(a) as being unpatentable
over Appellant’s Admitted Prior Art (“AAPA”), as embodied in Takahashi
(JP 9048263 A, published Feb. 18, 1997) and its U.S. counterpart, Takahashi
(US 6,006,144, issued Dec. 21, 1999).

ANALYSIS
35 U.S.C. § 112, first paragraph--written description requirement
The Examiner maintains that the claims fail to reasonably convey, to a
person of ordinary skill in the art, that at the time the present application was
filed, Appellant had possession of the claimed invention. Ans. 3. The
Examiner notes that the Specification discloses various data acquisition
Appeal 2010-011862
Application 10/991,858

4
devices to obtain information directed to a vehicle’s external and internal
information, but
fails to give any guidance in the form of an
algorithm or a portion of an algorithm as to which
variables to use, how they correlate or relate to one
another, or how they are ranked in priority to
determine the movement by the small distance
necessary such that practice of the invention could
be made by one having ordinary skill in the art at
the time the invention [sic, application] was filed.
Ans. 4.
The Examiner further takes the position that, “in computer-related
invention[s], there must be an algorithm disclosed to allow the control
system to perform the function as claimed.” Ans. 6-7. The Examiner
further appears to maintain that the Specification does not evidence that
Appellant had a working embodiment of the claimed invention at the time
the application was filed. Ans. 4. Appellant counters that Figures 2-6, and
the corresponding disclosure in the Specification “provide a detailed
description of the algorithm steps that support and enable the claimed
subject matter,” and points to portions of the Specification that discuss the
steps undertaken by the device, and how the acquired data is used. Br. A-
12--A-13.
Appellant has the better position here. The Examiner’s rationale in
making this rejection appears to be directed not to the written description
requirement in the first paragraph of 35 U.S.C. § 112, but rather to the
enablement requirement in that paragraph, and possibly to alleged
indefiniteness of the claims under the second paragraph of §112, as informed
by the sixth paragraph of § 112. Aristocrat Technologies Australia Pty Ltd.
v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) (claims involving
Appeal 2010-011862
Application 10/991,858

5
computers set forth in means-plus-function form are indefinite when no
algorithm for performing functions is disclosed). Moreover, Appellant’s
Figures 3-6 detail the overall process set forth in Figure 2 and clearly show
what decisions are made or what operations are performed based upon
particular data acquired. Thus, the Examiner’s position as to the lack of
disclosure as to which variables to use, how they correlate or relate to one
another, or how they are ranked in priority, appears to be misplaced.
The rejection of claims 1-4, 6, 8-13, 15 and 17-23 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement, is not sustained.
Obviousness in view of AAPA
The Examiner’s position is that the AAPA “does not explicitly
disclose the determination unit/means, acquisition unit/means, and control
unit/means to perform such function as claimed.” Ans. 6. The Examiner
notes that Appellant “admitted” that one of ordinary skill in the art would
have been able to use a processor and other hardware to build the hardware
of the claimed units/means, and concludes that it would have therefore been
obvious to modify the AAPA to perform the claimed functions, “since it is
well known in the art of experimentation that one can program a
subroutine(s)/algorithm(s), to operate a system.” Id.
Appellant, in addition to pointing to a number of differences between
the AAPA and the claimed device, maintains that the Examiner relies on
Appellant’s own disclosure in arriving at the conclusion that the invention as
now claimed would have been obvious. Br. A-19. We agree. The so-called
“admission” by Appellant relied on by the Examiner was made in the
context of arguing the impropriety of a then-existing enablement rejection,
Appeal 2010-011862
Application 10/991,858

6
in which Appellant maintained that, in view of the instant Specification,
“one of ordinary skill in the art would have understood the claimed control
unit/means, as well as the other recited units and means, could be
implemented by a processor and memory and would have been able to do so
without undue experimentation . . .”. Amendment dated Feb. 12, 2009, pp.
10-11. Reliance on this statement in arriving at the conclusion that the
claims would have been obvious is improper, as it amounts to using
Appellant’s own disclosure in the present application against him. See In re
Katz, 687 F.2d 450 (CCPA 1982).
The rejection of claims 1-4, 6, 8-13, 15 and 17-23 under 35 U.S.C.
§ 103 is not sustained.

CONCLUSIONS
The Examiner erred in rejecting the claims as failing to comply with
the written description requirement, and under 35 U.S.C. § 103(a) as being
unpatentable over the AAPA.

DECISION
The rejections of claims 1-4, 6, 8-13, 15 and 17-23 are reversed.

REVERSED

mls