Ex Parte Tohyama

Patent Trial and Appeal Board

Aug 17, 2017

13540973 (P.T.A.B. Aug. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/540,973 07/03/2012 Naohiro TOHYAMA RYM-2018-2942 1064
23117 7590 08/21/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HILGENDORF, DALE W
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOHIRO TOHYAMA
Appeal 2016-000383
Application 13/540,973
Technology Center 3600
Before MICHAEL L. HOELTER, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Naohiro Tohyama (“Appellant”) seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated November 4, 2014 (“Final Act.”), and as further explained in the
Advisory Action dated January 9, 2015 (“Adv. Act.”), rejecting claim 13.1
Claims 1—12 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies DENSO CORPORATION as the real party in
interest. Br. 3.
Appeal 2016-000383
Application 13/540,973
BACKGROUND
The disclosed subject matter “relates to an electronic control
apparatus that stores travel information of a vehicle in order to analyze a
cause of an occurrence of a vehicle behavior.” Spec. 1,11. 8—10.2 Claim 13,
the sole claim on appeal, is reproduced below with bracketed text added to
identify each clause:
13. An electronic control apparatus cooperating
with a sensor to detect a vehicle state of a vehicle,
the electronic control apparatus comprising:
[a] a behavior determination section to
[a.i] receive, from the sensor, a
detection signal indicating the vehicle state
detected by the sensor, and
[a.ii] determine, based on the received
detection signal, whether an anomalous
vehicle behavior, which satisfies a
determination condition, continuously arises
for a continued period that is longer than a
determination period;
[b] a travel information storage section to
store, in a storage portion, travel information of the
vehicle at a time when the behavior determination
section determines that the anomalous vehicle
behavior continuously arises for the continued
period longer than the determination period; and
[c] a period change section to change the
determination period to a lengthened determination
period by lengthening the determination period in
cases that the behavior determination section
determines that the anomalous vehicle behavior
2 Citations to the Specification refer to the version filed on June 11,
2014.
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continuously arises for the continued period longer
than the determination period;
[d] wherein: the period change section
changes the determination period to be the
lengthened determination period by lengthening the
determination period whereas the behavior
determination section continues receiving the
detection signal indicating the vehicle state from the
sensor.
REJECTION
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maeda (US 2010/0023207 Al, published Jan. 28, 2010) and Giles (US
2011/0190973 Al, published Aug. 4, 2011).3
DISCUSSION
The Examiner relied on Maeda for certain limitations in claim 13 but
stated that “Maeda . . . do[es] not explicitly teach the claimed lengthening of
the determination period for vehicle behavior that is longer than the
determination period, but does teach certain vehicle behaviors (vehicle state
determined by sensors) are monitored for different lengths of time.” Final
Act. 7. The Examiner stated that, in Maeda, “[cjertain vehicle states are
monitored over a short period of time, while others are for a longer period of
time,” and “[tjherefore, the duration of the monitoring of the vehicle states
3 We understand the rejection of claim 13 as currently recited to
include the findings and conclusions from paragraphs 17, 18, and 24 of the
Office Action. See Final Act. 6—8, 12—13; Adv. Act. 2 (“The office action of
11/4/2014, specifically the 103 rejection of claims 1 and 13 are combined to
reject the amended claim 13 of this after-final.”).
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Application 13/540,973
can be changed or adjusted.” Id. The Examiner found that “Giles teaches an
increase in a predetermined fault time required to determine diagnostic
trouble codes P[0025], additional time is provided for a failure to mature or
demonstrate repeatability, the additional time increases the probability that
the fault can be identified, isolated and repaired. P[0027].” Id. According to
the Examiner, it would have been obvious for one of ordinary skill in the art
“to combine the vehicle information recording system of Maeda . . . with the
increased time for failure detection of Giles in order to reduce the number of
false failures in vehicle systems, which will decrease warranty cost and
increase customer satisfaction.” Id. (citing Giles 1 6).
First, Appellant states that “Maeda may describe or indicate a vehicle
state detected by in-vehicle sensors,” “[hjowever, Maeda does not teach or
suggest determining whether an anomalous vehicle behavior, which satisfies
a determination condition, continuously arises for a continued period that is
longer than a determination period” as set forth in clause a.ii. Br. 6.
Appellant notes that, to address this clause in the Rejection, the Examiner
cited paragraph 62 of Maeda4 before quoting a portion of paragraph 62,
which provides “‘[a]n output value of the sensor exceeds a decision
threshold’ may mean any one of, for example . . . ‘the output value of the
sensor exceeds the decision threshold for a predetermined period.’” Id.
According to Appellant, “this ‘predetermined period’ for which the output
value of the sensor exceeds the decision threshold is not a continued period
for which anomalous vehicle behavior continuously arises as required by
claim 13.” Id. at 6—7. Appellant then quotes another portion of paragraph
4 We note that the Examiner also cited paragraph 46 of Maeda for this
clause. See Final Act. 6—7.
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62 and argues that “[t]he time period measured in paragraph [0062] of
Maeda is therefore not a continued time period during which an anomalous
vehicle behavior continuously arises” because “[t]he time period measured
in paragraph [0062] of Maeda ends at a time when an abnormal code is
generated.” Id. at 7. According to Appellant:
In contrast, the continued period of claim 13 is that time
period in which an anomalous vehicle behavior continuously
arises. That is, the continued period of claim 13 is that time
period in which the anomalous vehicle behavior begins (by virtue
of initially satisfying a determination condition) and
continuously arises (again, by virtue of satisfying the
determination condition).
Id.
We are not apprised of error based on Appellant’s first argument
because the argument does not address the rejection as articulated. As noted
by the Examiner, Appellant argues that one disclosed embodiment fails to
satisfy the limitation at issue, but fails to show error in the findings by the
Examiner, which relate to a different disclosed embodiment. See Ans. 3
(“[A]ppellant is arguing a single example from Maeda . . . without taking
into account the overall concept or idea of the invention of Maeda.”).
Specifically, as the recited “continued period” in clause a.ii, the Examiner
did not rely on “time measuring unit 16” as generally disclosed in paragraph
62 or as more specifically described in the example highlighted by
Appellant. See Br. 7 (adding emphasis to a portion of a sentence from
paragraph 62 of Maeda, which begins “For example”).
Instead, to address the recited “continuously arises for a continued
period that is longer than a determination period,” the Examiner relies on the
disclosure that, in one embodiment, the system in Maeda determines that
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“the sensor exceeds the decision threshold for a predetermined period.”
Ans. 2 (discussing a portion of Maeda 1 62 that begins eight lines up from
the bottom of the paragraph), 3 (“Maeda . . . determine^] whether a sensor
has exceeded a value for a predetermined period of time. P[0062] Based on
the broadest reasonable interpretation of the claims in light of the disclosure,
Maeda . . . (P[0046] and P[0062]) teach[es] the claimed determine whether
anomalous vehicle behavior continuously arises for longer than a
determination period.”).5
Second, Appellant argues that “Maeda also does not describe or
indicate ‘wherein: the period change section changes the determination
period to be the lengthened determination period by lengthening the
determination period whereas the behavior determination section continues
receiving the detection signal indicating the vehicle state from the sensor’”
as recited in clause d. Br. 8. Appellant discusses paragraphs 64 to 69 of
Maeda and argues that, “[i]n Maeda, the sampling frequency to measure the
duration time is changed depending on the kind of the vehicle state such as
the steering angle or ambient temperature.” Br. 8—9. According to
5 In the embodiment relied on by the Examiner, the point at which
“the sensor exceeds a decision threshold for a predetermined period” would
actually indicate the beginning of “time measuring unit 16.” See Maeda 1 62
(providing that “[t]he time measuring unit 16 measures time from when an
output value of the sensor satisfies a determination condition to determine a
predetermined vehicle state {when the output value exceeds a decision
threshold) to when the output value of the sensor satisfies an abnormality
determination condition (that is, duration time of the vehicle state to when
the abnormal determination condition is satisfied)” and that ‘“[a]n output
value of the sensor exceeds a decision threshold’ may mean any one of, for
example,. . . ‘the output value of the sensor exceeds the decision threshold
for a predetermined period’” (emphasis in italics added)).
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Application 13/540,973
Appellant, “this sampling frequency specific to a subject vehicle state is not
changed after a first abnormality occurs. The same sampling time is used
for the subject vehicle state even when a second abnormality occurs.” Id. at
9. Appellant then argues that “Maeda thus fails to disclose” clause c and
“thus fails to appreciate the advantage of ‘suppressing] the storage of the
unnecessary travel information.’” Id. (citing Spec. 3,11. 10—20).
We are not apprised of error based on Appellant’s second argument
because the argument does not address the rejection as articulated. The
Examiner acknowledged that Maeda does not disclose “chang[ing] the
determination period to a lengthened determination period by lengthening
the determination period” as recited in clause c or as recited (with minor
changes) in the beginning of clause d. See Final Act. 7, 12—13; Ans. 4
(“Regarding the argument concerning the [‘Jperiod change section changes
the determination . . .’ (last section of claim 13)..., the examiner admitted
that Maeda . . . do[es] not explicitly teach this limitation.”). Instead, the
Examiner relies on Maeda as modified by Giles to address these limitations.
See Final Act. 7, 12—13; Ans. 4 (stating that “[t]he examiner recited the parts
of Maeda . . . [that] show that Maeda . . . was capable of using varying time
periods for abnormality detection in order to establish the prima facie case of
obviousness for a combination with the secondary prior art of Giles” and
then setting forth various teachings of Giles).
Third, Appellant argues that “Giles may teach an increase in a
predetermined fault time required to determine diagnostic trouble codes by
providing additional time,” but, “as acknowledged by the Final Office
Action, lengthening the time in the Giles system is for allowing the
diagnostic system to reduce false failure.” Br. 9. Appellant argues that
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“[s]uch a purpose or effect is very different from that of claim 13 of the
present application which intends to suppress the storage of the unnecessary
travel information” and thus, “one skilled in the art would not have been
motivated to use the teachings of Giles to purportedly arrive at the invention
of claim 13.” Id.
As noted by the Examiner, Appellant does not contest the findings
regarding Giles, but rather, argues “that the purpose or effects are different”
between Giles and the claimed invention. Ans. 4. Even assuming this
difference exists, we are not apprised of error in the rejection because “[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007); see also Alcon Res.,
Ltd. v. Apotex, Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“We have
repeatedly held that the motivation to modify a prior art reference to arrive at
the claimed invention need not be the same motivation that the patentee
had.”). “Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” KSR, 550 U.S.
at 420; see also Ans. 4 (stating that “the fact that appellant has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious” and citing Ex parte Obiaya, 227
USPQ 58, 60 (BPA1 1985)). We note also that suppressing the storage of
the unnecessary travel information is not recited in claim 13. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on
limitations appearing in the claims”).
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Moreover, we are not apprised of error in the Examiner’s alternative
position that the purpose or effects between Giles and the claimed invention
are “equivalent” in that reducing false failures, as taught in Giles, would lead
to suppressing the storage of the unnecessary travel information in the
modified device. See Ans. 4 (“The false failures of Giles are equivalent to
the unnecessary travel information of the appellant. And, the reduction in
the number of failures would make it unnecessary to store that information.
The false failures and the vehicle state information associated with the false
failures would no longer need to be recorded, generated or saved for later
analysis. This is equivalent to . . . suppressing the storage of unnecessary
information.”).
For these reasons, we sustain the rejection of claim 13.
DECISION
We affirm the decision to reject claim 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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