Ex Parte YU et al

Patent Trial and Appeal Board

Jan 26, 2017

12868421 (P.T.A.B. Jan. 26, 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.
12/868,421 08/25/2010 Seung-dong YU 2092-28
(OEC/5897/USDMC)
5837
66547 7590 01/30/2017
THF FARRFT T T AWFTRM PC
EXAMINER
290 Broadhollow Road
Suite 210E
BUGG, GEORGE A
Melville, NY 11747 ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEUNG-DONG YU, WOO-YONG CHANG, SE-JUN PARK,
and MIN-JEONG MOON
Appeal 2015-006225
Application 12/868,421
Technology Center 2600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JOYCE CRAIG,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JOHN A.
JEFFERY.
Opinion Dissenting filed by Administrative Patent Judge JOSEPH L.
DIXON.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention provides vehicle information to a mobile device
via a vehicle-mounted Global Positioning System (GPS) that provides
vehicle location information, and (2) a server-based vehicle information
Appeal 2015-006225
Application 12/868,421
system that provides vehicle information based on received location
information. See generally Abstract; Spec. ]Hf 7—14; Figs. 1,3. Claim 1 is
illustrative:
1. A vehicle information providing method of a user terminal,
comprising:
receiving, by the user terminal, first information of a vehicle from a
communication module mounted on the vehicle, wherein the first
information comprises current location information and ID information of
the vehicle;
transmitting the received first information to an external server; and
receiving second information of the vehicle from the external server
generated based on both the transmitted first information and current
location information of the vehicle transmitted directly from the
communication module to the external server.
THE REJECTION
The Examiner rejected claims 1—18 under 35 U.S.C. § 112(a) or 35
U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 3—4.1
CONTENTIONS
In the Final Rejection, the Examiner finds that claims 1, 3, 8, 10, 12,
and 17 introduce new matter in view of the recited first information, second
information, and ID information of the vehicle. Final Act. 3^4.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed Aug.
14, 2013 (“Final Act.”); (2) the Appeal Brief filed Feb. 11, 2014 (“Br.”); and
(3) the Examiner’s Answer mailed July 10, 2014 (“Ans.”).
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Application 12/868,421
Appellants argue that the original disclosure supports the recited
limitations and, therefore, there is no new matter. See Br. 3—7. According to
Appellants, the first information is information including current location
information and vehicle ID information, including the bus number, shown in
Figures 1, 4, and 5. Br. 5. Appellants also refer to steps 320 and 330 of
Figure 3 and the Specification’s paragraph 53 in connection with the recited
first information. Br. 5—6. Appellants add that the original disclosure also
supports the recited second information, namely the expected bus arrival
time, and that this information is not only received from a server, but is also
based on the first information and current location information as claimed.
Br. 6-7.
ISSUE
Has the Examiner erred in rejecting claim 1 under § 112, first
paragraph, by finding that the original disclosure fails to convey with
reasonable clarity to skilled artisans that Appellant possessed the claimed
invention as of the filing date.
ANALYSIS
We begin by noting that, in the Advisory Action, mailed November
26, 2013, the Examiner indicates that the written description rejection based
on the recited first information and ID information is withdrawn, but the
limitation reciting receiving second information in the claim’s last clause
still lacks support. Accord Br. 3 (noting this withdrawal). Although the
Examiner’s Answer does not expressly affirm this withdrawal, and the
Answer indicates that every ground of rejection set forth in the Final Office
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Application 12/868,421
action mailed August 14, 2013 is maintained (Ans. 2), the Examiner
principally discusses the second information limitation in responding to
Appellants’ arguments.
Nevertheless, claim 1 requires that the received second information is
generated based on the first information which includes the ID information.
Because the recited second information is tied directly to the first
information and its constituent ID information, we consider each recited
form of information in the context of the recited method steps to determine
whether Appellants’ original disclosure supports the claimed invention.
Turning to claim 1, the claim first requires that the user terminal
receives the first information from a communication module mounted on the
vehicle, where the first information comprises both (1) current location
information, and (2) vehicle ID information. Our emphasis underscores that
the first information must be received from the vehicle-mounted
communication module, namely the GPS 155 in Figure 1 that Appellants
equate to this module. See Br. 5—6.
But according to the original disclosure, the GPS transmits location
information—not vehicle ID information—to both the terminal 100 and bus
information system 180. See Spec. 30 (noting that the GPS transmits
location information received from a satellite to the bus information system
and terminal). Rather, the bus information system transmits vehicle ID
information, namely the bus number and bus line, to the terminal. Spec.
129. So although the terminal receives current location information from a
vehicle-mounted, GPS-based communication module, the original disclosure
does not indicate that the terminal also receives vehicle ID information from
that module to reasonably support the first step of claim 1 which requires
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that the terminal receive both components of the “first information” from the
communications module.
This fact is underscored by the flow chart in Appellants’ Figure 3. As
shown in steps S310 to S330 of that figure, after the user boards a bus, the
user’s terminal connects to the bus-mounted GPS so that the terminal
receives that bus’s location information. Spec. 1 53. Then, in step S340, the
terminal connects to the bus information system so that the terminal can
receive bus information from that system, including the bus number and bus
line. Id. 1 54.
That is, the terminal receives (1) the location information from the
GPS, and (2) the vehicle ID information from the bus information system.
Therefore, the terminal receives only part of the recited first information
from the vehicle-mounted communication module. Consequently, the
original disclosure does not reasonably support receiving both recited
components of the first information from that module as required by claim 1.
To the extent that Appellants contend that receiving both the current location
information and the vehicle ID information from the vehicle-mounted
communication module (i.e., the GPS) would have been obvious from the
original disclosure (see Br. 3—7), such a contention is unavailing, for it is
well settled that while the invention need not be described verbatim, a
description that merely renders the invention obvious does not satisfy the
written description requirement. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (enbanc) (citations omitted).
Nor does the original disclosure reasonably support receiving second
vehicle information from an external server generated based on both the
transmitted first information and current location information, as claimed.
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Our emphasis underscores that the second information is generated based, in
pertinent part, on the first information that is transmitted to the server and,
by the terms of claim 1, previously received by the terminal.
On page 2 of the Brief, steps 340 to 365 of Figure 3 are said to
support the recited “transmitting the received first information to an external
server,” namely bus information system 180.2 Those steps involve the
terminal connecting to the bus information system, and transmitting
destination information to that system in step S365. According to paragraph
55 of Appellants’ Specification, destination information refers to the name
or location of a destination to which a user wishes to travel. After the user
inputs this destination information in step S360, it is transmitted to the bus
information system (i.e., the server). See Spec. Tflf 56, 60; Fig. 3 (steps S360
and S365). The bus information system then calculates the bus’s expected
arrival time, and transmits this expected time to the terminal in step S370.
Spec. 1 60.
Therefore, the expected arrival time (i.e., the second information) is
(1) received from a server, namely the bus information system, and (2)
generated based on transmitted destination information and current location
information. The original disclosure, however, does not reasonably support
generating the second information based on the transmitted first information,
namely the particular information received by the terminal in claim 1 ’s first
step and transmitted to the server in the second step. In short, the destination
information on which the expected arrival time is based is not the
transmitted first information, as claimed. Rather, the destination information
2 See also Br. 7 (equating bus information system 180 to the recited server).
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is merely the name or location of the user’s desired destination. Spec. 1 55.
To the extent that Appellants contend that it would have been obvious to
generate the second information, namely the expected arrival time, in the
particular manner claimed based on the transmitted destination information
given the original disclosure, such a position is unavailing in light of Ariad.
SeeAriad, 598 F.3d at 1352.
On this record, then, we find that Appellants’ original disclosure
does not convey with reasonable clarity to skilled artisans that Appellants
possessed the claimed invention as of the filing date. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991). Therefore, we are not
persuaded that the Examiner erred in rejecting claim 1, and claims 2—17 not
argued separately with particularity.3
CONCLUSION
The Examiner did not err in rejecting claims 1—18 under § 112, first
paragraph.
3 We leave to the Examiner to consider whether the claims recite eligible
subject matter under § 101 in light of Alice Corp. v. CLS Banklnt’l, 134
S.Ct. 2347, 2355 (2014). We also leave to the Examiner to consider whether
independent claim 10 improperly recites active method steps as part of an
apparatus claim (e.g., “a communication unit which communicates with . . .
,” “a controller which controls receiving . . . ,” and “the received first
information is transmitted. . .”) (emphasis added) to render the claim
indefinite. See In re Katz Interactive Call Proc. Pat. Litig., 639 F.3d 1303,
1318 (Fed. Cir. 2011) (citing IP XL Holdings, LLC v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005)); see also Rembrandt Data Technologies,
LPv. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (data transmitting
device held indefinite for reciting transmitting method step).
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DECISION
The Examiner’s decision rejecting claims 1—18 is affirmed.
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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DIXON, Administrative Patent Judge dissenting.
35 U.S.C. § 112, First Paragraph
I respectfully dissent from the majority’s affirmance of the rejection
of claims 1—18 under U.S.C. § 112 (pre-AIA), first paragraph. The MPEP
sets forth the methodology for the Examiner in determining adequacy of
written description:
Office personnel should adhere to the following procedures when
reviewing patent applications for compliance with the written
description requirement of 35 U.S.C. 112(a) or pre-AIA 35
I. AX/ 112, para. 1. There is a presumption that an adequate
written description of the claimed invention is present in the
specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at
96, thus the examiner has the initial burden, after a thorough
reading and evaluation of the content of the application, of
presenting evidence or reasons why a person skilled in the art
would not recognize that the written description of the invention
provides support for the claims. While it is not necessary for the
examiner to present factual evidence, to make a prima facie case
it is necessary to point out the claim limitations that are not
adequately supported and explain any other reasons that the
claim is not fully supported by the disclosure to show that the
inventor had possession of the invention. See for example, Hyatt
v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377
(Fed. Cir. 2007) in which the examiner made a prima facie case
by clearly and specifically explaining that the written description
did not support the particular claimed combination of elements,
even listing each and every element of the allegedly unsupported
combination. The court found the “examiner was explicit that
while each element may be individually described in the
specification, the deficiency was lack of adequate description of
their combination” and therefore “[t]he burden was then properly
shifted to [inventor] to cite to the examiner where adequate
written description could be found or to make an amendment to
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address the deficiency.” Id. See also Stored Value Solutions,
Inc. v. Card Activation Technologies, 499 Fed.App’x 5, 13-14
(Fed. Cir. 2012) (non-precedential) (The claims drawn to a
method for processing debit purchase transactions, requiring
three separate authorization codes, were found to be invalid
because “the written description [did] not contain a method that
include[d] all three codes” and “[e]ach authorization code is an
important claim limitation, and the presence of multiple
authorization codes in [the claim] was essential”.).
MPEP 2163 II (A). The totality of the Examiner’s rejection in the record is
based upon three separate statements, which I find insufficient. First, the
Examiner maintains:
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C.
112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. The claim(s) contains 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 or a joint inventor, or for pre-AIA the inventor(s), at the
time the application was filed, had possession of the claimed
invention. Claims 1, 3, 8, 10, 12 and 17 are introducing new
matter “first information of a vehicle”, “ID information of the
vehicle” and “second information of the vehicle” in the
limitations which was not described in the specification.
(Final Act. 3—4). Second, the Examiner maintains:
In regards to independent claims 1,10, there is no support in the
specification for the limitation “receiving second information
of the vehicle from the external server generated based on both
the transmitted first information and current location information
of the vehicle transmitted directly from the communication
module to the external server.” Rejection of 35 USC 112(a) for
claims 1-18 is maintained.
(Adv. Act. (Oct. 24, 2013) 2). Third, the Examiner maintains:
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Objections to specification is withdrawn in light of applicant's
amendment to specifications. In regards to independent claims
1,10 and all dependent claims of them, The claim rejections
35 USC 112(a) for the limitations “the first information of a
vehicle” and “ID information of the vehicle” is withdrawn in
light of applicant's explanation regarding the limitations. But the
limitation “receiving second information of the vehicle from the
external server generated based on both the transmitted first
information and current location information of the vehicle
transmitted directly from the communication module to the
external server” still lacks support. Rejection of 35 USC 112(a)
for claims 1-18 is maintained regards to the limitation “receiving
second information of the vehicle from the external server
generated based on both the transmitted first information and
current location information of the vehicle transmitted directly
from the communication module to the external server.”
(Adv. Act. (Nov. 26, 2013) 2) (Emphasis added).
“[Cjompliance with the 'written description' requirement of § 112 is a
question of fact. . . .” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991) {citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989);
Utter v. Hiraga, 845 F.2d 993, 998 (Fed. Cir. 1988)). A written
“description must ‘clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.’” AriadPharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
{quoting Vas-Cath, 935 F.2d at 1563). “In other words, the test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id. {citing
Vas-Cath, 935 F.2d at 1563).
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With regards to this question of fact regarding the written description
support, I find the Examiner has not made sufficient factual findings to
support the allegation of a lack of written description support. The
Examiner has not addressed Appellant’s substantive arguments and
proffered support in the originally filed application or the originally filed
claims. Additionally, the majority expands the Examiner’s rejection, but
does not address Appellants’ proffered arguments for support.
Consequently, I find the majority’s rejection to go beyond the scope of
review the Examiner’s sweeping statements of the rejection in the Final
Action.
The majority appears to reexamine the proffered findings of the
Examiner and to further expand upon the Examiner’s findings which were
expressly withdrawn in the Advisory Action. Consequently, the majority
essentially makes a new ground of rejection, but does not formulate and
explain that they find the first step of the method to be unsupported by the
originally filed Specification, contrary to the Examiner’s finding. While I
find the various embodiments of the disclosed invention to show clear
possession of the bus/vehicle information at the GPS, bus/vehicle
information transmitted to the user terminal, and input of bus/vehicle
information from the user terminal, I would additionally find that in any
communication, some type of identification information must necessarily be
included in any data stream of communication. This information may not
necessarily be bus/vehicle information, but there must be some identification
information to correlate with the GPS information. Otherwise, all
communications would not able to be correlated to the senders. Whether
this rises to the level of a lack of written description support has not been
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briefed nor raised by the Examiner and Appellants. Consequently, I need
not reach this issue on review, which is limited solely to the third step of the
method.
Because the Examiner has not found that the first information was
lacking in the transmission, then I would find that both location and ID data
were transmitted, received, and used to generate the second information.
Consequently, I find both location and ID data would be both used to
determine the estimated time of arrival which would be returned as the
second information.
Therefore, I would not sustain Examiner’s proffered rejection based
solely upon the third limitation in independent claim 1 and corresponding
limitations in independent claim 10.
Appellants have repeatedly contended that the Examiner’s rejection is
insufficient. (See After Final responses, dated Oct. 3, 2013, and Nov. 13,
2013, and Appeal Brief, filed Feb. 11, 2014). Appellants contend that “it is
well recognized that the claims need not be described in haec verba in the
original disclosure in order to satisfy the written description requirement.”
(After Final response, (Oct. 3, 2013) 3). I agree with Appellants and find
Appellants’ have submitted evidence of the various embodiments disclosed
in Appellants’ Specification to support Appellants’ contention that
Appellants’ had possession of the claimed invention regarding the “second
information.” I find the Examiner has not evaluated the evidence and
provided more than a conclusory statement of a lack of written description
support.
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Furthermore, I find the Examiner had expressly withdrawn the
rejection regarding the first two steps of the invention recited in independent
claim 1, but the majority appears to reinstitute that portion of the rejection.
I find this to be unreasonable based on the administrative record.
Moreover, the majority’s expansion of the rejection and re-characterization
of the rejection to be based upon speculation as to the Examiner’s basis for
the rejection. Consequently, I cannot agree with the majority that the
Examiner has set forth a proper rejection beyond a preponderance of the
evidence because of the Examiner’s statement of the rejection is unclear.
Additionally, if the Examiner had withdrawn the rejection regarding
the first two steps regarding “wherein the first information comprises current
location information and ID information of the vehicle; transmitting the
received first information to an external server,” then the first information
comprises both location and ID information. Because the first information is
transmitted to and received by the external server, then it seems abundantly
clear that both information would be present and used to generate the second
information. Consequently, I find it unreasonable for the Examiner to
maintain that that the written description support is lacking solely for the
limitation regarding the second information. Otherwise, I find the rejection
is unclear and not supported by a preponderance of the evidence. Either the
Examiner rejects all of the limitations, as the majority implies, or the
Examiner is wrong. With that said, the majority goes well beyond the
Examiner’s stated rejection and is not reviewing the Agency Final Action.
Appellants contend that the Examiner has not has not met his initial burden
as set forth in MPEP 2163.04 I. (Br. 3—4). I agree Appellants.
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While the Examiner further attempts to clarity the rejection in the
Response to Argument Section of the Examiner’s Answer, the Examiner
expressly relies upon the sweeping statement in the Final Action as the
rejection. (Final Act. 3). I find the rejection in the Final Action to be
unsupported by an evaluation of the content of the application, of presenting
evidence, or reasons why a person skilled in the art would not recognize that
the written description of the invention provides support for the claims as set
forth in MPEP 2163.04 I. (Final Act. 3—4). As a result, I respectfully
dissent from the majority’s affirmance of the rejection of independent claims
1-18.
35U.S.C. § 101
Additionally, I respectfully cannot agree with the majority regarding
their inference and urging consideration of a lack of statutory subject matter
under 35 U.S.C. § 101. I have no difficulty finding a method and a system
of communication between two remote units (terminal and server) providing
location information and estimated time of arrival to be more than an
abstract idea. Rather, I find the claimed invention to be directed to statutory
subject which is broad to be addressed by under anticipation and
obviousness.
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