Ex Parte Yuda et al

Board of Patent Appeals and Interferences

Apr 11, 2011

11374702 (B.P.A.I. Apr. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASATO YUDA, YOSHIMICHI KAWAMOTO,
NORIO YAMAZAKI, and SHIGENORI TAKIMOTO
____________

Appeal 2009-012410
Application 11/374,702
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Masato Yuda et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-6. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
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Application 11/374,702

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The Invention
The claimed invention is to an understeer suppressing apparatus or
method.
Claims 1 and 4, reproduced below, are representative of the subject
matter on appeal.
1. An understeer suppressing apparatus for a
vehicle, comprising:
a steering reaction force device for
suppressing front wheel steering when the vehicle
is in an understeer state;
an alarm device for informing that the
vehicle is in the understeer state; and
a braking force distribution device for
generating moment of the vehicle by applying
braking forces different from each other to a left
and right wheels,
wherein as a degree of understeer is
increased, the steering reaction force device, the
alarm device, and the braking force distribution
device are operated in this order.

4. A method of suppressing understeer of a
vehicle, comprising the steps of:
suppressing front wheel steering with a
steering reaction force device when the vehicle is
in an understeer state;
informing with an alarm device that the
vehicle is in the understeer state; and
applying braking forces with a braking force
distribution device to at least one of a left and right
wheel of the vehicle,
wherein as the amount of understeer is
increased, the steering reaction force device, the
alarm device, and the braking force distribution
device are operated in this order.

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Application 11/374,702

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The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Nishizaki US 6,415,215 B1 Jul. 2, 2002
Sugitani US 6,823,245 B2 Nov. 23, 2004

The Rejection
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sugitani and Nishizaki.

OPINION
We have carefully reviewed the rejections in light of the arguments of
the Appellants and the Examiner. As a result of this review we have reached
the conclusion that the combined teachings of Sugitani and Nishizaki do
establish the unpatentability of claims 1-3, while the combined teachings of
Sugitani and Nishizaki do not establish the unpatentability of claims 4-6.
Therefore, the rejection of claims 1-3 is sustained and the rejection of claims
4-6 is reversed. Our reasons follow.
Claims 1-3
Appellants do not contest the Examiner’s findings that the combined
teachings of Sugitani and Nishizaki satisfy the claimed subject matter of an
apparatus for understeer suppressing comprising a steering reaction force
device, an alarm device, and a brake force distribution device, as called for
in claim 1. As such, we find that these devices are well-known in the art.
Appellants contend that the combined teachings of Sugitani and Nishizaki
fail to teach that these known devices operate in order as recited in claim 1.
App. Br. 10-11.
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Application 11/374,702

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The order of operation constitutes an intended use of the devices. It is
well-settled that the recitation of a new intended use for an old product does
not make a claim to that old product patentable. In re Pearson, 494 F.2d
1399, 1403 (CCPA 1974) (intended use of an old composition does not
render composition claim patentable); In re Zierden, 411 F.2d 1325, 1328
(CCPA 1969) (“[M]ere statement of a new use for an otherwise old or
obvious composition cannot render a claim to the composition patentable.”);
In re Sinex, 309 F.2d 488, 492 (CCPA 1962) (statement of intended use in
an apparatus claim failed to distinguish over the prior art apparatus); In re
Hack, 245 F.2d 246, 248 (CCPA 1957) (“the grant of a patent on a
composition or a machine cannot be predicated on a new use of that machine
or composition”); In re Benner, 174 F.2d 938, 942 (CCPA 1949) (“no
provision has been made in the patent statutes for granting a patent upon an
old product based solely upon discovery of a new use for such product”).
Accordingly, with the only acknowledged difference between the claimed
apparatus and the combined teachings of the prior art being the operational
order of the devices, that difference fails to distinguish the claimed subject
matter over the prior art.
Appellants’ arguments that the combination of Sugitani and Nishizaki
is unmotivated, destroys the device and method, and would still fail to meet
the limitations are not persuasive to demonstrate error in the Examiner’s
obviousness rejection of claim 1. App. Br. 12-14. Obviousness of the
claimed subject matter can be established by means other than an explicit
TSM (teaching, suggestion, motivation). Here, the Examiner’s finding that
Nishizaki teaches the order of first the application of a steering reaction
force device followed by the application of a braking distribution device,
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Application 11/374,702

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provides an articulated reason with some rational underpinning that it would
have been obvious to a person having ordinary skill in the art to initiate the
brake force distribution device of Sugitani after initiating the steering
reaction device of Sugitani to reduce excessive use of the braking force
distribution device. Ans. 4. Appellants’ arguments fail to elaborate how
Sugitani’s or Nishizaki’s systems would be destroyed or rendered inoperable
by the course of applying the teachings of Nishizaki to Sugitani as proposed
by the Examiner. Moreover, our reviewing court has recognized that a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate any or all reasons to combine teachings.
See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000) (“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
Appellants’ reasons why the alert could occur after the braking event of the
Sugitani and Nishizaki combination are directed to the Examiner’s response
in an advisory Office action and not to the Examiner’s rejection.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1. Appellants’ separate arguments concerning the rejection of claims
2 and 3 rely essentially on their arguments concerning the rejection of
claim 1. Our reasoning above is equally applicable to the rejection of claims
2 and 3. As such, we sustain the Examiner’s rejection of claims 2 and 3.
Claims 4-6
Based on the Appellants’ arguments we find that the Examiner’s
rejection fails to establish by a preponderance of the evidence that the
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method steps of claim 4 are rendered obvious by the combined teachings of
Sugitani and Nishizaki. While the order of the steps set forth in a method
claim need not ordinarily be performed in the order presented, Appellants’
claim 4 specifies the order in which the steps are to be performed. We are
not persuaded by the Examiner’s position as to why the claimed order would
have been obvious to a person of ordinary skill in the art, in view of Sugitani
and Nishizaki. As such, we cannot conclude by a preponderance of the
evidence that the claimed subject matter with these claims would have been
obvious to a person having ordinary skill in the art given the combination of
Sugitani and Nishizaki.

DECISION
The Examiner’s decision to reject claims 1-3 under 35 U.S.C. § 103(a)
as unpatentable over Sugitani and Nishizaki is affirmed.
The Examiner’s decision to reject claims 4-6 under 35 U.S.C. § 103(a)
as unpatentable over Sugitani and Nishizaki is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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