Toyota Research Institute, Inc.

Patent Trials and Appeals Board

Mar 10, 2022

2021004496 (P.T.A.B. Mar. 10, 2022)

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. 16/130,680 09/13/2018 Matthew Amacker 108749-158/2018-207 6825 96411 7590 03/10/2022 Dinsmore & Shohl LLP 255 East Fifth Street, Suite 1900 Cincinnati, OH 45202 EXAMINER DRESSLER, ANNMARIE ART UNIT PAPER NUMBER 3669 NOTIFICATION DATE DELIVERY MODE 03/10/2022 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): CincyPAIR@dinsmore.com elise.merkel@dinsmore.com jennifer.baker@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW AMACKER Appeal 2021-004496 Application 16/130,680 Technology Center 3600 Before KEVIN F. TURNER, DANIEL S. SONG, and STEFAN STAICOVICI, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-15, 17, and 19-22. Claims 16 and 18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Toyota Research Institute, Inc. Appeal Br. 2. Appeal 2021-004496 Application 16/130,680 2 CLAIMED SUBJECT MATTER The claims are directed to a vehicular sensor network and a method for using the same. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A subject vehicle comprising: a communication component configured to: establish a connection with a connectable vehicle when a distance to the connectable vehicle falls below a threshold and activate the connectable vehicle from a low-power state to activate sensors associated with the connectable vehicle; and receive a detection alert from the connectable vehicle detecting that an event is or will be occurring; and an operational component configured to: modify operation of the subject vehicle based on the detection alert; and return the connectable vehicle to the low-power state after operation of the subject vehicle is modified. Appeal Br. 13 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Appeal 2021-004496 Application 16/130,680 3 Name Reference Date Beaurepaire US 2016/0148513 A1 May 26, 2016 Philosof US 2018/0204456 A1 July 19, 2018 Lepp US 2019/0256091 A1 Aug. 22, 2019 Han (citations to the English translation) KR 10-2018-0003741 Jan. 10, 2018 Virtanen WO 2019/013948 A1 Jan. 17, 2019 REJECTIONS 1. Claims 1-7, 15, 17, and 19-22 are rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 8-9. The Examiner also rejects various claims under 35 U.S.C. § 103 as follows: 2. Claims 8-10, 12, and 13 as being unpatentable over Lepp. Final Act. 10. 3. Claims 1-6, 11, 15, 17,2 19, and 20 as being unpatentable over Lepp in view of Han. Final Act. 12. 4. Claim 7 as being unpatentable over Lepp in view of Han and Philosof. Final Act. 19. 5. Claim 14 as being unpatentable over Lepp in view of Philosof. Final Act. 20. 6. Claim 21 as being unpatentable over Lepp in view of Han and Virtanen. Final Act. 21. 7. Claim 22 as being unpatentable over Lepp in view of Han and Beaurepaire. Final Act. 22. 2 We note that claim 17 improperly depends from claim 16, which has been canceled. Appeal Br. 16 (Claims App.). Appeal 2021-004496 Application 16/130,680 4 OPINION Claim Interpretation In rejecting the claims on appeal, the Examiner interprets the terms “a communication component configured to establish a connection,” and “an operational component configured to: modify operation of the subject vehicle” recited in independent claims 1 and 15, as means plus function limitations under 35 U.S.C. § 112(f), which “cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.” Final Act. 7. Looking to the Specification, the Examiner determines that “‘communication component’ is interpreted to be a communication device including hardware such as an antenna, a modem, LAN port, Wi-Fi card, WiMax card, mobile communications hardware, near-field communication hardware, satellite communication hardware or equivalent for network communication as per the specification.” Final Act. 7 (emphasis omitted) (citing Spec. ¶ 24; Fig. 2). However, the Examiner determines that “[t]he specification does not provide any structure for ‘an operational component,’” and “fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.” Final Act. 7-8 (emphasis omitted). The Appellant disagrees with the Examiner’s claim interpretation, and argues that “the claim terms ‘communication component’ and ‘operational component’ do not recite any ‘means for’ language that would invoke a means-plus-function interpretation.” Appeal Br. 6. As such, the Appellant argues that it is “entitled to the presumption that means-plus-function has not been invoked.” Appeal Br. 7. Appeal 2021-004496 Application 16/130,680 5 We agree with the Examiner’s interpretations of the claims. Although a presumption exists against application of 35 U.S.C. § 112(f) if the term “means for” is not used, it is also well established that 35 U.S.C. § 112(f) applies even if the term “means” has not been used when “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Such is the case with respect to claims 1 and 15. The Appellant argues that “[t]he claimed communication component and operational component have sufficiently definite meanings as names for structures that perform their respective functions, similar to a ‘filter’ or a ‘lock’ configured to perform an operation.” Appeal Br. 7. The Appellant “asserts that the claim terms ‘communication component’ and ‘operational component’, even if covering a broad class of structures, would be recognized by one of ordinary skill in the art as having specific structural meanings relating to vehicle operations and vehicle communications.” Appeal Br. 7; see also Reply Br. 2 (“Appellant asserts that a communication component and an operational component each have sufficiently definite meanings as names for structures that perform their respective functions.”); Reply Br. 3. These arguments are unpersuasive, and we agree with the Examiner that: unlike the terms “filters”, “brakes” etc., in the case cited above, the terms “operational component” and “communication component” are not terms of art and do not have sufficiently definite meaning as the names for structures to a person of ordinary skill in the art even when considering these terms within the field of vehicle operations and vehicle Appeal 2021-004496 Application 16/130,680 6 communications. Instead these terms set forth the same black bock [sic, box] recitation of structure for providing the specified functions as if the term “means” had been used. Ans. 5. The Appellant argues that it is “unable to find any authority that a claim term must be a ‘term of art’ to recite sufficient structure to avoid means-plus-function interpretation.” Reply Br. 2. The Appellant misses the point being made by the Examiner, which is not that the terms must be terms of art to have sufficient structure, but rather, that if the terms at issue were terms of art, then that could be persuasive in demonstrating sufficient structure. However, that is not the case as to the terms “operational component” and “communication component.” Moreover, although the Appellant “asserts that the claim terms ‘communication component’ and ‘operational component’ . . . would be recognized by one of ordinary skill in the art as having specific structural meanings relating to vehicle operations and vehicle communications,” the Appellant fails to set forth what such “specific structural meanings” are, much less provide evidence in support thereof. Thus, the Appellant’s assertion is just that, merely an assertion. “[C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.” Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37 (Fed. Cir. 2008) (internal quotation marks omitted). That is, “[i]t is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function” to satisfy the obligation to disclose sufficient structure. Id. Appeal 2021-004496 Application 16/130,680 7 The Appellant also argues that “the claimed ‘communication component’ and ‘operational component’ are sufficiently modified by the terms ‘communication’ and ‘operational’ that would be recognized by one of ordinary skill in the art as having specific structural meanings relating to vehicular operations and vehicular communications.” Appeal Br. 7-8. However, we agree with the Examiner that “these modifying terms are simply describing the function of the component but do not narrow the structure.” Ans. 5. As the Examiner determines, the term “component” is a generic placeholder and the modifying terms of “operational” and “communication” do not give the term sufficiently definite meaning as the name for structure to a person of ordinary skill in the art even when considering the other language in the claim limitation and when considering these terms within the field of vehicle operations and vehicle communications. Ans. 5. The Appellant responds that it is “unaware of any authority that requires claim term modifiers to ‘narrow the structure’ to avoid a means- plus-function interpretation.” Reply Br. 3. However, the point being made by the Examiner is that the structural recitation “component” is merely a “generic placeholder,” and that the terms “communication” and “operational” merely indicate the function for the recited generic “component.” The Federal Circuit has found “generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote sufficiently definite structure [to avoid means-plus-function treatment]. . . .” Welker Bearing Company v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (citing Massachusetts Institute of Technology v. Abacus Software, 462 F.3d Appeal 2021-004496 Application 16/130,680 8 1344, 1354 (Fed. Cir. 2006)). The recitation “component” is similar to the generic terms noted by the court. Again, the Appellant “asserts that the terms ‘communication’ and ‘operational’ would be recognized by one of ordinary skill in the art as having specific structural meanings relating to vehicular operations and vehicular communications.” Reply Br. 3. However, as noted above, the Appellant again merely makes an assertion without setting forth what the “specific structure meanings” are, much less provide evidence as to what communication and operational components are. Indeed, as the Examiner further points out, “even when reading the claims in light of the specification it is unclear what this component encompasses. For example, in claim 1, the operational component both modifies operation of the subject vehicle and returns the connectable vehicle to low power state. Is it an actuator? Is it a system?” Ans. 6. Therefore, in view of the above considerations, we find no error in the Examiner’s interpretation of the terms “a communication component configured to establish a connection,” and “an operational component configured to: modify operation of the subject vehicle” recited in independent claims 1 and 15 as means plus function limitations under 35 U.S.C. § 112(f). Rejection 1: Indefiniteness Based on the above discussed claim interpretation, the Examiner rejects claims 1-7, 15, 17, and 19-22 under 35 U.S.C. § 112(b) as being indefinite. Final Act. 8-9. Specifically, the Examiner correctly finds that “the written description fails to disclose the corresponding structure, Appeal 2021-004496 Application 16/130,680 9 material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.” Final Act. 8; see also Final Act. 7 (“The specification does not provide any structure for ‘an operational component.’”) (Emphasis omitted). Thus, the Examiner determines that independent claims 1 and 15, as well as the claims depending therefrom, are indefinite. Final Act. 7. As to the applied indefiniteness rejection, the Appellant relies on arguments submitted against application of means plus function claim interpretation to assert that claims are not indefinite. Appeal Br. 8. Specifically, the Appellant: asserts the structural nature of the claim term itself “operational component”, even if covering a broad class of structures, would be recognized by one of ordinary skill in the art as having specific structural meanings relating to vehicle communications. Appellant therefore asserts that the claim term “operational component” is definite. Appeal Br. 8; see also Reply Br. 4. The Appellant relies on dependency on claims 1 or 15 for patentability of dependent claims 2-7, 17, and 19-22. Appeal Br. 8. However, the Appellant’s arguments that independent claims 1 and 15 should not be interpreted under 35 U.S.C. § 112(f) are unpersuasive for the reasons discussed above. A claim that includes an element which is expressed as a means plus function with no corresponding structure described in the underlying specification is indefinite under 35 U.S.C. § 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). Accordingly, we affirm the indefiniteness rejection of claims 1-7, 15, 17, and 19-22. Appeal 2021-004496 Application 16/130,680 10 Rejection 2: Claims 8-10, 12, and 13 The Examiner rejects claims 8-10, 12, and 13 as being unpatentable over Lepp. Final Act. 10. As to independent claim 8, the Examiner finds that Lepp discloses a method for utilizing a vehicle sensor network substantially as claimed, but “does not explicitly disclose that at the end of the power up process shown in the embodiment of Fig. 8 the sensors are returned to a low-power state.” Final Act. 10-11 (emphasis omitted). Nonetheless, the Examiner finds that Lepp teaches that “the sensors are returning to low-power state because a single vehicle powers up sensors multiple time[s] for multiple requests,” and returns the sensors to a low- power state “to save a vehicle’s battery power as detailed in [Lepp].” Final Act. 11 (citing Lepp ¶ 49). We agree with the Examiner and address the Appellant’s arguments below. The Appellant argues that Lepp “simply does not disclose ‘returning the connectable vehicle to the low-power state after operation of the subject vehicle is modified’ as recited in the claim,” and that “even on its face, the parked vehicle in Lepp ¶ 0049 (i.e., that does not provide detection services to conserve battery usage) is insufficient” to disclose the limitation at issue. Appeal Br. 10. According to the Appellant, “[a]t best, Lepp merely returns sensors to a low power state, rather than the connectable vehicle, much less any vehicle.” Appeal Br. 10; see also Reply Br. 5 (arguing that cited portions of Lepp “do not disclose anything regarding a vehicle entering a low power state (i.e., the vehicle rather than just the sensors).” The Appellant also argues that “[n]othing in Lepp discloses anything regarding a vehicle entering a low power state . . . based upon another vehicle modifying its operation.” Appeal Br. 10; see also Reply Br. 5 (Lepp is Appeal 2021-004496 Application 16/130,680 11 “silent regarding a vehicle entering a low power state based upon another vehicle having modified its operation.”). These arguments are unpersuasive. First, as the Examiner finds, “the sensors [of Lepp] are located on the parked vehicle,” and thus, are part of the vehicle. Ans. 6 (citing Lepp ¶ 49). As such, the recitation of the “low- power state” of the connectable vehicle is disclosed by a low-power state of the sensors of the connectable vehicle. In addition, as the Examiner also finds, Lepp controls the use of the sensors of a parked vehicle “in order to optimize power usage in the parked vehicle.” Ans. 6 (citing Lepp ¶ 49 (“a computing device associated with a parked vehicle may determine when to use sensors and when to not use sensors. Such determination is used to optimize power usage in a parked vehicle.”)). In that regard, as the Examiner finds, “[t]he parked connectable vehicle powers on sensors in order to provide multiple responses,” and that “[d]uring these responses and associated movement of the [subject] vehicle, the sensors are continued to be powered up.” Ans. 7 (citing Lepp ¶¶ 49, 79, 86-89, 106, 107); see also Lepp Fig. 8. Specifically, Lepp discloses a start of the process in step 810, receiving a request in step 820, powering up the sensors in step 830, sending a response in step 840, and end of the process at step 850, at which the sensors are no longer powered up. Lepp Fig. 8. Thus, Lepp discloses to one of ordinary skill that the sensors are powered off to conserve power after being used to provide responses to the subject vehicle. Moreover, Lepp further discloses “a length of time that the request is valid for,” which means that the sensors are turned off after the valid length of time. Lepp ¶ 72. Accordingly, we also agree with the Examiner’s finding that Appeal 2021-004496 Application 16/130,680 12 By keeping sensors powered on for a set time period and through multiple responses as the moving vehicle (subject vehicle) travels, the subject vehicle is controlling the eventual return to the low-power state, because a return is prevented until the responses directing the multiple movements are provided by the connectable vehicle. Ans. 8. Thus, we agree with the Examiner that the sensors of Lepp “are not returned to a low-power state until the vehicle operations [of the subject vehicle] are modified by the multiple responses [from the parked vehicle], and the return to low-power state is based on the modification of the subject vehicle.” Ans. 7. To the extent that the Appellant is arguing that Lepp merely ends the process rather than “returning the connectable vehicle to the low-power state,” we agree with the Examiner that “the claim language does not indicate that the return to the low power state is based on the subject vehicle modifying its operations as argued. Instead [claim 8] simply indicates that the connectable vehicle is returned to a low-power state after the operation of the subject vehicle is modified.” Ans. 7. In that regard, such return to low-power state is consistent with the Appellant’s own disclosure, which states: In some embodiments, a dormant vehicle may utilize a low- power mode to conserve energy by not constantly utilizing its sensor(s) to monitor its environment (i.e., the area or vicinity). . . . To continue conserving power, the connectable vehicle may return to its dormant state once the approaching vehicle has left the vicinity. Spec. ¶ 19. Thus, the Examiner is correct that the disclosed operation in Lepp is similar to the instant application where no communication between the subject vehicle and connectable vehicle is Appeal 2021-004496 Application 16/130,680 13 described outside of the request for sensor information by the subject vehicle and response by the connectable vehicle. In the instant application, the connectable vehicle returns to low- power state based on a time interval or location of the subject vehicle, for example in paragraph [0029]. The subject vehicle is not described to transmit any direction to the connectable vehicle to return to low-power state. Ans. 8. Therefore, in view of the above, we find the Appellant’s arguments unpersuasive, and affirm the rejection of independent claim 8. The Appellant merely relies on dependency on claim 8 for patentability of claims 9, 10, 12, and 13. Accordingly, these dependent claims fall with claim 8. Rejection 3: Claims 1-6, 11, 15, 17, 19, and 20 The Examiner rejects claims 1-6, 11, 15, 17, 19, and 20 as being unpatentable over Lepp in view of Han. Final Act. 12. Presumably for the purposes of examination, the Examiner interprets “an operational component” to be “a processor with instructions for modifying vehicle subsystems in order to control braking, acceleration, turning, vehicle lights or changing gears.” Final Act. 8. As to independent claim 1, the Examiner finds that Lepp discloses a subject vehicle substantially as claimed, but “does not explicitly disclose an operational component configured to perform the operation modification.” Final Act. 12-13 (emphasis omitted). The Examiner finds that Han discloses “an operational component configured to: modify operation of the subject vehicle based on the detection alert,” as claimed, for example, based on potential collision information. Final Act. 13 (citing Han p. 5, ¶ 4, p. 8, ¶ 1, Fig. 2) (underlining removed). The Examiner concludes that it would have been obvious to one of ordinary Appeal 2021-004496 Application 16/130,680 14 skill in the art to modify Lepp “to include an operational component configured to modify operation of the subject vehicle based on the detection alert as detailed in Han with the motivation being to increase safety by reducing the risk of collisions through automatic vehicle control as detailed in Han.” Final Act. 14 (citing Han, pg. 8, ¶ 2). The Appellant relies on same arguments submitted relative to independent claim 8 in support of patentability of independent claims 1 and 15, and argues that Examiner’s reliance on Han does not remedy the deficiency of Lepp. Appeal Br. 11; see also Reply Br. 6. However, having found no deficiency with respect to the Examiner’s application of Lepp as to claim 8, we affirm the rejection of claims 1 and 15 as well. The Appellant also does not separately argue dependent claims 2-6, 11, 17, 19, and 20, and as such, these claims fall with claims 1 and 15 from which they depend. Rejections 4, 5, and 7: Claims 7, 14, and 22 It is not apparent where in the Appeal Brief the Appellant acknowledges the rejections of these dependent claims, much less argues them separately. To any extent the Appellant may be relying on dependency on claims 1 or 8 for patentability of these claims, such reliance is unpersuasive. Accordingly, these rejections are affirmed. Rejection 6: Claim 21 Claim 21 depends from claim 1, and recites “wherein a calendar is used in combination with location data to provide dates and durations of time that connectable vehicles at a particular location are to be activated and then returned to a low-power state.” Appeal Br. 16 (Claims App.); see also Appeal 2021-004496 Application 16/130,680 15 Spec. ¶ 30. The Examiner rejects claim 21 as being unpatentable over Lepp in view of Han and Virtanen, finding that Virtanen discloses a “[p]ower scheme (calendar) including power mode timing and duration for power restriction and return to normal power mode is utilized based on particular locations.” Final Act. 21 (citing Virtanen ¶¶ 25, 46, 70, 71, 90; Figs. 3, 6) (emphasis omitted). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Lepp “to include the above limitations as detailed in Virtan[e]n et al. with the motivation being to save power and reduce radiation levels.” Final Act. 22 (citing Virtanen ¶¶ 57, 58, 60). The Appellant argues that “nothing in Virtanen discloses a calendar used in combination with location data to provide dates and durations of time that connectable vehicles at a particular location are to be activated and then returned to a low-power state.” Appeal Br. 12. We agree with the Appellant. The Examiner responds that “under the broadest reasonable interpretation of the claim language in light of the specification and the field of vehicle data transfer, the incorporation of a calendar is read to simply describe using a schedule that provides timing of events.” Ans. 9. The Examiner finds that “Virtanen discloses determining a vehicle sensor power scheme schedule based on contextual and environmental parameters, for example based on projected weather condition data (i.e. calendar),” and because environmental parameters, such as weather, are associated with “particular days, relevant dates are determined as well.” Ans. 9. In our view, such interpretation of “calendar” to encompass projected weather condition data is unreasonably broad. Claim 21 specifically recites Appeal 2021-004496 Application 16/130,680 16 a calendar, and use thereof to “provide dates and durations of time that connectable vehicles at a particular location are to be activated.” Contrary to the position of the Examiner, scheduling of activation of sensors of a connectable vehicle based on weather conditions data that may be relevant to a particular date cannot be reasonably considered to be based on a “calendar,” as understood by a skilled artisan. Virtanen does not disclose, much less utilize, a calendar for scheduling the dates and durations of time for activation of sensors of a connectable vehicle at a particular location. As such, we agree with the Appellant that this rejection is deficient, and we reverse the same. CONCLUSION The Examiner’s rejections are affirmed in part. More specifically, Rejections 1-5 and 7 of claims 1-15, 17, 19, 20, and 22 are affirmed. However, Rejection 6 of claim 21 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7, 15, 17, 19-22 112(b) Indefiniteness 1-7, 15, 17, 19-22 8-10, 12, 13 103 Lepp 8-10, 12, 13 1-6, 11, 15, 17, 19, 20 103 Lepp, Han 1-6, 11, 15, 17, 19, 20 7 103 Lepp, Han, Philosof 7 14 103 Lepp, Philosof 14 21 103 Lepp, Han, Virtanen 21 Appeal 2021-004496 Application 16/130,680 17 22 103 Lepp, Han, Beaurepaire 22 Overall Outcome 1-15, 17, 19, 20, 22 21 TIME PERIOD FOR RESPONSE 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). AFFIRMED IN PART