Ex Parte Dornhege et al

Patent Trial and Appeal Board

Jun 16, 2017

14054652 (P.T.A.B. Jun. 16, 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.
83389949 6784
EXAMINER
MERLINO, DAVID P
ART UNIT PAPER NUMBER
3669
MAIL DATE DELIVERY MODE
14/054,652 10/15/2013
117396 7590 06/16/2017
FGTL/Burgess Law Office, PLLC
P.O. Box 214320
Auburn Hills, MI 48321-4320
Jens Dornhege
06/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS DORNHEGE, FRANK PETER ENGELS,
and GOETZ-PHILIPP WEGNER
Appeal 2016-007525
Application 14/054,6521
Technology Center 3600
Before ELENI MANTIS MERCADER, TERRENCE W. McMILLIN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—14, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. App. Br. 1.
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Application 14/054,652
THE INVENTION
According to Appellants, the disclosed and claimed invention is
directed to a method for reducing steering torque in a steering system of a
vehicle. Spec. 2—3.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for the reduction of steering torque in a steering
system of a vehicle comprising the steps of:
providing a sensor, using said sensor to detect a driver’s
torque applied by a driver of the vehicle;
monitoring the driver’s torque applied by the driver of the
vehicle;
providing a plurality of torque imposing units, each of said
torque imposing units imposing a torque in the steering system;
and
reducing the torques imposed by the units by a reduction
factor when monitoring of the driver’s torque reveals a violation
of a safety criterion.
REFERENCE
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Tsuchiya US 2005/0049769 A1 Mar. 3, 2005
REJECTIONS
Claims 1—14 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to unpatentable subject matter. Final Act. 2—3.
Claims 8 and 9 stand rejected under pre-AIA 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 4—5.
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Claims 1—14 stand rejected under pre-AIA 35 U.S.C. § 112, second
paragraph as being indefinite. Final Act. 5—8.
Claims 1—14 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Tsuchiya. Final Act. 8—12.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.2
We are not persuaded by Appellants’ arguments that the Examiner erred in
rejecting claims 1—14.
Section 101 (claims 1—7)
The Examiner concludes that claim 1 is directed to the abstract idea of
data gathering and the manipulation of that data. Final Act. 2. The
Examiner further concludes that the limitations do not add significantly
more to the claim because they are generic computer functions that can be
performed by a generic computer. Id. The Examiner further determines the
addition of a sensor does not provide significantly more to the claim because
“[ujsing a sensor to detect information is well-known and conventional, and
results in merely data gathering, such that the sensor is extra-solution
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed January 29,
2016); the Reply Brief (filed August 1, 2016); the Final Office Action
(mailed June 9, 2015); and the Examiner’s Answer (mailed June 1, 2016) for
the respective details.
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activity” and that “the data gathered by the sensor is not used in the
remainder of the claim.” Ans. 3; see also id. at 3^4.
Appellants argue “[cjlaim 1 is not directed toward an abstract idea[;]
it is directed toward a patent-eligible method of reducing steering torque in a
steering system using structure, in particular a sensor, to detect a driver’s
torque applied by a driver of the vehicle.” App. Br. 6. Appellants further
argue the claim “does more than just data gathering^] it transform[s] and
reduces the steering torque in the steering system of a vehicle to a different
state.” Id. at 7.
As a preliminary matter, both Appellants and the Examiner’s
arguments depend on the construction of the claim 1, specifically the
reducing the torque step. Accordingly, we begin our analysis with the
construction of the reducing the torque step recited in claim 1. See Bancorp
Servs. L.L.C. v. Sun Life As sur. Co of Canada, 687 F.3d 1266, 1273—74
(Fed. Cir. 2012) (noting “that it will ordinarily be desirable—and often
necessary—to resolve claim construction disputes prior to a § 101 analysis,
for the determination of patent eligibility requires a full understanding of the
basic character of the claimed subject matter”).
During prosecution, claims must be given their broadest reasonable
construction while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
With regard to claim 1, the reducing the torques limitation is a
conditional limitation. That is, claim 1 only recites an intended use—
reducing the torque imposed by the units—when the monitoring of the
driver’s torque reveals a safety violation. See App. Br. 26 (Claims App’x).
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On the other hand, the claim does not require any specific actions to occur
when there is not a safety violation. Id. We conclude that the broadest
reasonable construction of claim 1 covers two alternative methods, one
method when there is a safety violation and another when there is not a
safety violation. See Ex parte Schulhauser, Appeal 2013-007847, 2016 WL
6277792, *3—5 (PTAB April 28, 2016) (precedential) (discussing
construction of conditional limitations in method claims). In light of the
claim’s conditional language, if either of the alternative methods is directed
to unpatentable subject matter, the claim is not patentable. See In re Nuijten,
500 F.3d 1346, 1356—57 (Fed. Cir. 2007) (claim is not patentable under
section 101 if it covers both patentable and unpatentable subject matter).
We focus the remainder of our discussion on the method in which there is
not a safety violation.
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
patent-ineligible, an application of the abstract idea may be patent-eligible.
Alice, 134 S. Ct. at 2355. Thus, we must consider “the elements of each
claim both individually and ‘as an ordered combination’ to determine
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whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The
claim must contain elements or a combination of elements that are
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at
1294).
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided”).
We agree with the Examiner that the claims are directed to an abstract
idea of data gathering and manipulation. In this regard, the claims of the
instant application are similar to the claims in Electric Power, which did
“not go beyond requiring the collection, analysis, and display of available
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information in a particular field, stating those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance over conventional computer and network
technology.” 830 F.3d at 1351. Specifically, our reviewing Court held that
“collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas” and that “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.” Id. at 1353—54 (citations
omitted). As in Electric Power, the combination of various abstract ideas
relating to data collection and analysis is itself and abstract idea. Id.
We are not persuaded by Appellants’ argument that the claim is
directed to “a series of acts performed upon the subject matter, which is the
steering torque in a steering system of a vehicle” App. Br. 7, because that
argument is not commensurate with the scope of the claims. Contrary to
Appellants’ argument, the properly construed claim does not require
reducing torque when a safety violation is not detected. Instead, as
discussed supra, the broadest reasonable construction of the claim does not
require the reduction of torque.
We also agree with the Examiner that the sensor does not add
anything more to the claims. See Ans. 3^4. Although the claim recites both
using a sensor “to detect a driver’s torque applied by a driver of the vehicle”
and “monitoring the driver’s torque applied by the driver of the vehicle,”
App. Br. 26 (Claims App’x), there is nothing in the language of the claim
that requires the monitoring to be performed by the same sensor used to
detect the torque. Accordingly, the broadest reasonable construction of the
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claim does not require the data from the sensor to be used as part of the
monitoring process.
We also agree with the Examiner that the steps of the claim, taken
either individually or as a combination, recite merely generic steps that do
not add more to the abstract idea. That is, the claim recites using a sensor,
monitoring data, and providing—but not requiring the use of—torque
imposing units. Given the above, because the elements of the claim, either
individually or in combination, do not add significantly more to the abstract
idea, we determine that the individual elements of claim 1 do not transform
the nature of the claim into a patent-eligible application.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of dependent claims 2—7,3 as being directed to
unpatentable subject-matter.
Section 101 (claim 8)4
For the same reasons as discussed above for claim 1, the Examiner
concludes that claim 8 is directed to unpatentable subject matter. Final Act.
3. The Examiner further concludes that the additional step recited in claim
8, performing a plausibility check, “is an abstract idea of comparing two
items.” Id.
3 Appellants do not separately argue any of the dependent claims.
Accordingly, we select claim 1 as the representative claim for this ground of
rejection for claims 1—7. See 37 C.F.R. § 41.37(c)(iv).
4 Appellants are reminded that “[ujnder each heading identifying the ground
of rejection being contested, any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim(s) by
number.” 37 C.F.R. § 41.37(c)(iv).
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Similar to the arguments discussed above for claim 1, Appellants
argue claim 8 recites “a series of acts were steps performed on the steering
torque in a steering system of a vehicle.” App. Br. 8. More specifically,
Appellants argue the claim is not directed to an abstract idea, but to “a
method for the reduction of steering torque in a steering system.” Id.
As with our analysis of claim 1, we start with determining the scope
of the claim. And similar to claim 1, claim 8 contains two conditional
limitation: “reducing said torques imposed in the steering system when said
violation occurs” and “increasing said torques imposed in the steering
system when said violation no longer occurs.” App. Br. 27 (Claims App’x)
(emphasis added). As discussed above from claim 1, such conditional
limitations in method claims create two alternative claim constructions.
And, as with our analysis of claim 1, we only consider the alternative claim
construction where a violation does not occur.
For the same reasons discussed above for claim 1, we are not
persuaded by Appellants’ argument that the Examiner erred. As with claim
1, claim 8 recites steps relating to the collection and analysis of data. In
addition to steps similar to those recited in claim 1, claim 8 also recites
establishing and performing steps. However, those steps merely recite
limitations related to data analysis. As discussed above, “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Electric Power, 830 F.3d at 1353—54. Therefore,
after considering all of the arguments presented in the Appeal Brief and
Reply Brief, we are not persuaded the Examiner erred in finding claim 8
recites an abstract idea and that the recited steps, taken either individually or
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in combination, do not transform the abstract idea into patentable subject
matter.
Accordingly, we sustain the Examiner’s rejection of claim 8 as being
directed to unpatentable subject-matter.
Section 101 (Claim 9)
Appellants argue claim 9, which depends from independent claim 8,
recites “the steps of decreasing the imposed torque according to a
predetermined profile if a violation is detected and the step of increasing the
imposed torque according to a predetermined profile when a violation is no
longer detected” and that this “series of steps transforms the torque imposed
on the steering system, wherein the torque is increased or decreased based
on a violation of a safety criterion based on vehicle dynamics.” App. Br. 9.
Therefore, according to Appellants, claim 9 is directed to patentable subject
matter. Id. However, because the additional steps recited in claim 9 are
conditional steps, for the reasons discussed above for claim 1, the additional
limitations do not transform the abstract idea recited in claim 9 to patent
eligible subject matter.
Accordingly, we sustain the Examiner’s rejection of claim 9 as being
directed to unpatentable subject-matter.
Section 101 (Claims 10—14)
Independent claim 10 and dependent claims 11—14 recite the elements
of a steering system of a vehicle, not a method. The Examiner concludes the
claims are directed to software per se and, therefore, are not patent eligible
subject matter. Final Act. 3. Appellants argue the claims are not directed to
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software per se and, instead, require physical items such as a plurality of
torque imposing units and sensors. App. Br. 9-10.
We are persuaded by Appellants’ argument that the Examiner erred.
Specifically, we agree with Appellants that the claims are not directed to
software per se and instead, require physical items, such as a sensor, beyond
software.5
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 10, along with the rejections dependent claims
11—14, as being directed to unpatentable subject-matter.
Written Description Requirement (Claims 8 and 9)
Claim 8 recites that “each of said torque imposing units impos[es] a
plurality of torques in the steering system.” App. Br. 27 (Claims App’x)
(emphasis added). The Examiner determines that the Specification only
provides a written description for imposing a single torque and not a
plurality of torques and, as a result, there is no written description support
for the claim limitation. Final Act. 4—5; Ans. 7—8. Appellants argue that the
Specification enables “[a] person of ordinary skill in the art could practice
the invention of claim 8 without ‘undue experimentation.’” App. Br. 11
(citing Spec 132); see also Reply Br. 6 (arguing “[t]he examiner has not
provided any support as to why a person of ordinary skill in the art would
not be able to practice the invention without undue experimentation.”).
5 Unlike the rejection of claims 1—9, the Examiner did not reject the claims
for failing to satisfy the 2-part Alice!Mayo test. We decline to review the
claims de novo under that standard. Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP 1213.02.
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Section 112, first paragraph contains two distinct requirements: the
enablement and written description.6 As our reviewing court has held, the
enablement requirement of 35 U.S.C. 112, first paragraph, is separate and
distinct from the written description requirement. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991) (reaffirming that “[t]he
purpose of the ‘written description’ requirement is broader than to merely
explain how to ‘make and use’; the applicant must also convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention”). The test for compliance with
the written description requirement 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.”
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc).
Appellants’ argument—which focuses exclusively on whether a
person of ordinary skill in the art could make and use the claimed
invention—does not address the Examiner’s rejection. Although Appellants
argue the relevant limitation is enabled, Appellants do not cite to any portion
of the Specification that demonstrates that the inventors were in possession
of a unit imposing a plurality of torques. Because Appellants do not address
the proper test, we are not persuaded by Appellants’ arguments that the
Examiner erred. Instead, we agree with and adopt the Examiner’s findings
and conclusions.
6 Section 112 also contains a best mode requirement, which is not relevant to
the above analysis.
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Accordingly, we sustain the Examiner’s rejection of claim 8, and
dependent claim 9, which is not separately argued, for failing to comply with
the written description requirement of 35 U.S.C. § 112 11.
Section 112, Paragraph 2 (claims 1—14)
The Examiner concludes “because it is unclear what the torques and
torque imposing units are” the term is indefinite.7 Final Act. 6; see also
Ans. 9—10. More particularly, the Examiner determines it is unclear whether
the torque imposing units are motors or similar devices that physically force
a torque or it refers to software:
Use of the word “imposing” implies that the torque is being
forced onto something such that the “torque imposing unit”
would be a motor or similar physically forcing a torque.
However, based on the figure 1 and paragraphs 33-35 of the
specification, the torques are sent to software and eventually to
an actuator, which appears to generate the physical torque.
Final Act. 6; see also Ans. 10 (“The torque then ‘produced’ or ‘imposed’ by
this software is also indefinite as to whether it is a physical torque or an
abstract signal representing a torque.”).
Appellants argue that paragraph 32 describes a torque imposing unit,
which corresponds to “reference numeral 5 as shown in in [sic] FIG. 1,
wherein the unit is a steering feature.” App. Br. 14; see also Reply Br. 7
(“The torque imposing units are functional units that imposed torque for
function of the steering system 1 functional units 5 produced torques that
can be imposed which are output to reduction units 7.”). Therefore,
7 The Examiner individually rejects both “units” and “torque imposing
units” as indefinite. Because the only units recited in the claims are the
torque imposing units, we analyze the separate rejections together.
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according to Appellants, “a person of ordinary skill in the art would be
informed with reasonable certainty of the scope of the claims . . . [and] that
the claim is not indefinite.” Id.
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003). “As the statutory language of ‘particularity] ’ and
‘distinctness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms. It is the claims that notify the
public of what is within the protections of the patent, and what is not.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “Reference to undefined
standards, regardless of whose views might influence the formation of those
standards, fails to provide any direction to one skilled in the art attempting to
determine the scope of the claimed invention.” Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1352 (Fed. Cir. 2005). “At the same time,
this requirement is not a demand for unreasonable precision.” Packard, 751
F.3d at 1313.
Applying the standard set forth in Packard,8 * * * * * 14we are not persuaded by
Appellants’ arguments that the Examiner erred. Instead, we agree with and
8 Appellants cite to Nautilus, Inc. v. BiosigInstruments, Inc., 134 S. Ct.
2120, 2129 (2014) as providing the appropriate standard for indefmiteness.
Reply Br. 6. However, due to the difference in claim construction standard
applied by the district courts and the PTAB as well as the ability to amend
the claims, the proper standard for determining whether or not a claim is
indefinite during prosecution is set forth in Packard. That is, “[i]t makes
good sense, for definiteness and clarity as for other validity requirements, for
the USPTO initially to reject claims based on a well-founded prima facie
case of lack of clarity (in its several forms) based on the perspective of one
of ordinary skill in the art in view of the entire written description and
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adopt the Examiner’s findings and conclusions. Specifically, the claim
language, in view of the Specification, is not sufficiently clear as to provide
notice as to the scope of the claim. For the reasons given by the Examiner, it
is unclear if the claim limitation refers to a physical unit that imposes a
torque or a computer program that sends a message to impose a torque.
Accordingly, we sustain the Examiner’s rejection of claims 1—14 as
indefinite.9,10
Anticipation (Claims 1—14)
Appellants argue the Examiner erred by not establishing a prima facie
case of anticipation. App. Br. 15—16. According to Appellants, “[t]he prima
facie burden has not been met and the rejection does not adhere to the
minimal requirements of 35 U.S.C. § 132 ‘when a rejection is so
developing prosecution history. Then, if the applicant does not adequately
respond to that prima facie case, to confirm that rejection on the substantive
basis of having failed to meet the requirements of §112(b).” Packard, 751
F.3d at 1312.
9 The Examiner also rejects claim 9 as indefinite for not providing an
antecedent basis for violation and imposed torque. Final Act. 7. Appellants
have not identified any errors in the Examiner’s findings. “If an appellant
fails to present arguments on a particular issue—or, more broadly, on a
particular rejection—the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.” Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential).
10 The Examiner also rejected claim 13 as indefinite because it was unclear
how the additional limitations of that dependent claim interacted with the
limitations of independent claim 10, from which it depends. Final Act. 7—8;
Ans. 11. Appellants’ arguments are no more than a general denial, see App.
Br. 15; Reply Br. 8, and are not sufficient to raise an argument that the
Examiner erred. See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, we are not persuaded that the Examiner erred and, instead, we
agree with and adopt the Examiner’s findings and conclusions.
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uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.’” Id. (quoting Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990)).
We are not persuaded by Appellants’ arguments that the Examiner
erred. As our reviewing Court has held, “all that is required of the office to
meet its prima facie burden of production is to set forth the statutory basis of
the rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of [35
U.S.C.] § 132.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We have
reviewed the Examiner’s rejection (Final Act. 8—12) and conclude that the
notice requirement is satisfied in this case by “the examiner’s discussion of
the theory of invalidity . . . , the prior art basis for the rejection . . . , and the
identification of where each limitation of the rejected claims is shown in the
prior art reference by [paragraph] number.” Jung, 637 F.3d at 1363.
Anticipation (Claims 1—3 and 5—7)
Appellants further argue the Examiner erred in finding Tsuchiya
discloses the “reducing the torques imposed” step recited in claim 1. App.
Br. 16—17; Reply Br. 8—9. However, as discussed above, the reducing the
torques imposed step is a conditional limitation that has two alternatives, one
when the monitoring reveals a violation and one when it does not. See pages
4—5, supra. In light of the claim’s conditional language, the prior art need
only teach one of the two alternatives, not both. See Schulhauser, 2016 WL
6277792 at *3—5. Appellants do not argue that the prior art does not disclose
all of the steps of the method when a violation is not revealed. Therefore,
we are not persuaded by Appellants’ arguments that the Examiner erred. See
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id. (holding the claimed subject matter to be obvious when only one of two
conditional methods is taught by the prior art).
Appellants further argue the Examiner erred in finding Tsuchiya
discloses the additional limitations of dependent claims 2, 3, 6, and 7, each
of which further limits the “reducing the torques imposed” step recited in
claim 1. App. Br. 17—18, 19 (setting forth arguments); Reply Br. 9, 10; see
also id. at 26, 27 (Claims App’x). We have considered each of the
arguments set forth by the Appellants individually. However, because each
of the additional limitations further limit a conditional step, for the same
reasons discussed above for claim 1 we are not persuaded by Appellants’
arguments that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claims 1—3, 6,
and 7, along with the rejection of dependent claim 5, which is not argued
separately. See App. Br. 18 (“Claim 5 stands with claim 1.”).
Anticipation (Claim 4)
Appellants argue the Examiner did not identify “with particularity that
portion of Tsuchiya disclosing comparing the driver’s torque with a
maximum permissible driver’s torque.” App. Br. 18. Appellants further
state that “Paragraph 43 of Tsuchiya does not disclose monitoring the
driver’s torque by the controller ‘to ensure safety as the drivers torque
increases.’” Reply Br. 10.
The Examiner finds that paragraphs 42 and 43 of Tsuchiya discloses
“comparing the driver’s torque with a maximum permissible driver’s torque”
as recited in claim 4. Final Act. 9; Ans. 13. More particularly, the Examiner
finds “Tsuchiya discloses in paragraph 42 a torque sensor to determine the
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driver’s torque, which is monitored by the controller to ensure safety as the
driver torque increases, as further described in paragraph 43.” Ans. 13.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Moreover, the reference must also “disclose[]
within the four comers of the document not only all of the limitations
claimed but also all of the limitations arranged or combined in the same way
as recited in the claim.” Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008). However, “the reference need not satisfy an
ipsissimis verbis test.” In re Cleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Moreover, “it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding
that prior art references must be “considered together with the knowledge of
one of ordinary skill in the pertinent art”).
We have reviewed paragraphs 42 and 43 of Tsuchiya, cited by the
Examiner. Although paragraph 42 discloses monitoring the torque and
paragraph 43 discloses determining when certain conditions are met, neither
paragraph discloses a “maximum permissible driver’s torque” as recited in
claim 4. Accordingly, we are constrained on the record, to reverse the
Examiner’s finding that claim 4 is unpatentable as anticipated.
Anticipation (Claims 8 and 9)
Appellants further argue the Examiner erred in finding Tsuchiya
discloses the “reducing said torques imposed” and “increasing said torques
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imposed” steps recited in claim 8. App. Br. 19-20; Reply Br. 10-11.
However, as discussed above, the reducing and increasing said torques
imposed steps are conditional limitations that have two alternatives, one
when a violation occurs and one when it does not. See pages 4—5, 9, supra.
In light of the claim’s conditional language, the prior art need only teach one
of the two alternatives, not both. See Schulhauser, 2016 WL 6277792 at *3—
5. Appellants do not argue that the prior art does not disclose all of the steps
of the method when a violation does not occur. Therefore, we are not
persuaded by Appellants’ arguments that the Examiner erred. See id.
(holding the claimed subject matter to be obvious when only one of two
conditional methods is taught by the prior art).
Claim 9 depends from claim 8 and provides additional conditional
limitations. See page 10, supra. Accordingly, for the same reason discussed
above for claim 8, we are not persuaded by Appellants’ argument that the
Examiner erred.
Accordingly, we sustain the Examiner’s anticipation rejection of
claims 8 and 9.
Anticipation (Claim 10)
Appellants argue the Examiner erred in finding Tsuchiya discloses the
recited monitoring unit and reduction unit. App. Br. 21—22. More
specifically, Appellants argue the Examiner has not indemnified with
particularly how the cited paragraphs of Tsuchiya disclose those limitations.
Id.
The Examiner finds Tsuchiya paragraphs 42 and 43 disclose the
monitoring unit and reduction unit. FinalAct.il. The Examiner further
relies on the finding set forth in the Answer discussing claims 1—8. Ans. 15.
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We are not persuaded by Appellants’ arguments that the Examiner
erred. As discussed above, the Examiner complied with the requirements of
Jung and made a prima facie case. Moreover, we have reviewed the cited
paragraphs and determine they provide sufficient information from which a
response could have been prepared. Generally speaking, Tsuchiya
paragraphs 42 and 43 disclose monitoring various sensor outputs,
determining a BDST (which the Examiner finds corresponds to torque
reduction factor) and applying that BDST to change the amount of torque.
Accordingly, we are not persuaded that the Examiner did not provide
sufficient information and treat Appellants’ argument in the Appeal Brief as
a general denial, which is insufficient to raise an argument that the Examiner
erred. See In re Lovin, 652 F.3d at 1357 (Rule 41.37 requires “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); see also 37 C.F.R. § 41.37(c)(l)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); cf. In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”).
Appellants further rely on the arguments set forth regarding claims 1—
8. See Reply Br. 11. Appellants have not specified which argument applies
to which claims. Moreover, because there are substantial differences
between the words of claims 1—8 and claim 14, there is no clear
correspondence between the limitations. With that said, we will address
Appellants’ argument from claim 1—whether Tsuchiya discloses reducing
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the torque—in the context of claim 10. That is, Appellants argue Tsuchiya
teaches increasing torque, not decreasing torque as recited by the claims.
See App. Br. 16—17.
Claim 10 recites “a reduction unit, said reduction unit receiving said
reduction factor from said monitoring unit, said reduction unit
communicating with and applying said reduction factor on said torque
imposing units.” App. Br. 29 (Claims App’x). There is nothing in the
words of the claims that requires that the reduction factor be positive—that
is, one that results in a reduction of torque. Instead, applying the broadest
reasonable construction, a reduction factor can be negative, resulting in an
increase in torque when it is applied to the torque imposing units. Because
Appellants’ admit Tsuchiya discloses increasing torque and Appellants’
argument focuses on whether or not Tsuchiya discloses reducing torque,
Appellants’ argument is not commensurate with the scope of the claim.
Accordingly, we are not persuaded that the Examiner erred. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Accordingly, we sustain the Examiner’s rejection of claim 10.
Anticipation Claims 11—13
The entirety of Appellants’ argument regarding claim 11 is as follows
The examiner broadly cites Tsuchiya, para. [0019] as
corresponding to claim 11 — “wherein the reduction unit
communicates individually with each torque imposing unit.” It
is unclear to what feature in Tsuchiya, para. [0019] the examiner
is referring. Tsuchiya, para. [0014] states “which devices exert
torque for suppressing the deterioration of steering convergency
due to deterioration of a vehicle behavior.” ([0014], 11. 3-6)
(emphasis added).
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App. Br. 23. As with claims 1 and 10, Appellants’ argument focuses on
whether or not Tsuchiya discloses increasing torque or decreasing torque.
We are not persuaded by Appellants’ argument that the Examiner
erred. As discussed above for claim 10, a negative reduction factor—which
is allowed under the broadest reasonable construction of the claim—requires
an increase in torque. Because Appellants’ arguments are not commensurate
with the scope of the claims, they are unpersuasive. See Self, 671 F.2d at
1348.
Similarly, Appellants’ arguments directed to claims 12 and 13 focus
on Tsuchiya disclosing increasing torque, as opposed to decreasing torque as
Appellants contend is required by claims 12 and 13. For the same reason
discussed above for claim 10, we are not persuaded that the Examiner erred.
Accordingly, we sustain the Examiner’s anticipation rejections of
claims 11—13.
Anticipation (Claim 14)
Appellants argue the Examiner erred in finding Tsuchiya discloses the
recited interface and base unit recited in claim 14. App. Br. 24—25. The
Examiner finds the interface is disclosed in paragraph 42 and the base unit in
paragraph 80. Final Act. 12.
Tsuchiya paragraph 80 states as follows: “Returning to the main
routine of FIG. 2, in step S60, the motor is operated in accordance with the
resultant target value of TMT, Tm, and the process returns to START.”
Although claim 14 recites “outputting a control signal to an actuator
connected to a steering system component,”n paragraph 80 of Tsuchiya
11 App. Br. 29 (Claims App’x) (emphasis added).
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discloses outputting a signal to a motor. Because the motor is not part of the
steering system, we are persuaded by Appellants’ argument that the
Examiner erred.
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 14 as anticipated.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—9 as directed to unpatentable subject matter under 35 U.S.C. § 101.
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 10-14 as directed to unpatentable subject matter under 35 U.S.C.
§101.
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 8 and 9 under pre-AIA 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement.
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—14 under pre-AIA 35 U.S.C. § 112, second paragraph as being
indefinite.
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—3 and 5—13 under pre-AIA 35 U.S.C. § 102(b) as being anticipated
by Tsuchiya.
For the above reasons, we reverse the Examiner’s decision rejecting
claims 4 and 14 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by
Tsuchiya.
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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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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