Ex Parte Dornhege et alDownload PDFPatent Trial and Appeal BoardJun 16, 201714054652 (P.T.A.B. Jun. 16, 2017) Copy Citation 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. Appeal 2016-007525 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. 2 Appeal 2016-007525 Application 14/054,652 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. 3 Appeal 2016-007525 Application 14/054,652 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). 4 Appeal 2016-007525 Application 14/054,652 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 5 Appeal 2016-007525 Application 14/054,652 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 6 Appeal 2016-007525 Application 14/054,652 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 7 Appeal 2016-007525 Application 14/054,652 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). 8 Appeal 2016-007525 Application 14/054,652 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 9 Appeal 2016-007525 Application 14/054,652 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 10 Appeal 2016-007525 Application 14/054,652 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. 11 Appeal 2016-007525 Application 14/054,652 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. 12 Appeal 2016-007525 Application 14/054,652 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. 13 Appeal 2016-007525 Application 14/054,652 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 14 Appeal 2016-007525 Application 14/054,652 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. 15 Appeal 2016-007525 Application 14/054,652 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 16 Appeal 2016-007525 Application 14/054,652 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 17 Appeal 2016-007525 Application 14/054,652 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 18 Appeal 2016-007525 Application 14/054,652 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. 19 Appeal 2016-007525 Application 14/054,652 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 20 Appeal 2016-007525 Application 14/054,652 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). 21 Appeal 2016-007525 Application 14/054,652 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). 22 Appeal 2016-007525 Application 14/054,652 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. 23 Appeal 2016-007525 Application 14/054,652 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 24 Copy with citationCopy as parenthetical citation