Ex Parte Lefaure

Patent Trial and Appeal Board

May 24, 2016

12741229 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121741,229
27569 7590
PAUL AND PAUL
FILING DATE
06/06/2010
05/26/2016
1717 Arch Street Three Logan Square
SUITE 3740
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Philippe Lefaure
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2016-050 5213
EXAMINER
LU, SHIRLEY
ART UNIT PAPER NUMBER
2686
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
INFO@PAULANDPAUL.COM
claire@paulandpaul.com
fpanna@paulandpaul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE LEF AURE
Appeal2014-007433
Application 12/7 41,229 1
Technology Center 2600
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is LCL Technology (Br.
2).
Appeal2014-007433
Application 12/7 41,229
STATEMENT OF THE INVENTION
The claims are directed to a method of identifying sensors arranged in
respective tires by varying the power of a transmission antenna and
subsequently comparing received data streams (Spec. 3:10-32). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of identifying sensors of a sensor set of an
information system for a vehicle including a frame and a plurality
of wheels, the sensor set including a plurality of sensors housed
in the wheels, each sensor being provided with a subassembly for
transmitting collected information, the method comprising:
detecting a first signal-set received from the sensor set;
subs[ e ]quently, varying power of a transmission antenna;
subs[ e ]quently, detecting a second signal-set received
from the sensor set;
identifying a signal present in one of the first and second
signal-sets and not present in the other of the first and second
signal-sets; and
associating the signal, identified in the identifying step,
with one of the sensors in the sensor set.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fiorletta
Lill
Fujii
Scheelen
us 5,717, 135
US 6,362,731 Bl
US 2005/0156723 Al
EP 0815638 Al
2
Feb. 10, 1998
Mar. 26, 2002
July 21, 2005
Jan. 7, 1998
Appeal2014-007433
Application 12/7 41,229
REJECTIONS
The Examiner made the following rejections:
Claim 1 stands rejected under the judicially created doctrine of double
patenting over claim 1 of US Patent No. 7,250,851, Lill, Fujii, Fiorletta, and
Scheelen (Final Act. 2-3).
Claims 1-11 stand rejected under 35 U.S.C. § 112 first paragraph for
lack of written description (id. at 3).
Claims 1-11 stand rejected under 35 U.S.C. § 112 second paragraph
as being indefinite (id. at 3--4).
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lill, Fujii, Fiorletta, and Scheelen (id. at 4--9).
ISSUE 1
Written Description: Claims 1-11
Issue 1: Did the Examiner err in finding claims 1-11 fail to comply
with the written description requirement?
ANALYSIS
Appellant contends the Examiner erred in determining claims 1-11
fail to comply with the written description requirement (Br. 7). Specifically,
Appellant argues the recited "sensor set" is disclosed by Figure 1 of the
Specification, showing a collection of sensors Cl, C2, C3, and C4 (id.).
Further, Appellant argues the recited "first signal-set" is disclosed by the
data transmitted by sensor C 1 and the recited "second signal-set" is
disclosed by the data transmitted by both sensors C 1 and C2 (id. (citing
Spec. 7:28-8:1)).
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Application 12/7 41,229
We are persuaded by Appellant's arguments. The Examiner
determines the Specification does not describe a "sensor set," "first signal-
set," or a "second signal-set" (Final Act. 3). The Examiner also finds a
single signal does not disclose a set (Ans. 2-3).
The written description requirement does require the claim to be
"described literally (i.e., using the same terms or in haec verba)." MPEP
§ 2163.02. Here, we find the disclosure in the Specification is sufficient to
convey with reasonable clarity to a skilled artisan that the inventor was in
possession of the invention. Specifically, we find tire sensors Cl, C2, C3,
and C4 disclose a "sensor set" (Spec. 7:14--19, Fig. 1). Additionally, we
find a "first signal-set" and a "second signal-set" are disclosed by sensor
data streams transmitted in corresponding zones, e.g., zone 1 data stream
including C 1 sensor data and zone 2 data stream including C 1 and C2 sensor
data (id. at 7:29-8: 15). Furthermore, a set can be a set of one, and a single
data stream, e.g., zone 1 data stream, can disclose a set. Accordingly, we are
not persuaded claims 1-11 fail to comply with the written description
requirement of 35 U.S.C § 112 first paragraph.
ISSUE 2
Indefiniteness: Claims 1-11
Issue 2: Did the Examiner err in finding claims 1-11 fail to comply
with 35 U.S.C § 112 second paragraph?
ANALYSIS
Appellant contends the Examiner erred in determining claims 1-11
fail to comply with 35 U.S.C § 112 second paragraph (Br. 8). Specifically,
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Application 12/7 41,229
Appellant argues a "sensor set" refers to a collection of sensors, such as
sensors Cl, C2, C3, and C4 as shown in Figure 1 (id.).
We are persuaded by Appellant's arguments. The Examiner
determines that it is unclear whether a set includes a single item or multiple
items (Ans. 3).
Here, the claim itself points out and distinctly describes that "the
sensor set include[s] a plurality of sensors housed in the wheels."
Furthermore, the Specification discloses tire sensors C 1, C2, C3, and C4
define a "sensor set" (see Spec. 7:14--19, Figure 1). Accordingly, we are not
persuaded claims 1-11 fail to comply with 35 U.S.C § 112 second
paragraph.
ISSUE 3
Obviousness: Claims 1-11
Issue 3: Did the Examiner err in finding the combination of Lill, Fujii,
Fiorletta, and Scheelen teaches or suggests:
detecting a first signal-set received from the sensor set;
subsequently, varying power of a transmission antenna;
subsequently, detecting a second signal-set received from the
sensor set; identifying a signal present in one of the first and
second signal-sets and not present in the other of the first and
second signal-sets; and associating the signal, identified in the
identifying step, with one of the sensors in the sensor set,
as recited in claim 1?
ANALYSIS
Appellant contends the combination of Lill, Fujii, Fiorletta, and
Scheelen does not teach or suggest:
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Appeal2014-007433
Application 12/7 41,229
detecting a first signal-set received from the sensor set;
subsequently, varying power of a transmission antenna;
subsequently, detecting a second signal-set received from the
sensor set; identifying a signal present in one of the first and
second signal-sets and not present in the other of the first and
second signal-sets; and associating the signal, identified in the
identifying step, with one of the sensors in the sensor set,
as recited in claim 1 (Br. 12). Specifically, Appellant argues "the Examiner
has not indicated what features of the cited prior art documents would have
been obviously modifiable, or combinable" to arrive at the claimed invention
(id.). Further, Appellant argues the combination does not teach or suggest
the "interrelation of steps operating with the recited first and second signal-
sets, wherein the signal-sets are detected at different times" (id.).
We are persuaded by Appellant's arguments. The allocation of
burdens requires that the USPTO produce the factual basis for its rejection
of an application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)). The one who bears the initial burden of presenting a prima
facie case ofunpatentability is the Examiner. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). A prima facie case is established when the party with
the burden of proof points to evidence that is sufficient, if uncontroverted, to
entitle it to prevail as a matter of law. See Saab Cars USA, Inc. v. United
States, 434 F.3d 1359, 1369 (Fed. Cir. 2006).
We agree that the Examiner did not present a prima facie case of
unpatentability in the § 103 rejection of independent claim 1. The Examiner
cites various portions of Lill, Fujii, Fiorletta, and Scheelen, but does not
identify the particular portions of those references that, alone or in
combination, would teach or suggest each particular limitation recited in the
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Application 12/7 41,229
claim (see Ans. 3---6; see also Final Act. 4---6). For example, the Examiner
has not set forth with specificity which reference, or combination of
references, teaches or suggests the identification of a signal present in one
set and not present in another set. Indeed, the Examiner has not set forth
with sufficient specificity which exact teachings in Lill, Fujii, Fiorletta, and
Scheelen are being combined. For example, the Examiner cites et seq. in
three of the four references; cites 28 out of 94 paragraphs in Fujii; and uses
numbers to cite to patents without detailing whether those numbers are
paragraphs, pages, or columns (Ans. 4---6; Final Act. 4---6). Nor has the
Examiner has set forth with specificity how Lill, Fujii, Fiorletta, and
Scheelen are being combined to render the claimed invention obvious.
For us to sustain the Examiner's rejection, we would need to resort to
impermissible speculation or unfounded assumptions or rationales to supply
deficiencies in the factual bases of the rejection before us. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
Therefore, we reverse the Examiner's 35 U.S.C. § 103(a) rejection of
independent claim 1 and claims 2-11, which depend directly or indirectly
from claim 1.
ISSUE 4
Obviousness-Type Double Patenting: Claim 1
Issue 4: Did the Examiner err in rejecting claim 1 on the ground of
obviousness-type double patenting as being unpatentable over claim 1 of US
Patent No. 7,250,851, Lill, Fujii, Fiorletta, and Scheelen?
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Application 12/7 41,229
ANALYSIS
The Examiner's obviousness-type double patenting rejection of claim
1 is based on the combination of Lill, Fujii, Fiorletta, and Scheelen. Similar
to Issue 3 above, we conclude that the rejection of claim 1 lacks the requisite
specificity needed. As such, we are left to speculate how and why the
references are being applied. Consequently, we also reverse the Examiner's
obviousness-type double patenting rejection of claim 1.
DECISION
The Examiner's double patenting rejection of claim 1 over claim 1 of
US Patent No. 7,250,851, Lill, Fujii, Fiorletta, and Scheelen is reversed.
The Examiner's rejection of claims 1-11 under 35 U.S.C. § 112 first
paragraph for lack of written description is reversed.
The Examiner's rejection of claims 1-11under35 U.S.C. § 112
second paragraph as being indefinite is reversed.
The Examiner's rejection of claims 1-11under35 U.S.C. § 103(a) as
being unpatentable over Lill, Fujii, Fiorletta, and Scheelen is reversed.
REVERSED
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