Ex Parte NAAB et al

Patent Trial and Appeal Board

Dec 21, 2016

12025410 (P.T.A.B. Dec. 21, 2016)

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.
12/025,410 02/04/2008 Karl NAAB 080437.59793US 1227
23911 7590 12/23/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
DAGER, JONATHAN M
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL NAAB and CHRISTOPH MAYSER
Appeal 2014—009085
Application 12/025,4101
Technology Center 3600
Before THOMAS F. SMEGAL, LISA M. GUIJT, and JEFFREY A.
STEPHENS, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Karl Nabb and Christoph Mayser (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s final rejection2 under 35 U.S.C. § 103(a)
of claims 1, 3—7, 9, 10, 12, 13, 15, 16, and 18 as unpatentable over Schuster
(US 2003/0109979 Al, pub. June 12, 2003) and Wheals (US 2004/0249533
Al, pub. Dec. 9, 2004).3 We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Bayerische Motoren
Werke Aktiengesellschaft. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated September 24, 2013
(“Final Act.”), as supplemented by the Advisory Action dated December 27,
2013.
3 Claims 2, 8, 11, 14, and 17 have been canceled. Appeal Br. 20-22, Claims
App.
Appeal 2014—009085
Application 12/025,410
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1 is reproduced below and
illustrates the claimed subject matter.
1. A driver assistance system for a motor vehicle,
comprising:
a controller configured to control an acceleration of the
motor vehicle according to a setpoint acceleration; and
an input coupling unit configured to couple an additional
acceleration predefmable by the driver of the vehicle into the
driver assistance system,
wherein the controller comprises an acceleration
controller, which receives the setpoint acceleration; and
the input coupling unit is operatively configured upstream
of the acceleration controller and generates the setpoint
acceleration by superimposing the additional acceleration
predefmable by the driver of the vehicle on a system acceleration
of the driver assistance system.
ANALYSIS
Obviousness of Claims 1, 3—7, 9, 10, 12, 13, 15, 16, and 18 over
Schuster and Wheals
Appellants argue claims 1, 3—7, 9, 10, 12, 13, 15, 16, and 18 together
in contesting the rejection of these claims as obvious over Schuster and
Wheals. See Appeal Br. 6. We select claim 1 as the representative claim for
this group, and the remaining claims stand or fall with claim 1. See 37
C.F.R. §41.37(c)(l)(iv).
The Examiner relies on Schuster for disclosing a driver assistance
system for a motor vehicle, including inter alia, “[a]n acceleration controller
configured to control an acceleration of the motor vehicle according to
setpoint acceleration,” where an input coupling “unit is operatively
2
Appeal 2014—009085
Application 12/025,410
configured upstream of the acceleration controller and generates the
acceleration demand of the driver assistance system.” Final Act. 2—3 (citing
Schuster, Fig. 1 (the controller), and ^fl[ 10, 11, 14, 16, 29, and 36).
The Examiner also observes that while “Schuster does disclose
vehicle acceleration response according to stored setpoints,” “Shuster is
silent as to an input coupling unit configured to provide an additional,
predefmeable acceleration set by the driver,” and looks to Wheals for
disclosing “an input device (Fig. 2) coupled upstream of the acceleration
controller (Fig. 1) configured to provide a predefined acceleration [by the
driver].”4 Id. at 3. In an Advisory Action mailed December 27, 2013, the
Examiner further explains that “when the driver of Wheals alters the
‘sportiness’ of the vehicle via [the] input device, Wheals is implicitly
teaching adding or subtracting a predefmeable vehicle acceleration.” Adv.
Act. 2.
In taking issue with the analysis and conclusions presented in the
Final Action, Appellants first argue that “in Schuster there is no
summing of a driver’s input with any other ‘system ’ setpoint acceleration in
the coordinator 100 module.” See Appeal Br. 7—8. However, Appellants
misread the Examiner’s final rejection when referring to coordinator 100,
which is depicted in Figure 2 of Schuster. As explained supra, the Examiner
relies on Figure 1 of Schuster for disclosing “[a] unit [10] configured to
attain an acceleration definable by the driver of the vehicle into the driver
4 We note that Appellants’ admitted prior art describes driver assistance
systems where additional accelerations predefmable by the driver are
selected from longitudinal guidance strategies that differ in acceleration
characteristics, “before starting the trip.” See Spec. 112.
3
Appeal 2014—009085
Application 12/025,410
assistance system (user deflects acceleration pedal and vehicle accelerates
according to stored acceleration setpoint(s).”5 Final Act. 2.
Furthermore, Appellants are simply attacking Schuster in isolation for
lacking support for findings not relied upon by the Examiner, rather than
addressing the Examiner’s combination of Schuster and Wheals.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As the Examiner explains, “Wheals at Fig. 2 discloses a control
module for controlling the driver sportively index (DSI) metric,” where the
“module is a user input device which is configured to control the
acceleration response of the vehicle.” Id. at 3 (citing Wheals, Fig. 2 and
^Hf 26, 46-48). The Examiner continues by reasoning that “[w]ith the
ignition on, the driver can manipulate the ‘ sportiness ’ of vehicle response
(Wheals at 0026, 0037, 0039) at startup, or any time the driver wants to
manually control the acceleration response of the vehicle.” Id.
After repeating that claim 1 “requires an input unit ‘configured to
couple an additional acceleration predefmable by the driver of the vehicle
into the driver assistance system,’” Appellants contend that “there is no
teaching or suggestion [in Wheals] of the driver being provided any
capability to define the amount of predetermined change.” Appeal Br. 9—10.
Appellants also contend that “Wheals contains nothing that teaches or
suggests addition of a driver-defined amount of acceleration to a baseline
(‘setpoint’) amount of acceleration defined by the vehicle system.” Id. at 12.
5 In an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection
that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
4
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Application 12/025,410
We determine the scope of the claims in a patent application not
solely on the basis of the claim language, but upon giving claims “their
broadest reasonable interpretation consistent with the specification” and “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). “It is the [Appellants’] burden to precisely define the invention, not
the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
First noting that “[cjlaim 1 provides no context as to when the
acceleration is ‘predefined,’” the Examiner “took the broadest reasonable
interpretation of said term,” pointing out that “[t]he driver in Wheals can
increment/decrement the current longitudinal response of the vehicle while
the vehicle is running (e.g. before accelerating, while stopped, etc.),” and
concluding that “Wheals teaches the driver predefining an additional
acceleration into the driver assistance system.” Ans. 3.
Appellants disagree, contending that “Wheals only teaches that the
driver can chose between system-defined increments of the ‘Driver’s
Sportiness Index’ (e.g., 0.2. 0.4) while operating a vehicle, but contains no
teaching of a driver-defined additional acceleration corresponding to the
claimed additional acceleration ‘predefmable by the driver’ that is to be
added to a system’s baseline acceleration before a total setpoint acceleration
is calculated.” Reply Br. 7.
However, we agree with the Examiner that, by disclosing driver
selection from system-defined increments of the Driver’s Sportiness Index,
Wheals teaches an input coupling unit operatively configured to generate
“setpoint acceleration by superimposing the additional acceleration
5
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Application 12/025,410
predefinable by the driver,” as recited by claim l.6 Appeal Br. 20 (Claims
App.) (emphasis added).
Appellants continue by contending that “after allegedly finding the
element missing from Schuster in Wheals, rather than providing a substantial
analysis of whether one of ordinary [skill in the art] would have sought the
present invention from these teachings, the Examiner merely asserted a per
se rule to justify the combination [of] his obviousness ‘analysis,’” in stating
that ‘“[i]t would have been obvious. . . to incorporate the input coupling unit
of Wheals into the base invention of Schuster since both systems could be
used in combination to produce the predictable result of predefining the
acceleration of the vehicle.’” Appeal Br. 13—14 (quoting Office Action
mailed Apr. 23, 2013, at 4; Final Act. 4) (citing In re Nakhamkin, Appeal
No. 2012-003291 (May 24, 2012)); see also Reply Br. 9—10.
We agree with the Examiner that In re Nakhamkin “is inapplicable in
this case.” Ans. 5. In In re Nakhamkin, the Board reversed a final rejection
determining that the Examiner, relying on In re Edge, 359 F.2d 896 (CCPA
1966), incorrectly substituted a per se rule of obviousness, namely, that
omission of elements while retaining the function of the omitted element, as
a general proposition, is not a patentable distinction. Here, as we have
previously determined, Wheals discloses the element and function missing
from Schuster. Furthermore, we find that the Examiner has provided
“reasoning with some rational underpinning to support the legal conclusion
6 Wheals teaches predefinable driver control of the Driver’s Sportiness Index
at any “value ranging between zero (low sportiness) to one (high sportiness)
which can be used to modify the performance of the vehicle.” See Wheals,
126.
6
Appeal 2014—009085
Application 12/025,410
of obviousness” based on the combined teachings of Schuster and Wheals,
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Appellants continue by repeating portions of prior arguments in
contending that
the Examiner’s proffered justification [for the final rejection]
does not rise to the level of a "reasoning with some rational
underpinning" where (i) the Wheals reference does not teach
the feature for which it is cited and therefore the present
invention would not result from its combination with Schuster,
(ii) it relies on application of a per se obviousness rule, and (iii)
relies on use of hindsight knowledge of the present invention.
Appeal Br. 18.
We have previously considered, and rejected, contentions (i) and (ii).
Furthermore, as to contention (iii), we do not agree that the Examiner’s
rejection is an impermissible hindsight reconstruction. As discussed supra,
the Examiner cites teachings in the references in articulating reasons for
combining the references as proposed in the rejection and Appellants do not
identify any knowledge that the Examiner relied upon that was gleaned only
from Appellants’ disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971); see also Radix Corp. v. Samuels, 13 USPQ2d
1689, 1693 (D.D.C. 1989) (“[A]ny obviousness inquiry necessarily involves
some hindsight.”).
Appellants conclude that “the Examiner has not established a prima
facie case of obviousness that meets the standards set forth in KSR and
therefore has not met his burden of establishing prima facie obviousness of
the pending claims.” Appeal Br. 18. However, based upon our review of
7
Appeal 2014—009085
Application 12/025,410
the Examiner’s stated rationale, as set for supra, we are not persuaded the
Examiner failed to produce sufficient evidence and findings (supported by
citation to the references) to support a prima facie case of obviousness based
on the teachings of Schuster and Wheals. See, e.g., In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011).7
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of claims 1, 3—7, 9, 10, 12, 13, 15, 16, and 18 over Schuster and
Wheals.
DECISION
We AFFIRM the Examiner’s rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
7 “[A]ll 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.” Jung, 637 F.3d at
1363.
8