Ex Parte Rosenbaum

Patent Trial and Appeal Board

Aug 23, 2017

13763753 (P.T.A.B. Aug. 23, 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.
13/763,753 02/11/2013 Richard W. Rosenbaum RRO-34202/02 I960
131270 7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
EXAMINER
SY, MARIANO ONG
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
08/23/2017 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 RICHARD W. ROSENBAUM
Appeal 2017-001036
Application 13/763,753
Technology Center 3600
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 3—22, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to motor
vehicle braking. See generally Spec. 1. Claim 1 is exemplary:
1. An operator control configured to interface with an electronic
braking system (EBS) in a motor vehicle, comprising:
a steering wheel having a front side and an underside;
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Application 13/763,753
a plurality of pressure or force sensors supported
peripherally around a cross section of the steering wheel,
including pressure or force sensors supported on the underside of
the steering wheel; and
whereby an operator’s squeezing of the steering wheel,
without pulling or pushing either the steering wheel or a steering
column, is operative to slow or stop the vehicle.
References and Rejections
Claims 1, 4—8, and 18—22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yoshida (US 7,649,278 B2; iss. Jan. 19, 2010) and
Klausner (US 7,019,623 B2; iss. Mar. 28, 2006).
Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yoshida, Klausner, and Cuddihy (US 2011/0224875 Al; publ. Sept. 15,
2011).1
Claims 9, 10, and 12—16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yoshida, Yokoyama (US 2003/0083797 Al; publ.
May 1, 2003), and Klausner.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yoshida, Yokoyama, Klausner, and Cuddihy.
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yoshida, Yokoyama, Klausner, and Otake (US 2009/0281704 Al; publ.
Nov. 12, 2009).
1 The Final Office Action includes a typographical error about Cuddihy’s
publication number. Final Act. 5.
2
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PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(internal citation omitted).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (internal quotation and citation omitted).
The “mere disclosure of alternative designs does not teach away” and
“just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.” In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (internal quotation and citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.2
Claims 1 and 3—8
On this record, the Examiner did not err in rejecting claim 1.
Appellant contends Yoshida and Klausner do not collectively teach “a
plurality of pressure or force sensors supported peripherally around a cross
section of the steering wheel, including pressure or force sensors supported
on the underside of the steering wheel f as recited in independent claim 1
(emphasis added). See App. Br. 2-4; Reply Br. 1—2. In particular,
Appellant argues:
Klausner is unrelated to vehicular braking. Rather, the
position of the driver’s hands are detected-not the application of
pressure. In the Examiner’s Response to Arguments, the
Examiner states that Klausner is used for the teaching of
“pressure sensors supported on the underside of the steering
wheel.” (Final OA, page 10), but this is clearly not the case.
Rather, in Klausner, the positions of the hands are detected which
can then be used, e.g., for “plausibility checking of the steering-
angle sensor.” . . .
The Examiner’s rationale for combining Yoshida and
Klausner—to ease access of the sensors by the driver for braking
the vehicle—does not follow from the teachings of the cited
references. In fact, Yoshida teaches away from force sensors on
the backside of the steering wheel. In Yoshida, the force sensors
are clearly intended to be “accessed” by the driver. In the case of
audio control, for example, the sensors are associated with
specific functions and the regions of the steering wheel are
labelled with those functions. Thus the regions of the steering
2 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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Application 13/763,753
wheel including the functions consider by Yoshida are intended
to be seen by the driver which would be impossible if the controls
were positioned on the backside of the wheel. Thus, putting any
of Yoshida’s functions on the backside of the steering wheel
would make them more difficult to access—not easier, as
suggested by the Examiner.
App. Br. 3^4
[T]he teachings of Klauser [sic] add nothing to the teachings of
Yoshida. Both Yoshida and Klauser [sic] are relied upon by the
Examiner for the disclosure of sensors positioned around the
circumferential diameter of the steering wheel, and neither teach
or suggest sensors—let alone for braking—on the underside of
the steering wheel.
Reply Br. 2; see also Reply Br. 1—2.
The above arguments are unpersuasive, because they lack the requisite
evidential support. In any event, even if “the positions of the hands are
detected” in Klausner as Appellant asserts (but unsubstantiated as Appellant
cites no support for the assertion), Appellant has not persuasively explained
why that assertion negates the Examiner’s finding about Klausner. The
Examiner specifically cites Klausner’s Figure 6 for teaching the italicized
limitation. See Final Act. 3, Ans. 3. Appellant does not analyze Klausner’s
Figure 6, and fails to persuasively respond to the Examiner’s finding.
Therefore, Appellant fails to show Examiner error. See In re Baxter
TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court [or this Board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art”).
Further, Appellant’s argument is not commensurate with the scope of
the claim, as Appellant fails to show the claim requires “force sensors on the
backside of the steering wheel” (App. Br. 4 (emphasis added); see also
Reply Br. 2). To the contrary, the disputed limitation recites “pressure or
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force sensors supported on the underside of the steering wheel” (emphasis
added). As a result, Appellant’s argument against the Examiner’s rationale
for the combination is unpersuasive.
Finally, Appellant’s teaching away argument is unpersuasive because
Appellant fails to provide adequate analysis under the case law. In
particular, Appellant fails to show one skilled in the art “would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
Kahn, 441 F.3d at 990.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1.
Separately Argued Dependent Claims
Regarding dependent claim 3, “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007); see also Metalcraft of Mayville, Inc., v. The Toro Co., 848
F.3d 1358, 1367 (Fed. Cir. 2017):
Without any explanation as to how or why the references would
be combined to arrive at the claimed invention, we are left with
only hindsight bias that KSR warns against. . .[,] we cannot
allow hindsight bias to be the thread that stitches together prior
art patches into something that is the claimed invention.
In this case, the Examiner modifies Yoshida’s sensor with Cuddihy’s
specific type of sensor “in order to operate the brake” (Final Act. 5). That
reasoning does not constitute the requisite rational underpinning to support
the legal conclusion of obviousness, because Yoshida already has an
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Application 13/763,753
operating brake. See App. Br. 6. Because the Examiner fails to provide
the requisite articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness, we are constrained by the
record to reverse the Examiner’s rejection of dependent claim 3.
Regarding dependent claim 4, Appellant argues Yoshida does not
teach “wherein an initial moderate squeeze on the steering wheel will begin
to slow the vehicle.” See App. Br. 4—5; Reply Br. 2—3. In particular,
Appellant contends “[i]t is apparent from this graph and the accompanying
text of the reference that Yoshida does not teach an initial moderate squeeze
on the steering wheel will begin to slow the vehicle. Rather, it is apparent
that an initial squeeze, moderate or otherwise, will dramatically increase
braking force.” App. Br. 4; see also Reply Br. 2. However, even if “an
initial squeeze, moderate or otherwise, will dramatically increase braking
force” as Appellant asserts (App. Br. 4), Appellant has not shown why that
assertion negates the Examiner’s finding. To the contrary, that assertion
supports the Examiner’s finding, because “dramatically increase braking
force” (App. Br. 4) will begin to slow the vehicle, as required by the claim.
Because Appellant has not shown Examiner error, we sustain the Examiner’s
rejection of dependent claim 4.
Regarding dependent claims 5—7, we agree with Appellant that the
Examiner has not adequately mapped the limitations recited in each claim:
(i) “wherein multiple squeezes on the steering wheel progressively reduce
the speed of the vehicle,” as recited in claim 5; (ii) “wherein a consistent
firm squeeze on the steering wheel brings a vehicle to a gradual and
complete stop,” as recited in claim 6; and (iii) “wherein a sudden extreme
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squeeze on the steering wheel will rapidly stop the vehicle,” as recited in
claim 7. See App. Br. 4—5; Reply Br. 2—3. The Examiner cites Yoshida’s
Figure 15 and column 13, lines 16—22 (Final Act. 3^4; Ans. 4), but the cited
Yoshida portions do not describe the detailed limitations required by the
claims. Absent evidential support, the Examiner’s general assertion that the
recited limitations involve “only routine skill in the art” (Final Act. 3^4;
Ans. 4) is insufficient for the rejection, as Appellant persuasively argues that
assertion is inadequate in this case (App. Br. 5). Because the Examiner fails
to provide sufficient evidence or explanation to support the rejection, we are
constrained by the record to reverse the Examiner’s rejection of dependent
claims 5—7.
Regarding dependent claim 8, Appellant generally asserts Yoshida
does not teach the claim. See App. Br. 4—5; Reply Br. 2—3. However,
Appellant’s general assertion is unpersuasive of error. See 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”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the
Board reasonably interpreted Rule 41.37 to require 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”). Because Appellant has not shown Examiner error, we sustain the
Examiner’s rejection of dependent claim 8.
Claims 9—17
On this record, the Examiner did not err in rejecting claim 9.
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Appellant contends:
Appellant disagrees that it would be obvious to provide
electronic calipers to “in order to operate the brake on the wheel.”
... Appellant’s use of electronic calipers does not make possible
“operating the brake on the wheel,” nor does the proposed
Yoshida/Yokoyama/Klausner combination read on all of
Appellant’s claim limitations. For example, the proposed
Yoshida/Yokoyama/Klausner combination does not teach or
suggest “a plurality of human-machine interface (HMI) braking
inputs; one or more communications networks interfacing the
HMI braking inputs and the ECU to a plurality of electronic
calipers, each caliper being associated with a wheel of a vehicle;
wherein each electronic caliper including a processor and an
actuator, each processor being operative to receive and interpret
signals from the HMI inputs and ECU to slow or stop the vehicle
by delivering a braking signal to the actuator; and wherein the
HMI braking inputs include a brake pedal and a plurality of
pressure or force sensors supported peripherally around a cross
section of the steering wheel that operate in response to an
operator’s squeezing of the steering wheel without pulling or
pushing either the steering wheel or a steering column.”
App. Br. 6—7; see also Reply Br. 4—5.
Appellant’s general assertion that the cited prior art does not teach the
limitation of the claim is unpersuasive of error. See 37 C.F.R.
§ 41.37(c)(l)(iv); see also Lovin, 652 F.3d at 1357.
Further, Appellant’s assertion that “Appellant disagrees that it would
be obvious to provide electronic calipers to ‘in order to operate the brake on
the wheel.’ . . . Appellant’s use of electronic calipers does not make
possible ‘operating the brake on the wheel’” (App. Br. 6) is unpersuasive,
because the assertion is conclusory, and Appellant does not provide the
requisite support for the conclusion. In any event, even if the assertion that
“Appellant’s use of electronic calipers does not make possible ‘operating the
brake on the wheel’” is true (but unsubstantiated since Appellant does not
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cite any supporting evidence), that assertion does not explain why the
Examiner’s reasoning, which is directed to the proposed combination, is
incorrect.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 9.
We also sustain the Examiner’s rejection of corresponding dependent
claims 10 and 16, as Appellant does not advance separate substantive
arguments about those claims.
Separately Argued Dependent Claims
Regarding dependent claim 11, for similar reasons discussed above
with respect to claim 3, we reverse the Examiner’s rejection of dependent
claim 11.
Regarding dependent claims 12—15, we agree with Appellant that the
Examiner has not adequately mapped the limitations recited in each claim:
(i) “wherein each processor is operative to control a respective actuator to
reduce the speed of the vehicle by a predetermined amount in response to an
initial moderate squeeze on the steering wheel” as recited in claim 12; (ii)
“wherein each processor is operative to control a respective actuator to
progressively reduce the speed of the vehicle in response to multiple
squeezes of the steering wheel,” as recited in claim 13; (iii) “wherein each
processor is operative to control a respective actuator to bring the vehicle to
a gradual and complete stop in response to a consistent firm squeeze of the
steering wheel,” as recited in claim 14; and (iv) “wherein each processor is
operative to control a respective actuator to rapidly stop the vehicle in
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response to a sudden extreme squeeze on the steering wheel,” as recited in
claim 15. See App. Br. 7; Reply Br. 5. The Examiner cites Yoshida’s
Figure 1 (Final Act. 7—8),3 but that figure does not describe the detailed
limitations required by the claims. Because the Examiner fails to provide
sufficient evidence or explanation to support the rejection, we are
constrained by the record to reverse the Examiner’s rejection of dependent
claims 12—15.
Regarding dependent claim 17, we agree with Appellant that the
Examiner has not shown the cited prior art portions teach “further including
a front-viewing video camera interfaced to the one of the communications
networks enabling the system to bring the vehicle to a smooth and gradual
stop based upon the distance to other vehicles or obstacles in front of the
vehicle,” as recited in claim 17. See App. Br. 8—9; Reply Br. 5—6. The
Examiner cites Otake’s Figure 1 and paragraph 49 (Final Act. 9), but the
cited Otake portions do not describe the detailed limitation required by the
claim. Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of dependent claim 17.
Claims 18—22
On this record, the Examiner did not err in rejecting claim 18.
Appellant contends:
Appellant’s claim 18 resides in a method of braking a
motor vehicle, including the provision of a steering wheel
3 The Examiner does not cite prior art for the limitation of claim 13 (Final
Act. 17).
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instrumented with a plurality of force or pressure sensors
positioned peripherally around a cross section of the steering
wheel. The force or pressure sensors are interfaced to an
electronic braking system, such that slowing or stopping the
vehicle is accomplished by squeezing on the force or pressure
sensors supported on the steering wheel without pushing or
pulling either the steering wheel or a steering column. These
limitations cannot be taught by Yoshida for at least the reason
that, as conceded by the Examiner, Yoshida does not teach a
plurality of force or pressure sensors positioned peripherally
around a cross section of the steering wheel. As such, by
definition and regardless of the embodiment, the user of Yoshida
must push or pull either the steering wheel or a steering column
to bring about a particular function, including braking. Further,
as discussed above with respect to claim 1, Klausner relates to
position sensing—not force or pressure sensing—and putting
any of Yoshida’s functions on the backside of the steering wheel
would make them more difficult to access—not easier.
App. Br. 5; see also Reply Br. 3^4.
The above arguments are unpersuasive, because they lack the requisite
evidential support. Further, the Examiner cites Klausner for teaching the
italicized limitation “peripherally around a cross section of the steering
wheeF (Final Act. 4—5), and Appellant does not dispute that finding.
Therefore, Appellant fails to show Examiner error. See Baxter Travenol
Labs., 952 F.2d at 391.
In addition, Appellant’s argument is not commensurate with the scope
of the claim, as Appellant fails to show the claim requires “functions on the
backside of the steering wheel” (App. Br. 5; Reply Br. 5). As a result,
Appellant’s argument about the Examiner’s rationale for the combination is
unpersuasive.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 18.
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Regarding dependent claim 19, for similar reasons discussed above
with respect to claim 4, we affirm the Examiner’s rejection of claim 19.
Regarding dependent claims 20—22, for similar reasons discussed
above with respect to claims 5—7, we reverse the Examiner’s rejection of
claims 20—22.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 4, 8—10, 16, 18,
and 19.
We reverse the Examiner’s decision rejecting claims 3, 5—7, 11—15,
17, and 20-22.
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).
AFFIRMED-IN-PART
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