Ex Parte ShihDownload PDFPatent Trial and Appeal BoardJun 1, 201713823637 (P.T.A.B. Jun. 1, 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. 13/823,637 03/14/2013 I-Chieh Shih MR957-2821 9674 4586 7590 06/05/2017 ROSENBERG, KLEIN & LEE 3458 ELLICOTT CENTER DRIVE-SUITE 101 ELLICOTT CITY, MD 21043 EXAMINER HODGES, SUSAN E ART UNIT PAPER NUMBER 2489 NOTIFICATION DATE DELIVERY MODE 06/05/2017 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): ptoactions @rklpatlaw.com ptoactions@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte I-CHIEH SHIH Appeal 2017-001161 Application 13/823,637 Technology Center 2400 Before ELENI MANTIS MERCADER, CATHERINE SHIANG, and MATTHEW J. McNEILL, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SHIANG. Dissenting-in-Part Opinion filed by Administrative Patent Judge MANTIS MERCADER. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—15, which are all the claims pending and rejected in application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2017-001161 Application 13/823,637 STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to a car side video assisted system. See generally Spec. 1. Claim 1 is exemplary: 1. A car side video assist system activated by light signals comprising: at least two car side cameras, an activation signal source, a video signal source switch processor, and a display device; wherein the car side cameras include at least one left side camera disposed on the left side of a car and at least one right side camera arranged at the right side of the car, for respectively capturing an image on the left side and an image on the right side of the car to form corresponding image signal sources that are output to the video signal source switch processor; the activation signal source comprising a left turn signal, a right turn signal or a warning signal defined by a substantially contemporaneous activation of both of the left and the right turn signals, the activation signal source outputting a light signal corresponding to a selected one of the left turn signal, the right turn signal or the warning signal; the light signal being sent to the video signal source switch processor by a connecting wire; the video signal source switch processor generating a camera power activation signal responsive to the light signal from the activation signal source to correspondingly select and activate the left side camera, the right side camera, or a combination thereof for capturing at least one image of the corresponding selected car side where the camera is located; the image captured at the corresponding car side is output to form at least one car side picture on the screen of the display device; the video signal source switch processor further includes a light signal interpretation processor, the light signal interpretation processor is configured to interpret whether the activated light signal is one of the left turn signal, the right turn signal or the warning signal, wherein the light signal 2 Appeal 2017-001161 Application 13/823,637 interpretation processor initiates interpretation of the light signal after a preset critical time period defining a first time interval, the light signal interpretation processor continues the interpretation for a preset interpretation time period defining a second time interval, and then outputs an interpretation result to select and activate at least one camera upon completion of the preset interpretation time period, the light signal interpretation processor being configured to: (1) interpret any light signal detected with a signal duration less than the preset critical time period as no signal, (2) interpret the activation of left or right signals corresponding to detection of the left or right signals, respectively, within the preset interpretation time period or second time interval, and (3) interpret the warning signal corresponding to detection of both the left and the right signals within the preset interpretation time period or second time interval. References and Rejections Claims 1—15 are rejected under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. Claims 5—10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1—4 and 11—15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee (US 5,680,123, iss. Oct. 21, 1997), Reeves (US 2007/0088488 Al, pub. Apr. 19, 2007), Matko (US 7,355,628 B2, iss. Apr. 8, 2008), and Boyer (US 6,720,871 B2, iss. Apr. 13, 2004). Claims 5, 6, and 8—10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee, Reeves, Matko, Boyer, Schmidt (US 5,793,420, iss. Aug. 11, 1998), andPonziani (US 6,876,300 B2, iss. Apr. 5, 2005). 3 Appeal 2017-001161 Application 13/823,637 Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee, Reeves, Matko, Boyer, Schmidt, Ponziani, and Gomi (US 2010/0134325 Al, pub. June 3, 2010). ANALYSIS 35 U.S.C. § 112, First Paragraph To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. SeeAriad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Id. (internal quotations and citations omitted). I The Examiner finds: “Claims 1 and 2 recite ‘detected’ and ‘detection’. In the specification, it is not found how, when or where, the signals are detected, as claimed. This limitation introduces new matter added to the disclosure.” Non-Final Act. 7; see also Ans. 2-4. We agree with Appellant that Figures 1—4 and the Specification (19:9—18) reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See App. Br. 21—22. In particular, 4 Appeal 2017-001161 Application 13/823,637 we agree with Appellant that each of Figures 1—4 shows a light signal interpretation processor receives (detects) a light signal. See App. Br. 21— 22. Further, the light signal interpretation processor starts interpreting the detected light signal after a critical time. See App. Br. 21—22; Spec. 19:9— 18. Because the Examiner fails to provide sufficient basis to support the rejection, we reverse the Examiner’s rejection of claims 1—15 under 35U.S.C. § 112, first paragraph. II The Examiner finds the claimed “a first time interval” and “a second time interval,” as recited in claims 1—15, introduce new matter. See Non- Final Act. 7; Ans. 5—7. We agree with Appellant that Figure 7 reasonably conveys to skilled artisans that Appellant possessed the claimed invention as of the filing date. See App. Br. 23; Fig. 7 (showing a first time interval and a second time interval). Because the Examiner fails to provide sufficient basis to support the rejection, we reverse the Examiner’s rejection of claims 1—15 under 35 U.S.C. § 112, first paragraph. Ill The Examiner finds: Claim 2 recites “ignore any light signal detected during the preset critical time period”. The specification states “the signal is interpreted as “not right turn signal” and the interpretation result output is “no signal”” in Par. [0034], In 5 Appeal 2017-001161 Application 13/823,637 the specification, it is not found how, when or where, the signals are ignored, as claimed. This limitation introduces new matter added to the disclosure. Non-Final Act. 7; see also 4—5. Among other things, claim 2 recites: “The system as claimed in claim 1, wherein . . . the light signal interpretation processor being configured to ignore any light signal detected during the preset critical time period and to interpret the activation of the reverse signals corresponding to detection of the reverse signals within the preset interpretation time period” (emphasis added). Because the Specification states “the light signal interpretation processor 31 starts interpretation after a critical time such as 8 millisecond (0.008 second)” (Spec. 19:12—13), we agree with Appellants that the Specification reasonably conveys to skilled artisans that Appellant possessed the claimed invention as of the filing date. See App. Br. 22—23. That description is also consistent with Figure 7, which shows the interpretation result is “no signal” during the preset critical time. See Fig. 7. Because the Examiner fails to provide sufficient basis to support the rejection, we reverse the Examiner’s rejection of claim 2 under 35 U.S.C. §112, first paragraph. 35 U.S.C. § 112, Second Paragraph Claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph. [W]e read § 112, |2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those 6 Appeal 2017-001161 Application 13/823,637 skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Nautilus, Inc. v. Biosig Instruments, Inc, 134 S.Ct. 2120, 2129 (2014) (citations omitted). The Examiner rejects claims 5—10 for being indefinite because “[tjhere is no explanation as to what could be considered a ‘habit’ or how to measure a ‘habit.’” Non-Final Act. 8. However, in the Answer, the Examiner acknowledges one skilled in the art would understand what “would constitute a ‘driver’s habit.’” Ans. 7. We agree with Appellant that viewed in light of the Specification (27:17—28:18), one skilled in the art would understand the scope of “the priority logic being programmed to correspond to a hierarchy of importance that are set according to a driver’s habits” with reasonable certainty. See App. Br. 24—26. The Examiner’s later assertion that “it is not clear how the ‘driver’s habit’ can affect the order of importance/priority established for the system” (Ans. 8) ignores the majority of the Specification portions cited by Appellant (App. Br. 24-26 (citing Spec. 27:14-28:18)). Because the Examiner fails to provide sufficient basis to support the rejection, we reverse the Examiner’s rejection of claims 5—10 under 35 U.S.C. § 112, second paragraph. 7 Appeal 2017-001161 Application 13/823,637 Obviousness1 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner erred in finding Lee teaches “wherein the light signal interpretation processor initiates interpretation of the light signal after a preset critical time period . . . , the light signal interpretation processor continues the interpretation for a preset interpretation time period,” as recited in independent claim 1. See App. Br. 27—29. The Examiner cites Lee’s column 4, lines 37—41 and column 5, lines 52—55 for teaching the disputed claim limitations. See Non-Final Act. 11— 12. Appellant argues the Examiner’s interpretation of Lee is incorrect and the cited Lee portions do not teach the disputed limitations. See App. Br. 27—29. In particular, Appellant contends the cited Lee portions describe “feed the video signal from each camera to the video recorder 72 for a period of 3 seconds, and switches to another camera for the same duration,” but do not teach the disputed limitations. See App. Br. 27—29; Lee 4:37—39. The Examiner does not directly respond to Appellant’s substantive arguments, and does not explain why the cited Lee portions teach the disputed limitation. Instead, the Examiner asserts: Lee’s invention is a vehicle monitoring system that uses a plurality of video cameras mounted on various location of a vehicle where the views different cameras are displayed or recorded in response to the position of a turn signal control switch (Abstract). Clearly the reference detects the position of 1 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 8 Appeal 2017-001161 Application 13/823,637 the turn signal (and other inputs) and activates a camera, as such, Lee teaches the claimed limitations. . . . Furthermore . . . Appellant concurs that in order to interpret the light signal it must be detected (Page 21 of the brief). Therefore, Examiner maintains that Lee does teach the limitations as claimed. Ans. 9. We disagree with the Examiner. Lee states: The vehicle monitoring system uses a plurality of video cameras mounted on various location of a vehicle . . . The views from different cameras are displayed or recorded in response to the position of a turn signal control switch. In addition, the main controller 60, for example, controls the video multiplexer 68 to feed the video signal from each camera to the video recorder 72 for a period of 3 seconds, and switches to another camera for the same duration. This way, views from all three cameras are recorded in real time in the video recorder 72, which can be later used to deter[mine].... vehicle monitoring system 10. In the scan mode, the views from the cameras installed on different locations of the vehicle are displayed and recorded one at a time for a fixed period of time, for example, 3 seconds. In alternative .... Lee Abstract, 4:37-41, 5:52—55. The cited Lee portions do not describe the claimed “initiates interpretation of the light signal after a preset critical time period” or “continues the interpretation for a preset interpretation time period,” let alone “wherein the light signal interpretation processor initiates interpretation of the light signal after a preset critical time period . . ., the light signal interpretation processor continues the interpretation for a preset interpretation time period,” as required by claim 1. Nor has the Examiner provided sufficient explanation or analysis to establish the cited Lee portions can be interpreted to teach the disputed limitations. And the Examiner’s 9 Appeal 2017-001161 Application 13/823,637 assertion that “Appellant concurs that in order to interpret the light signal it must be detected .... Therefore, Examiner maintains that Lee does teach the limitations as claimed” (Ans. 9) does not show how the cited Lee portions teach the disputed limitations. In addition, we respectfully disagree with the Minority’s characterization of our opinion and the record for the following additional reasons. The Minority states: The majority’s analysis does not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art. See In re Keller, 642 L.2d 413, 425 (CCPA 1981).. . (citations omitted). The Examiner relied on Lee’s teaching of a controller to determine whether the activated light signal is one of a right or a left turning signal (col. 2,11. 12—16; Ans. 11) and output an interpretation result to activate at least one camera based on the detected activated signal (col. 3,11. 21—24 and Ans. 12). The Examiner then relied on Reeves for the teaching of detection of a warning signal, or a contemporaneous activation of both left and right turn signals, to be able to activate appropriate cameras (paras. 26, 47, and 48). The Examiner relied on Matko (col. 3,11. 1—26) for the teaching of a preset critical time period (i.e., programmed time 180) which allows for accurate detection of whether a warning signal was activated (i.e., flashing lights) (Ans. 13—14). Accordingly, one skilled in the art at the time of the invention based on the teachings identified by the Examiner would have been able to add a critical time period or delay as taught by Matko in the combined Lee and Reeves’ system to allow for determination of when the flashing lights are activated so that both right and left cameras are activated. Opinion 14—15. The Minority’s arguments—regardless of whether such arguments are indeed supported by the record—do not explain why and how the prior art portions cited by the Examiner teach the 10 Appeal 2017-001161 Application 13/823,637 disputed limitations “wherein the light signal interpretation processor initiates interpretation of the light signal after a preset critical time period . . . , the light signal interpretation processor continues the interpretation for a preset interpretation time period.” Further, the Federal Circuit has cautioned against “changing] the thrust of the rejection” at the Board: [T]he [Board] must assure that an applicant’s petition is fully and fairly treated at the administrative level.... Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner . . . when reliance upon such facts changes the thrust of the rejection, the Board’s action “does everything but cry out for an opportunity to respond.” This also serves the interests of judicial efficiency. Rather than reviewing arguments directed towards ever-shifting rejections, this court is instead only presented with arguments concerning those rejections properly made by the examiner and, in due time, reviewed by the Board. In re Leithem, 661 F.3d 1316, 1319—20 (Fed. Cir. 2011) (citations omitted). Therefore, we respectfully decline to rearrange the Examiner’s mapping and add new findings. In particular, the Examiner does not cite Reeves for teaching the disputed limitations. See Non-Final Act. 11—13. Further, the Examiner cites Matko for teach “upon completion of the preset interpretation time period, the light signal interpretation processor being configured to ignore any light signal detected during the preset critical time period, interpret the activation of left and right signals corresponding to 11 Appeal 2017-001161 Application 13/823,637 detecting of the left and right signals within the preset interpretation time period”—not the disputed limitations. See Non-Final Act. 11—14. 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 claim 1. We also reverse the Examiner’s rejection of corresponding dependent claims 2—15. The Examiner cites additional references for certain dependent claims, but has not shown those additional references overcome the deficiency discussed above regarding the rejection of claim 1. See Non- Final Act. 21—29. DECISION We reverse the Examiner’s decision rejecting claims 1—15. REVERSED 12 Appeal 2017-001161 Application 13/823,637 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte I-CHIEH SHIH Appeal 2017-001161 Application 13/823,637 Technology Center 2400 MANTIS MERCADER, Administrative Patent Judge, Dissenting-in-Part. I respectfully dissent from the majority’s opinion reversing the Examiner’s rejection of claims 1—15 under 35 U.S.C. § 103(a). The scope of the claims in patent applications are not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 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). Appellants refer us to their Specification for the meaning of the disputed claimed limitation “wherein the light signal interpretation processor initiates interpretation of the light signal after a preset critical time period . . . , the light signal interpretation processor continues the interpretation for a preset interpretation time period” (App. Br. 4; referring to Spec.: 19,1. 14—20,1. 3 and Fig. 7), which refers to a “critical time period” as being the time period when an activated light signal is 13 Appeal 2017-001161 Application 13/823,637 determined to be one of a left turn signal 202, a right turn signal 203, or a warning signal 204, which the light signal interpretation processor 31 outputs to activate appropriate cameras. The following paragraph in Appellants’ Specification further describes the critical period as a delay so as to allow for detection of both turning signals, or in essence the warning signal 204 (see Spec. 20,11. 5—17). The majority’s analysis does not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted). The Examiner relied on Lee’s teaching of a controller to determine whether the activated light signal is one of a right or a left turning signal (col. 2,11. 12—16; Ans. 11) and output an interpretation result to activate at least one camera based on the detected activated signal (col. 3,11. 21—24 and Ans. 12). The Examiner then relied on Reeves for the teaching of detection of a warning signal, or a contemporaneous activation of both left and right turn signals, to be able to activate appropriate cameras (paras. 26, 47, and 48). The Examiner relied on Matko (col. 3,11. 1—26) for the teaching of a preset critical time period (i.e., programmed time 180) which allows for accurate detection of whether a warning signal was activated (i.e., flashing lights) (Ans. 13—14). 14 Appeal 2017-001161 Application 13/823,637 Accordingly, one skilled in the art at the time of the invention based on the teachings identified by the Examiner would have been able to add a critical time period or delay as taught by Matko in the combined Lee and Reeves’ system to allow for determination of when the flashing lights are activated so that both right and left cameras are activated. In KSR, the Supreme Court held that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The Supreme Court has also determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id., at 418. The skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 421. Appellants have not presented any evidence demonstrating that the modification would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, at 418). Accordingly, I respectfully dissent from the majority’s opinion reversing the Examiner’s rejection of claims 1—15 under 35 U.S.C. § 103(a). 15 Copy with citationCopy as parenthetical citation