Ex Parte Shih

Patent Trial and Appeal Board

Jun 1, 2017

13823637 (P.T.A.B. Jun. 1, 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.
13/823,637 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
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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).
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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,
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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
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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
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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.
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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.
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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
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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
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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
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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
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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
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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).
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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).
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