Ex Parte Takamatsu

Patent Trial and Appeal BoardDec 21, 2012

10991858 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIDEKI TAKAMATSU ____________ Appeal 2010-011862 Application 10/991,858 Technology Center 3600 ____________ Before JOHN C. KERINS, STEVEN D.A. McCARTHY and ANNETTE R. REIMERS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011862 Application 10/991,858 2 STATEMENT OF THE CASE Hideki Takamatsu (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-4, 6, 8-13, 15 and 17-23, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on December 11, 2012, with Scott Schulte, Esq., appearing on behalf of Appellant. We REVERSE. THE INVENTION Appellant’s invention is directed to a control device for a vehicle. Independent claim 1 is illustrative: 1. A control device for a vehicle causing a vehicle to move by a small distance, comprising: a determination unit configured to determine whether movement by the small distance is necessary; an acquisition unit, when it is determined that said movement by the small distance is necessary, configured to acquire positional information on a control start position where said movement by the small distance is to be started and positional information on a control finish position where said movement by the small distance is to be finished, said positional information on a control start position being acquired from a navigation unit; and a control unit configured to control a driving device and a braking device mounted to said vehicle, based on said acquired positional information, to move said vehicle from said control start position to said control finish position; said determination unit including Appeal 2010-011862 Application 10/991,858 3 a first determination unit configured to determine whether movement by the small distance is necessary, based on information on an external environment of the vehicle acquired by an external information acquisition unit acquiring information on the external environment of said vehicle and information on an obstacle blocking a driver's view that is stored in advance in association with said information on the external environment, and a second determination unit configured to determine whether movement by the small distance is necessary, based on information on motions of a driver of said vehicle and said information on an obstacle blocking a driver's view that is stored in advance in association with said information on motions. THE REJECTIONS The Examiner has rejected claims 1-4, 6, 8-13, 15 and 17-23 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement, and under 35 U.S.C. § 103(a) as being unpatentable over Appellant’s Admitted Prior Art (“AAPA”), as embodied in Takahashi (JP 9048263 A, published Feb. 18, 1997) and its U.S. counterpart, Takahashi (US 6,006,144, issued Dec. 21, 1999). ANALYSIS 35 U.S.C. § 112, first paragraph--written description requirement The Examiner maintains that the claims fail to reasonably convey, to a person of ordinary skill in the art, that at the time the present application was filed, Appellant had possession of the claimed invention. Ans. 3. The Examiner notes that the Specification discloses various data acquisition Appeal 2010-011862 Application 10/991,858 4 devices to obtain information directed to a vehicle’s external and internal information, but fails to give any guidance in the form of an algorithm or a portion of an algorithm as to which variables to use, how they correlate or relate to one another, or how they are ranked in priority to determine the movement by the small distance necessary such that practice of the invention could be made by one having ordinary skill in the art at the time the invention [sic, application] was filed. Ans. 4. The Examiner further takes the position that, “in computer-related invention[s], there must be an algorithm disclosed to allow the control system to perform the function as claimed.” Ans. 6-7. The Examiner further appears to maintain that the Specification does not evidence that Appellant had a working embodiment of the claimed invention at the time the application was filed. Ans. 4. Appellant counters that Figures 2-6, and the corresponding disclosure in the Specification “provide a detailed description of the algorithm steps that support and enable the claimed subject matter,” and points to portions of the Specification that discuss the steps undertaken by the device, and how the acquired data is used. Br. A- 12--A-13. Appellant has the better position here. The Examiner’s rationale in making this rejection appears to be directed not to the written description requirement in the first paragraph of 35 U.S.C. § 112, but rather to the enablement requirement in that paragraph, and possibly to alleged indefiniteness of the claims under the second paragraph of §112, as informed by the sixth paragraph of § 112. Aristocrat Technologies Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) (claims involving Appeal 2010-011862 Application 10/991,858 5 computers set forth in means-plus-function form are indefinite when no algorithm for performing functions is disclosed). Moreover, Appellant’s Figures 3-6 detail the overall process set forth in Figure 2 and clearly show what decisions are made or what operations are performed based upon particular data acquired. Thus, the Examiner’s position as to the lack of disclosure as to which variables to use, how they correlate or relate to one another, or how they are ranked in priority, appears to be misplaced. The rejection of claims 1-4, 6, 8-13, 15 and 17-23 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement, is not sustained. Obviousness in view of AAPA The Examiner’s position is that the AAPA “does not explicitly disclose the determination unit/means, acquisition unit/means, and control unit/means to perform such function as claimed.” Ans. 6. The Examiner notes that Appellant “admitted” that one of ordinary skill in the art would have been able to use a processor and other hardware to build the hardware of the claimed units/means, and concludes that it would have therefore been obvious to modify the AAPA to perform the claimed functions, “since it is well known in the art of experimentation that one can program a subroutine(s)/algorithm(s), to operate a system.” Id. Appellant, in addition to pointing to a number of differences between the AAPA and the claimed device, maintains that the Examiner relies on Appellant’s own disclosure in arriving at the conclusion that the invention as now claimed would have been obvious. Br. A-19. We agree. The so-called “admission” by Appellant relied on by the Examiner was made in the context of arguing the impropriety of a then-existing enablement rejection, Appeal 2010-011862 Application 10/991,858 6 in which Appellant maintained that, in view of the instant Specification, “one of ordinary skill in the art would have understood the claimed control unit/means, as well as the other recited units and means, could be implemented by a processor and memory and would have been able to do so without undue experimentation . . .”. Amendment dated Feb. 12, 2009, pp. 10-11. Reliance on this statement in arriving at the conclusion that the claims would have been obvious is improper, as it amounts to using Appellant’s own disclosure in the present application against him. See In re Katz, 687 F.2d 450 (CCPA 1982). The rejection of claims 1-4, 6, 8-13, 15 and 17-23 under 35 U.S.C. § 103 is not sustained. CONCLUSIONS The Examiner erred in rejecting the claims as failing to comply with the written description requirement, and under 35 U.S.C. § 103(a) as being unpatentable over the AAPA. DECISION The rejections of claims 1-4, 6, 8-13, 15 and 17-23 are reversed. REVERSED mls