Ex Parte Tsutsumi et al

Patent Trial and Appeal BoardNov 6, 2012

11605822 (P.T.A.B. Nov. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JUNJI TSUTSUMI, TOSHIAKI KASAHARA, and YUUSUKE KATOU ____________________ Appeal 2010-005520 Application 11/605,822 Technology Center 3600 ____________________ Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005520 Application 11/605,822 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 4, 10-16 and 20-22. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a vehicle steering controller and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A vehicle steering device for steering at least one wheel of a vehicle, the steering device comprising: a steering instrument operable to receive input from a driver; a turning device operable to turn the at least one wheel; a selectively engageable backup clutch positioned between the steering instrument and the turning device; and a controller configured to judge whether the backup clutch is engaged based on a steering state signal from the steering instrument and a turning state signal from the turning device. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Husain US 6,580,989 Jun. 17, 2003 REJECTIONS Claims 21 and 22 are rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. Ans. 3. Claims 1-4, 10-16, and 20-22 are rejected under 35 U.S.C. § 102(b) as being anticipated by Husain. Ans. 3. Appeal 2010-005520 Application 11/605,822 3 OPINION Regarding the rejection under 35 U.S.C. §112, first paragraph, “[t]he examiner contends that detecting is vastly different from measured. Detect is equated to idea of identifying or recognizing while measure it [sic is] equated to actually determining a finite amount in an applicable unit.” Ans. 7. It is clear from Appellants’ Specification, that to the extent Appellants are detecting, they are doing so to measure the turning angle or rotation amount of the steering wheel. See Spec. p. 5, para. [0032]. Both are finite quantities measured as angles, or the rate of change of those angles, i.e., angular velocities. See e.g., figs. 4-10. Thus, Appellants’ Specification provides descriptive support for “measured” as that term is interpreted by the Examiner. Accordingly, we cannot sustain the Examiner’s rejection under 35 U.S.C. §112, first paragraph. Regarding the rejection of independent claim 1 under 35 U.S.C. § 102(b), Appellants and the Examiner agree that Husain discloses a steering instrument, turning device, backup clutch, steering state sensor and turning state sensor, according to claim 1. Ans. 3-4. Appellants and the Examiner dispute whether Husain discloses “a controller configured to judge whether the backup clutch is engaged.” Ans. 4; App. Br. 5-6. The Examiner correctly identifies the limitation in question as functional in that it describes what the controller does as opposed to what it is. Thus, we are in agreement with the Examiner’s claim construction, in that the claim requires a controller capable of performing the recited function of “judg[ing] whether the backup clutch is engaged” based on the specified criteria. The Examiner determines that Husain discloses a controller capable of performing the recited functions because “one of ordinary skill in the art Appeal 2010-005520 Application 11/605,822 4 could program that into the controller as one of the malfunctions its [sic it] checks for based on the various parameters it collects which include the steering state signal and turning state signal as claimed.” Ans. 8. Indeed, Appellants’ device relies on the same sensors and systems as the prior art. Spec. pp. 4-5, para. [0027]-[0028]. One way to provide the recited functionality in Appellants’ device is with programming instructions, as the Examiner suggests. See Spec. p. 7, para. [0040]. However, as Appellants correctly point out (App. Br. 6), the Examiner’s reasoning cannot support a rejection under 35 U.S.C. § 102(b). Our reviewing court has held that a “programmed machine is structurally different from a machine without that program.” In re Noll, 545 F.2d 141 (CCPA 1976); see also In re Bernhart, 417 F.2d 1395, 1399-1400 (CCPA 1969) (“[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.”); In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994); Ultramercial v. Hulu, 657 F. 3d 1323, 1329 (Fed. Cir. 2011). Thus, even assuming Husain’s controller has the capability to be programmed, the Examiner’s proposal to modify Husain’s controller with additional or different programming effectively creates a new or different controller. To support a rejection premised upon a theory of anticipation, it is not enough to find that a prior art device is merely capable of being modified to operate in a manner that would anticipate the claims. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011)(discussing Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117-18 (Fed. Cir. 2002); Telemac Cellular Corp. v. Topp Appeal 2010-005520 Application 11/605,822 5 Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001); and High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555-56 (Fed. Cir. 1995)).1 Anticipation requires the prior art apparatus as provided to be capable of performing the recited function, not merely one that might later be modified to include such capability, for example, by altering its programming. Typhoon Touch Techs., 659 F.3d at 1380. Since Husain’s apparatus is not capable of performing the function stated in the claim unless the apparatus is specifically so programmed or configured, Husain’s apparatus cannot be said to anticipate claim 1 or any claims depending therefrom. See id. The limitation at issue is more narrowly drawn in claims 12 and 13. Claim 12 employs means plus function language, which covers the programming instructions and other structures described in the Specification and equivalents thereof. Aristocrat Tech. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)( “[I]n a means-plus- function claim ‘in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.’”); Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)( “[T]he corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.”). Claim 13 requires the judging step to be performed as part of the claimed method. The 1 While these cases address the question of whether an accused device infringes, the principles discussed therein are also relevant to an anticipation analysis since “[t]hat which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 US 530 (1889). Appeal 2010-005520 Application 11/605,822 6 Examiner relies on the same reasoning discussed above in rejecting claims 12 and 13. Ans. 6. Accordingly, the rejection of claims 12 and 13 and of those claims depending therefrom also cannot be sustained. DECISION The Examiner’s rejection is reversed. REVERSED mls