FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Dec 30, 2020

2020003081 (P.T.A.B. Dec. 30, 2020)

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.
15/437,596 02/21/2017 Pankaj KUMAR 83759801 1129
28395 7590 12/30/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
KAN, YURI
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PANKAJ KUMAR, IMAD HASSAN MAKKI,
FAKHREDDINE LANDOLSI,
and HASSENE JAMMOUSSI
____________

Appeal 2020-003081
Application 15/437,596
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 23, 2019, hereinafter “Final
Act.”) rejecting claims 1–16.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Ford Global Technologies, LLC, is identified as the real
party in interest in Appellant’s Appeal Brief (filed Jan. 9, 2020, hereinafter
“Appeal Br.”). Appeal Br. 1.
2 Claims 17–20 are withdrawn. Appeal Br., Claims App. 3.
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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to a system “for statistical vehicle
element failure analysis.” Spec. para. 1.
Claims 1 and 9 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A system comprising:
a processor configured to:
receive report of a vehicle part malfunction, along with
vehicle travel history covering at least a predefined time period,
prior to the malfunction;
obtain condition data relating to environmental
conditions encountered by the vehicle during the travel history
based on vehicle locations indicated in the travel history
compared to identifiable environmental conditions associated
with the locations at the time the vehicle was at those locations,
the time also indicated in the travel history;
compare the obtained condition data to other condition
data obtained from other vehicles reporting the same part
malfunction; and
create a malfunction likelihood record for the vehicle
part, including an association with a condition occurring over a
threshold percentage of times with regards to all obtained
condition data relating to the part malfunction and an indicator
of a likely failure when a vehicle encounters the condition.

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REJECTIONS
I. The Examiner rejects claim 11 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.3
II. The Examiner rejects claims 1–11 and 13–16 under 35 U.S.C.
§ 103 as being unpatentable over Breed,4 Yu,5 and Yamada.6
III. The Examiner rejects claim 12 under 35 U.S.C. § 103 as being
unpatentable over Breed, Yu, Yamada, and Tatourian.7

ANALYSIS
Rejection I
The Examiner finds that the limitation of “a government-defined
border” is not adequately supported by Appellant’s original disclosure.
Final Act. 3.
Appellant argues that “a government-defined border includes, for
example, a city, a municipality, a township, a state, etc.” Appeal Br. 6. As
support, Appellant cites to paragraph 64 of the Specification, which
describes “a failure rate [that] correlates to a region,” and to paragraph 48,
which “discusses reporting city-wide coordinates and correlating results to a
city, as well as correlating results to a bounded region.” Id. Thus, according
to Appellant, “a skilled artisan would understand that a city is a bounded

3 The rejection of claim 1 under 35 U.S.C. § 112(a) as failing to comply with
the written description requirement was withdrawn by the Examiner. See
Examiner’s Answer (dated Jan. 30, 2020, hereinafter “Ans.”) 3.
4 Breed, US 2012/0296567 Al, published Nov. 22, 2012.
5 Yu et al., US 8,711,003 B2, issued Apr. 29, 2014.
6 Yamada et al., US 2018/0068320 Al, published Mar. 8, 2018.
7 Tatourian et al., US 2016/0284212 Al, published Sept. 29, 2016.
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region, and that a reasonable way to describe multiple bounded regions such
as cities, but which are not all specifically cities, is to describe them as
regions having a government-defined border.” Id.
In response, the Examiner takes the position that “the scope of
‘government-defined border’ . . . is much broader than what was originally
disclosed.” Ans. 4 (emphasis added). According to the Examiner, because
“[t]he [S]pecification only explicitly recites ‘boundaries of a city’” (see
Spec. para. 48), Appellant’s original disclosure “does not provide possession
of all ‘government defined borders’ such as ‘municipalities, townships ...’
and certainly does not encompass military zones, school zones and other
government-defined borders . . . which this phrase encompasses.” Id.
We appreciate the Examiner’s position that a Specification cannot
always support expansive claim language and satisfy the requirements of 35
U.S.C. § 112 “merely by clearly describing one embodiment of the thing
claimed.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336,
1346 (Fed. Cir. 2005). However, broad claims may be adequately supported
by a single description of an apparatus or structure, but the inquiry into
whether the description requirement is met must be determined on a case-by-
case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). In this case, the Specification describes a “locality” as
“bounded by defined boundaries” and refers to the “boundaries of a city.”
Spec. para. 48. We agree with Appellant that a person of ordinary skill in
the art “would understand that a city is a . . . locality having a government
defined border.” Reply Brief (filed Mar. 17, 2020, hereinafter “Reply Br.”)
2 (citing Spec. para. 48). As such, Appellant’s Specification describes a
“locality,” such as a city, “bounded by defined boundaries,” such as “a
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government defined border.” Accordingly, the Specification supports the
limitation of a “locality having a government-defined border,” as recited by
claim 11.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 112(a) of claim 11 as failing to comply with the
written description requirement.

Rejection II
The Examiner finds Breed inherently discloses a processor configured
to “receive report of a vehicle part malfunction, along with vehicle travel
history covering at least a predefined time period, prior to the malfunction,”
as recited by each of independent claims 1 and 9. Final Act. 4–5 (citing
Breed, paras. 197, 420, 490, 497, 538); see also Appeal Br., Claims App. 1–
2.
In particular, the Examiner finds that making provisions “to record the
output of some or all of the vehicle data and later make it available to the
vehicle manufacturer,” as per Breed’s paragraph 197, inherently includes
“vehicle travel history” data “covering at least a predefined time period.”
Final Act. 5 (emphasis added). The Examiner further finds that “stor[ing]
the data from the analog-to-digital converters that digitize the data from the
receiving transducers” and “stor[ing] the network specific values associated
with each task,” as per Breed’s paragraph 420, likewise inherently includes
“vehicle travel history” data“ covering at least a predefined time period.” Id.
The Examiner further finds that Breed’s disclosure in paragraph 538,
reproduced below, also inherently includes “vehicle travel history” data
“covering at least a predefined time period.” Id. at 6.
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The main diagnostics for a module that can also reside
within the module which transmits either a ready or a
fault signal to the main monitoring circuit which now
needs only to turn on a warning light, and perhaps record
the fault, if any of the modules either fails to transmit a
ready signal or sends a fault signal.

Furthermore, the Examiner finds that Breed’s disclosure in paragraph
490 of a “diagnostic and prognostic system [that] is designed to enable one
or more selected parties to initiate a request for and receive a report on the
diagnostic condition of the vehicle or components thereof, or a report on the
predicted failure of one or more components,” likewise inherently includes
“vehicle travel history” data “covering at least a predefined time period.” Id.
Finally, the Examiner finds that Breed’s disclosure of storing data from
vehicle environment sensors, which is periodically updated, in order to
transmit the data at set time intervals, as per Breed’s paragraph 497,
inherently includes “vehicle travel history” data “covering at least a
predefined time period.” Id. at 7.
Appellant argues that “[n]othing in the prior art suggests that ‘vehicle
data’ necessarily even includes travel history and time at certain locations.”
Appeal Br. 8. According to Appellant, “travel history” includes “vehicle
locations and times at those locations.” Id. at 9. In contrast, Appellant
explains that “the data [in Breed] could be simply vehicle system state data,
or speed, or engine temp, or a thousand other things that have nothing to do
with vehicle travel history.” Id. at 8.
In response, “the Examiner finds that . . . [the term]
inherency/inherent/inherence, by definition, is ‘the relation of an attribute to
its subject;’ ‘relation of attributes, elements, etc., to the subject of which
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they are predicated, especially if they are its essential constituents’.” Ans. 9
(citing https://www.dictionary.com/browse/inherece). Thus, according to
the Examiner, Breed’s disclosures in paragraphs 197, 420, 490, 497, 538,
noted supra, “are straight examples of a vehicle diagnostic that was being
developed in the past during or based on a vehicle travel history” because a
skilled artisan is not limited to interpreting terms as Appellant, and, thus,
[A]re examples of relation of an attributes or elements
(event or action that happened before or in the past or
prior to something) to their subjects, which they are
predicated, especially if they are its essential constituents
(history of events, such as a driving history, which is a
past; records of event or action, the records that were
made or happened before or in the past or prior to
something; storing information about event or action, the
storing that was made or happened before or in the past
or prior to something, in the past.

Id. at 9–10.
We do not agree with the Examiner’s “attempt[] to define ‘inherency’
by reference to a dictionary,” because Appellant is correct that the term
“‘inherency’ is a term of art.” Reply Br. 4 (citing MPEP § 2112 (IV)). It is
well established that “[u]nder the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)
(emphasis added). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks
omitted). Here, the Examiner has not adequately provided a basis in fact
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and/or technical reasoning to reasonably support the determination that the
recorded and stored data in Breed necessarily constitutes “vehicle travel
history” data, as called for by each of independent claims 1 and 9. See Ex
parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
At the outset, we agree with Appellant that an ordinary and customary
meaning of the term “vehicle travel history” means “vehicle locations and
times at those locations.” Appeal Br. 9; see also In re Abbott Diabetes Care
Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (“[C]laims under examination
before the PTO are given their broadest reasonable interpretation consistent
with the specification.”). Such a construction is consistent with Appellant’s
Specification describing “tracking travel (at least coordinates) data” (see
para. 41), “travel data (such as GPS coordinates)” (see para. 46), and “travel
data . . . is detected (and/or over a period of time)” (see para. 47). As such,
in light of our construction of the term “vehicle travel history,” we agree
with Appellant that Breed discloses storage of data, which even if recorded
at a certain time, i.e., a snapshot, does not necessarily constitute “vehicle
travel history” data, as called for by independent claims 1 and 9. Reply Br.
3.
For example, Breed’s disclosure of “vehicle data” in paragraph
197 does not necessarily describe “vehicle travel history” data where the
locations of the vehicle and time at those locations are determined, but rather
discloses recording and storing sensor data regarding failure of a vehicle
component. See also Breed, para. 194 (“[T]he association of data with time
to create a temporal pattern for use in diagnosing component failures in
automobile.”), para. 195 (“[F]rom the foregoing depiction of different
sensors which receive signals from a plurality of components.”), para. 197
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(“[D]etermine based on one set of signals from the sensors during use that
either a single component or multiple components are operating abnormally”
and “if a failure occurs . . . provision can be made to record the output of
some or all of the vehicle data.”).
Similarly, Breed’s disclosure of storing data from sensors/transducers
(as per para. 420), such as environmental sensors (as per para. 497), or
reporting a failure/predicted failure of a component (as per paras. 490, 538)
likewise does not necessarily describe “vehicle travel history” data where
the locations of the vehicle and time at those locations are determined.
Recording environmental conditions and component failure does not
necessarily require a travel history, but rather represents an instantaneous
recording of the moment when the environmental condition occurred or the
component failed, that is, the instantaneous location and time. See, e.g.,
Appeal Br. 9–11. In other words, Breed’s instantaneous recording of when
something happens to a given component while the vehicle is travelling does
not necessarily constitute a “vehicle travel history” in which the locations of
the vehicle and times at those locations are recorded.
Accordingly, for the foregoing reasons, and because the Examiner’s
use of the Yu and Yamada disclosures does not remedy the deficiency of
Breed, we do not sustain the rejection under 35 U.S.C. § 103 of independent
claims 1 and 9, and their respective dependent claims 2–8, 10, 11, and 13–16
as unpatentable over Breed, Yu, and Yamada. See Final Act. 7–11, 17–20.

Rejection III
The Examiner’s use of the Tatourian disclosure does not remedy the
deficiency of Breed discussed supra. See Final Act. 23–24. Accordingly,
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for the same reasons discussed above, we also do not sustain the rejection
under 35 U.S.C. § 103 of claim 12 as unpatentable over Breed, Yu, Yamada,
and Tatourian.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
11 112(a) Written
Description

11
1–11, 13–16 103 Breed, Yu,
Yamada

1–11, 13–16
12 103 Breed, Yu,
Yamada,
Tatourian

12
Overall
Outcome
1–16

REVERSED