FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals BoardDec 24, 2020

2020002186 (P.T.A.B. Dec. 24, 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. 15/134,443 04/21/2016 GUANG WU 83631256 5812 28866 7590 12/24/2020 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 EXAMINER SMITH, AARON C ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 12/24/2020 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): MST@mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUANG WU, HUGH O. FADER, and LAWRENCE M. ROSE Appeal 2020-002186 Application 15/134,443 Technology Center 3600 ____________ Before CHARLES N. GREENHUT, BRETT C. MARTIN, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge FITZPATRICK Opinion dissenting in part filed by Administrative Patent Judge GREENHUT FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Ford Global Technologies, LLC,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself and its parent corporation, Ford Motor Company, as real parties in interest. Appeal Br. 1. Appeal 2020-002186 Application 15/134,443 2 STATEMENT OF THE CASE The Specification The Specification “relates to automotive vehicle testing and in particular to a vehicle driver model for use in automotive vehicle testing.” Spec. ¶1. The Claims Claims 1–20 are rejected. Non-Final Act. 1. Claims 1, 10, and 14 are independent. Appeal Br. 16–19. Claim 1 is illustrative and reproduced below. 1. A method of testing an automotive vehicle comprising: estimating a vehicle signal, wherein the signal is a vehicle speed; setting a control parameter of a driver model for the vehicle by estimating, as functions of the vehicle speed and a test speed, a vector of accelerations for multiple time windows, wherein each of the time windows has a different length of time; calculating a target acceleration by multiplying the acceleration vector by a driving mode vector, the driving mode vector having a coefficient for each of the time windows; [and] summing feedforward and feedback values, wherein the feedforward value is a function of a test cycle and the target acceleration and the feedback value is a function of the test cycle and vehicle speed; [and] controlling a powertrain of the vehicle in accordance with the parameter. Appeal Br. 16. Appeal 2020-002186 Application 15/134,443 3 The Examiner’s Rejections The following rejections, both pursuant to 35 U.S.C. § 112(a), are before us: 1. claims 1–20 for failing to comply with the written description requirement (Final Act. 9–11); and 2. claims 1–20 for failing to comply with the enablement requirement (id. at 11–17). DISCUSSION Section 112(a) states the following: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 35 U.S.C. § 112(a) (emphasis added). In Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc), the full Court of Appeals for the Federal Circuit, interpreting an identically-worded predecessor statute, 35 U.S.C. § 112 ¶1, held that the written description and enablement are separate requirements. Id. at 1344. The Examiner rejected Appellant’s claims for failing to comply with both requirements. Final Act. 9–17. Rejection 1—Written Description Whether the Specification contains a written description of the claims is a question of fact. Ariad Pharms., 598 F.3d at 1355. Specifically, the question asks “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. at 1351. Appeal 2020-002186 Application 15/134,443 4 However, as with any rejection, the Examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). “Insofar as the written description requirement is concerned, that burden is discharged by ‘presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.’” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (quoting In re Wertheim, 541 F.2d 257, 263 (CCPA 1976)). Here, the Examiner has failed to meet that burden, at least because the Examiner’s findings are not based on a consideration of Appellant’s full disclosure. See Final Act. 9 (focusing exclusively on Spec. ¶20 in rejecting claims 1, 10, and 14). Appellant’s rejected claims are originally-filed claims; they have not been amended. Compare Appeal Br. 16–19, with Spec. 10–14. Thus, the claims should have been considered before making a finding that the Application fails to provide a written description of the claims. Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The claims as filed are part of the specification, and may provide or contribute to compliance with § 112.”). There is no indication that the Examiner considered the claims themselves before finding that the Application fails to provide a written description therefor. See generally Final Act. 9–10. Without considering, at least not explicitly, the claims themselves, the Examiner found “the current specification does not satisfy the written description requirement under 112(a) by merely stating that one of ordinary skill in the art could devise an algorithm/process to perform the specialized recited functions of the claims.” Final Act. 9–10. But that is not what the Appeal 2020-002186 Application 15/134,443 5 Specification (or Appellant) merely states. Rather, the Specification, including the claims as filed, describes an algorithm for the claimed methods, including the “calculating” step of “multiplying the acceleration vector by a driving mode vector,” as recited in claims 1, 10, and 14.2 What may not be disclosed is how to obtain an input for the calculating step (i.e., the driving mode vector). The claimed invention is adequately described, even though it may not be enabled due to a person of ordinary skill in the art not being able to obtain the input “driving mode vector” absent undue experimentation.3 That latter issue is the subject of the next rejection we review. The written description rejection of claims 1–20 is reversed.4 2 The dissent analogizes Appellant’s “calculating a target acceleration by multiplying the acceleration vector by a driving mode vector” limitation to “a limitation directed toward the result of ‘achieving perpetual motion . . . by generating perpetual motion.’” Dissent 21. We find that to be a poor analogy. The dissent’s analogy would be apposite if Appellant’s limitation recited, for example, “calculating a target acceleration by generating a target acceleration.” 3 The dissent notes that, in arguing against the written description rejection, Appellant did not cite to the claims as evidence of their own written description and instead cited paragraphs 21–25 of the Specification and Rose. That is true. However, Appellant’s citation to paragraphs 21–25 of the Specification and Rose was a natural response to the Examiner’s enablement-based reasoning in finding that the Specification lacks a written description of the claims. See Appeal Br. 6–7 (quoting Final Act. 9 as stating: “the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved.” (emphasis added)). 4 The Examiner provided additional reasons for rejecting dependent claims 9, 13, and 20. Final Act. 10–11. However, the additional reasons for rejecting these claims carry the same deficiencies. There is no indication that the Examiner considered claims 9, 13, and 20 themselves before finding that the Application fails to provide a written description therefor. Id. And Appeal 2020-002186 Application 15/134,443 6 Rejection 2—Enablement Whether the Specification is enabling is a legal conclusion based upon underlying factual inquiries. Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1354 (Fed. Cir. 1998) (citing In re Wands, 858 F.2d 731 (Fed. Cir. 1988)). “Factors to be considered in determining whether a disclosure would require undue experimentation . . . include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Wands, 858 F.2d at 737. Additionally: When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993). Each of independent claims 1, 10, and 14 recites “calculating a target acceleration by multiplying the acceleration vector by a driving mode the Examiner’s written description findings with respect to claims 9, 13, and 20 again appear premised merely on a lack of enablement. See, e.g., id. at 10 (“Claim 9 defines the invention in functional language by specifying a desired result, such as reducing a ‘driving mode vector’ with respect to a first and second ‘amount, but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved.”). Appeal 2020-002186 Application 15/134,443 7 vector.” Appeal Br. 16–18. Claims 1 and 14 additionally recite “the driving mode vector having a coefficient for each of the time windows.” Id. at 16, 18. The Examiner rejected these claims (and the remaining, dependent claims), stating: [T]the current specification does not appear to disclose how to determine a “driving mode vector”, and does not disclose how a driving scenario is associated with a driving mode vector, at what point in time the driving mode vector is calculated with respect to the steps of the current invention, and how a specific driving scenario is represented and/or defined mathematically. Furthermore, the current specification does not disclose how to calculate the weight coefficients of a driving mode vector, and does not disclose how the weight coefficients vary with respect to a specific driving scenario, and how to calculate a weigh[t] coefficient with respect to a “time window”. With regards to the nature of the invention, the state of the prior art, and the level of predictability of the art, the current invention is directed towards vehicle testing with respect to vehicle control, which requires a clear understanding of how specific information is processed to perform specific vehicle control in the test environment. However, due to the deficiencies of the current specification set forth in the rejection above, one of ordinary skill in the art would not be able to determine a “driving mode vector”, or a “driving mode vector” with respect to “a coefficient for each time window”, and would have to guess how to perform the recited steps of the claims. Based on the level of predictability in the art of vehicle control in a test environment, one of ordinary skill in the art would not be able to accurately guess the missing steps and missing information of the current specification in order to properly make and use the invention. Final Act. 12; see also id. at 13 (considering various Wands factors in the context of the limitation at issue). In other words, according to the Appeal 2020-002186 Application 15/134,443 8 Examiner, a person of ordinary skill in the art would not be able to perform the recited “calculating a target acceleration by multiplying the acceleration vector by a driving mode vector” because such a person would not know, absent undue experimentation, how to obtain the driving mode vector. Appellant argues that, in the Specification, “[t]he driving mode vector is the vector shown as three-by-three in equation 5 and three-by-one in equation 6 (with the lower case ‘k’ symbols) and also the three-by-one vector in equation 5 (with the vector upper case ‘K’ symbols).” Appeal Br. 7. However, neither equation cited by Appellant provides any numerical values for a driving mode vector or examples of how to arrive at actual numerical values. See Spec. ¶¶24–25 (equations (5) and (6)). Although Appellant states that “the coefficients and driving mode vectors are discussed in detail” in paragraphs 21 through 25 (Appeal Br. 7), those paragraphs likewise lack any numerical values for a driving mode vector and do not indicate how to arrive at such values. Spec. ¶¶21–25. In fact, Appellant does not argue that the Specification anywhere discloses numerical values for the driving mode vector(s). Appeal Br. 12– 13. Rather, Appellant argues that “driving mode vector and coefficients are empirically determined values” and that “this empirical data and how to obtain it is already known to those skilled in the art as exemplified by the Rose reference (US 9,174,647), which was incorporated in the present application by reference.” Id. at 12 (citing Rose 3:34–54, 3:62–4:29, Fig. 2).5 In that regard, Appellant argues: 5 Rose issued November 3, 2015, and belongs to Appellant. Rose, at [45], [73]. Rose was “incorporated by reference in entirety” into Appellant’s disclosure. Spec. ¶14. Appeal 2020-002186 Application 15/134,443 9 The driving scenarios are government mandated, so the driving mode vectors will be determined based on the government mandated scenarios, within each time window, with the unitless coefficients “k” associated with a matrix that is multiplied with the acceleration matrix. And, as noted in the Rose reference, those skilled in the art already know how to obtain these empirical values, including values for different time windows (see Rose, col. 4, lines 33–49). Since this empirical data and how to obtain it is already known to those skilled in the art as exemplified by the Rose reference, section 112 enablement is satisfied by discussing empirically obtaining the driving mode vectors and the coefficients with respect to each time window. Id. at 13. But Rose does not mention any “driving mode vector,” let alone disclose how to empirically determine one. See generally Rose. Nor does Rose evince that the determination of a “driving mode vector” was known in the art. Id. The portion of Rose, upon which Appellant relies, states the following: The EER [Energy Economy Rating] response can be achieved by varying a time window that utilizes future target velocity information to calculate the current target acceleration. Longer time windows use more “future” information. Shorter time windows use less future information. The aforementioned EER feature 20, of FIG. 1, also employs an EER calibration (or qualifying) logic 100. For desired EER values less than zero, the time window for calculating the target acceleration is increased, thus including more future target velocity information. This method results in a relatively smoother driving style, anticipating certain vehicle events. For a desired EER value greater than zero: a look-ahead window is kept relatively small, thus including less future information. This has the effect of moving the vehicle more aggressively. This represents a human response characteristic of Appeal 2020-002186 Application 15/134,443 10 someone who is following the car in front of them without sufficient distance for braking. Rose 4:33–49. It was Appellant’s burden to explain how this disclosure from Rose allegedly shows “how to obtain” (Appeal Br. 13) a “driving mode vector” for use in Appellant’s claimed invention. In the Reply Brief, Appellant presents an additional, more nuanced, argument. There, Appellant acknowledges that Rose does not explicitly teach how to obtain a driving mode vector. Reply Br. 7. Rather, according to Appellant, Rose teaches how to obtain a coefficient for a single time window, which, in turn, can be used to obtain a driving mode vector. Id. More specifically, according to Appellant, the person of ordinary skill in the art could empirically determine coefficients for multiple time windows and construct a driving mode vector therefrom. Id. In Appellant’s words: Rose et al. is cited for showing that the empirical determination of the constants (called “k” in the present application for mathematical representation purposes) is known in the art and is based on the EPA requirements and vehicle testing (discussed above, for example Fig. 2 of Rose et al.). Thus, this empirical determination of coefficients is known to one skilled in the art due to Rose et al., but is only employed for calculations involving a single time window being employed in the target acceleration value—thus Rose et al. does not need “vectors” for calculations involving a single time window. As far as “vectors” go, the “driving mode vector” is putting these individual “k” values into a vector form (see equation (6) of the present application) to allow for employing mathematical equations that use matrices. Reply Br. 7. Appellant’s enablement position, which requires assuming without evidentiary support that one skilled in the art would take a number of steps based on Rose to finally arrive at the “k” values used in the present application, is too convoluted to meet its burden “to provide suitable proofs Appeal 2020-002186 Application 15/134,443 11 indicating that the specification is indeed enabling.” In re Wright, 999 F.2d at 1562 (emphasis added). Rather, we agree with the Examiner that “it is unclear what specific element(s) in the Rose reference correspond to the coefficients ‘k’ of the current invention.” Final Act. 3; see also Ans. 5 (“The Examiner asserts that none of the sections of the Rose reference cited by the Appellant above discusses calculating ‘k’ values with respect to generating a ‘driving mode vector’. The Examiner furthermore notes that the words ‘driving mode’, ‘vector’, ‘coefficient’ and any other equivalent words are not used in the Rose reference at all, let alone in the sections cited by the Appellant.”). The lack of enablement rejection of claims 1–20 is affirmed. SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 112(a) written description 1–20 1–20 112(a) Enablement 1–20 Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2020-002186 Application 15/134,443 12 GREENHUT, Administrative Patent Judge, dissenting in part. I join in the majority’s careful and well-reasoned analysis with regard to the enablement rejection. However, I must respectfully dissent from the majority’s decision with regard to the Examiner’s written-description rejection because the majority’s analysis and decision is inconsistent with established procedure, law, and policy. 35 U.S.C. § 112(a) contains a written description requirement that is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc) (cited by MPEP § 2163). “The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed.” Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005) (cited by MPEP § 2163). According to MPEP § 2163.04(I),6 to meet the initial burden of establishing a lack of written description, the Examiner should: (A) Identify the claim limitation(s) at issue; and (B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of 6 No significant relevant changes have occurred in this section since the 9th Edition, 8th revision (Jan. 2018) in effect as of the action from which this appeal was taken. Appeal 2020-002186 Application 15/134,443 13 the invention as claimed in view of the disclosure of the application as filed. The majority, quoting language from In re Wertheim (541 F.2d at 263) similar to that contained in MPEP § 2163.04(I)(B), states: Here, the Examiner has failed to meet that burden, at least because the Examiner’s findings are not based on a consideration of Appellant’s full disclosure. See Final Act. 9 (focusing exclusively on Spec. ¶20 in rejecting claims 1, 10, and 14). Opinion at 4. However, the only specific portion of the original disclosure that the majority expressly faults the Examiner for not considering are the claims as originally filed: There is no indication that the Examiner considered the claims themselves before finding that the Application fails to provide a written description therefor. Opinion at 4. Although there is nothing wrong with the premise that “the claims as filed . . . may provide or contribute to compliance with § 112,” the majority neither explains how the original claims themselves provided adequate written description, nor cites to any evidence or explanation from Appellant demonstrating that. Appellant does not appear to have even advanced such a position.7 It is well-settled that “[i]f a purported description of an invention does not meet the requirements of the statute, the fact that it appears as an original claim or in the specification does not save it. A claim does not become more descriptive by its repetition, or its longevity.” Enzo Biochem, 7 See 37 C.F.R. § 41.37(c)(1)(iv) (“any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). Appeal 2020-002186 Application 15/134,443 14 Inc. v. Gen-Probe Inc., 323 F. 3d 956 (Fed. Cir. 2002); see also MPEP §§ 2163(I)(A), 2163.03(V), and 2161.01(I). I do not believe that the majority could possibly be suggesting that the Examiner must make of record an analysis of every portion of the Specification, including those having little or no relevance to the claim language in question. However, the majority provides no other guidance to the Examiner in regard to this supposed shortcoming in the Examiner’s rejection. Although I do not disagree with the basic premise that a patent application disclosure should be considered in its entirety, and aspects of that disclosure considered in proper context, when rejecting claims under § 112(a) what is important to make express in the record is the Examiner’s analysis of the most relevant portions of the Specification. Paragraph 20 seems like a perfectly logical portion of the Specification for the Examiner to begin in that regard and was cited by the Examiner as early as the Non- Final Action of Sept. 28, 2017 (“Non-Final Action”). Our reviewing court has expressly considered the validity of MPEP § 2163(I)(B) (above) and discussed that provision in detail in Hyatt v. Dudas, 492 F.3d 1365, 1369–71 (Fed. Cir. 2007). There, the court observed: Since the applicant is “in the best position to cheaply provide” information about the purported invention, the PTO’s authority to shift the burden to obtain this information is crucial to ensure that the PTO is not “mak[ing] patentability determinations on insufficient facts and information.” Id. at 1370 (alteration in original) (citation omitted). When the Examiner requested that information from Appellant here, the only additional paragraphs of the Specification that Appellant asked the Examiner to consider in Appellant’s remarks responding the Examiner’s Appeal 2020-002186 Application 15/134,443 15 Non-Final Action were paragraphs 2, 19, and 21–25.8 Applicant Remarks Mar. 28, 2018, pp. 2–5. In response to the Examiner’s Final Action Appellant cited only paragraphs 21–25 of Appellant’s Specification and Rose in the Appeal Brief. Appeal Br. 6–11. All of Appellant’s proffered evidence that there was adequate written description submitted in response to the Examiner’s non-final and final actions appears to have been considered by the Examiner and addressed in detail in the Final Action (Final Action 2–5) and the Examiner’s Answer (Ans. 3–14).9 In reversing the Examiner’s written description rejection, the majority faults the Examiner for “focusing exclusively on Spec. ¶20.” However, the majority makes no mention of the Examiner’s analysis of the other portions of the Specification cited by Appellant or points to any other portion of Appellant’s Specification, other than the claims as originally filed, that the Examiner should have considered. The majority’s actions are inconsistent with the burden-allocating framework of MPEP § 2163.04(I)(B), Hyatt, and 37 C.F.R. § 41.37(c)(1)(iv). 8 Although Appellant cited paragraph 2 of the Specification for incorporating Rose (U.S. 9,174,647) by reference, it appears Appellant may have intended to refer to figure 2 of Rose, which was incorporated in paragraph 14 of Appellant’s Specification. See Appeal Br. 7. 9 Appellant additionally cited paragraphs 2–4, 8, and 19 in the Reply Brief. Reply Br. 3–11. It is noted that Appellant does not appear to have demonstrated any good cause for failing to make arguments pertaining to these paragraphs in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Appeal 2020-002186 Application 15/134,443 16 The majority’s analysis is not only inconsistent with established procedures, it is inconsistent with established law and policy. The majority apparently finds a fault with the Examiner’s legal analysis in the statement: Claims 1, 10, and 14 define the invention in functional language by specifying a desired result, such as estimating [sic calculating] a target acceleration using a “driving mode vector”, but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. Final Act. 9. According to the majority: what may not be disclosed is how to obtain an input for the calculating step (i.e., the driving mode vector). The claimed invention is adequately described, even though it may not be enabled . . . . Opinion at 5. Although, as noted above, the written description requirement is separate and distinct from the enablement requirement, this does not mean that the absence of a certain disclosure relevant to one is de facto irrelevant to the other. Lack of enablement can, in many instances, give rise to a lack of written description. See, e.g., LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) (“Those two requirements usually rise and fall together.”). In other words, determining “how” a particular function is achieved may be relevant to both teaching the skilled artisan how to make and use the invention achieving that function, and to demonstrating that applicants themselves possessed the invention achieving that function. Nevertheless, contrary to what the majority seems to imply, these are not the same inquiries. One can often adequately explain to the skilled artisan how to make and use something without being able to describe it with the particularity necessary to demonstrate possession of it, Appeal 2020-002186 Application 15/134,443 17 for example, by explaining how it operates to achieve its objectives. “The enablement requirement is often more indulgent than the written description requirement.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003); see also Ariad, 598 F.3d at 1352 (“A description that merely renders the invention obvious does not satisfy the [written description] requirement.”). The inability to describe how a device or method operates to achieve a desired result may, particularly in the realm of computer or software-related inventions, be a strong indication that an inventor was not sufficiently in actual or constructive possession of the claimed subject matter as of the application’s filing date. Here, the absence of sufficient disclosure with regard to how the recited calculating step is achieved is what the Examiner correctly regarded as evidence tending to show that Appellant’s written description did not sufficiently demonstrate that Appellant had possession of the subject matter claimed. Final Act. 9–11. Thus, the Examiner employed the proper standards for determining compliance with the written description requirement and the Examiner recognized those standards to be distinct from those of the enablement requirement. Compare Final Act. 9–11, with Final Act. 12–17 (discussing in regard to the enablement requirement, several of the factors discussed in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), albeit without expressly citing Wands). Although the Examiner did not provide an express citation to any relevant authority, the language used by the Examiner in regard to the written description rejection (Final Act. 9–11) appears to almost exactly Appeal 2020-002186 Application 15/134,443 18 mirror that of MPEP §§ 2161.01(I)10 and 2163.03(V) (discussing, inter alia, Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349–50 (Fed. Cir. 2010) (en banc) and Vasudevan Sofware, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015)) (See MPEP 9th Edition, 8th revision (Jan. 2018), in effect as of the action from which this appeal was taken.). In the context of considering claims directed to a method, and product performing that method, which included, among other things, the recited step of “accessing with a computer a plurality of disparate digital databases,” our reviewing court similarly observed, “[t]he more telling question is whether the specification shows possession by the inventor of how accessing disparate databases is achieved.” Vasudevan, 782 F.3d at 683. Shortly after the Examiner’s Final Action, and prior to this appeal being taken, the USPTO published guidance with regard to “Examining Computer-Implemented Functional Claim Limitations for Compliance With 10 DETERMINING WHETHER THERE IS ADEQUATE WRITTEN DESCRIPTION FOR A COMPUTER- IMPLEMENTED FUNCTIONAL CLAIM LIMITATION . . . [O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. Appeal 2020-002186 Application 15/134,443 19 35 U.S.C. 112.” 84 Fed. Reg. 57 (Jan. 7, 2019) (“112 Guidance”) (discussing, inter alia, Ariad and Vasudevan). The USPTO’s 112 Guidance reaffirmed the familiar principles and framework articulated in, in particular, MPEP §§ 2161.01(I). 112 Guidance at 61–62. The USPTO’s 112 Guidance makes clear that, consistent with Ariad and Vasudevan: It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. 112(a) for lack of written description must be made. 112 Guidance at 62 (citation omitted). It is clear that the claims before us are directed to methods and systems that are, or may be, “computer-implemented.” See, e.g., Claims 4, 11, 14. Further, it is clear that Appellant uses functional limitations (“calculating a target acceleration by multiplying the acceleration vector by a driving mode vector”) to define the boundaries of Appellant’s claimed invention. Thus, unlike the majority, I believe the Examiner employed the proper standards, discussed above, for determining compliance with the written description requirement. As the Examiner and the majority determined, Appellant did not adequately describe the driving mode vector in a manner sufficient to enable one skilled in the art to make and use a device, or practice a method, having a computer or other device that calculates a target acceleration based on a “driving mode vector” because Appellant failed to adequately describe how Appeal 2020-002186 Application 15/134,443 20 one ascertains the “driving mode vector.” I fully agree with the majority’s analysis in this regard. However, Appellant’s failure to adequately describe how one ascertains the “driving mode vector” is not only evidence that Appellant’s disclosure fails to fully enable the claimed invention including the calculating step; it is also evidence that Appellant itself was not in possession of the claimed invention as of the filing date. Appellant’s failure to adequately describe how to ascertain the driving mode vector is evidence that Appellant’s disclosure fails to adequately describe how the calculating step is achieved. In other words, Appellant attempts to claim a desired result “calculating a target acceleration by multiplying the acceleration vector by a driving mode vector” without adequately disclosing how that result is achieved because the skilled artisan reading the Specification would not know how to determine the “driving mode vector.” To the extent the majority is suggesting something to the contrary, the mere inclusion of an algorithmic step (“by multiplying the acceleration vector by a driving mode vector”) that one would not know how to perform does not satisfy the legal requirement to demonstrate that Appellant was in possession of the claimed subject matter including the calculating step. Just as a limitation directed toward the result of “achieving perpetual motion” is not saved for purposes of the written description requirement by adding “by generating perpetual motion,” or “with a perpetual motion machine,” a limitation directed to the step of calculating some unknown value is not saved by indicating the calculation is based on some parameter one skilled in the art cannot envisage how to determine. Under the proper standards, Appellant’s failure to adequately describe how “calculating a target acceleration by multiplying the acceleration vector Appeal 2020-002186 Application 15/134,443 21 by a driving mode vector” is achieved is not only evidence that Appellant’s Specification does not enable one skilled in the art to practice the invention claimed without undue experimentation; is also evidence that Appellant itself was not in possession of the claimed subject matter as of the application’s filing date. Accordingly, the Examiner was correct in finding that the Specification also failed to comply with the written description requirement. From the majority’s decision to the contrary, I must respectfully dissent.