KOITO MANUFACTURING CO., LTD.

Patent Trials and Appeals Board

Dec 2, 2021

2020005101 (P.T.A.B. Dec. 2, 2021)

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.
15/771,183 04/26/2018 Naoki TATARA Q239536 2413
65565 7590 12/02/2021
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
CHAI, RAYMOND REI-YANG
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
PPROCESSING@SUGHRUE.COM
SUGHRUE265550@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOKI TATARA, TOSHIHIRO OKAMURA,
and TAKESHI MASUDA
Appeal 2020-005101
Application 15/771,183
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4, 6–14, and 17–19.3
We affirm.

1 The following documents are of record: Specification filed April 26, 2018
(“Spec.”); Non-Final Office Action dated September 12, 2019 (“Non-Final
Act.”); Appeal Brief filed April 10, 2020 (“Appeal Br.”), citations to pages
17–22 being to the Claims Appendix; Examiner’s Answer dated April 28,
2020 (“Ans.”); and Reply Brief filed June 26, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Koito Manufacturing Co.,
Ltd. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2020-005101
Application 15/771,183

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CLAIMED SUBJECT MATTER
The invention “relates to a vehicle illumination device provided in a
vehicle capable of travelling in an automatic driving mode.” Spec. ¶ 1. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A vehicle illumination device configured to
display information relating to automatic driving of a vehicle
toward an outside of the vehicle capable of travelling in an
automatic driving mode, the vehicle illumination device
comprising:
an illumination unit configured to irradiate light toward
the outside of the vehicle and over an entire circumference of
the vehicle in a horizontal direction,
wherein the information relating to the automatic driving
of the vehicle includes information indicating a transition state
of a driving mode of the vehicle, wherein the information
indicating the transition state of the driving mode of the vehicle
indicates a change between an automatic driving mode of the
vehicle, which is a mode in which the vehicle is automatically
controlled by a vehicle system, and a manual driving mode of
the vehicle, which is a mode in which the vehicle is controlled
by a driver of the vehicle.
Appeal Br. 17.
REJECTIONS
1. Claims 1–3, 6–8, 10, 12–14, and 17–19 are rejected under
35 U.S.C. § 103 as unpatentable over James (US 2016/0355192 A1, published
Dec. 8, 2016) and Fujita (JP 2015-71340, published Apr. 16, 2015 (machine
translation)).
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
James, Fujita, and Au (US 2008/0236007 A1, published Oct. 2, 2008).
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3. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
James, Fujita, and Oki (JP 2005-19566, published Aug. 18, 2005 (machine
translation)).
4. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over
James, Fujita, and Burandon (JP 60-174338, published Sept. 7, 1985 (machine
translation)).

OPINION
The Appellant argues the patentability of independent claims 1, 13, and
14. See generally Appeal Br. 10–16. For the reasons discussed below, the
Appellant’s arguments do not persuade us that the Examiner reversibly erred
in rejecting claims 1, 13, and 14, or the claims subject to above-listed grounds
of rejection 2–4.
Claim 1
The Examiner rejected claim 1 over the combination of James and
Fujita. See generally Non-Final Act. 3–4.
James discloses a vehicle configured to switch—either automatically or
responsive to a manual input or request by a vehicle occupant—between
various operational modes. James ¶ 18. Several operational modes are
available and vary in degree of manual involvement. See id. ¶¶ 14–16. For
example, in an unmonitored autonomous operational mode, “one or more
computing systems are used to navigate and/or maneuver the vehicle along a
travel route with no input or supervision required from a human driver.” Id.
¶ 14. By contrast, in a manual operational mode, “a substantial majority or all
of the navigation and/or maneuvering of the vehicle along a travel route is
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performed by a human driver with minimal or no input from a computing
system.” Id. ¶ 16.
James discloses that the vehicle can be configured to output a transition
alert— a running indication of time remaining before the vehicle potentially
switches to a different operational mode—to a vehicle occupant, such as the
driver. James ¶ 83. The transition alert can be output within the vehicle and
have any suitable form, e.g., audial, visual, or haptic. Id. ¶ 84. “[T]he visual
transition alert can be presented by one or more light sources . . . .” Id. ¶ 88.
The Examiner found that James discloses the claim 1 vehicle
illumination device except for “an illumination unit configured to irradiate
light toward the outside of the vehicle and over an entire circumference of the
vehicle in a horizontal direction” (claim 1). See Non-Final Act. 4. The
Examiner found that claim 1’s illumination unit reads on Fujita’s vehicle
illumination system. See id. The Examiner found that the ordinary artisan
would have modified James’s vehicle to include Fujita’s illumination system
so that persons outside the vehicle are made aware of a vehicle’s operational
state, particularly when the vehicle is being driven automatically. See id.
The Appellant argues that the Examiner erred in finding that the James-
Fujita combination discloses (1) “a device which displays, toward the outside
of the vehicle, and ‘over an entire circumference’ thereof, information
indicating the transition state,” and (2) a vehicle illumination device
configured to display “information indicating . . . a change between an
automatic driving mode . . . and a manual driving mode.” Appeal Br. 12
(quoting claim 1). The Appellant also argues that the Examiner relied on
improper hindsight reasoning in finding that the ordinary artisan would have
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combined James and Fujita. Id. at 8–9. We address each of these arguments in
turn.
As to the claim 1 recitation, “an illumination unit configured to irradiate
light . . . over an entire circumference of the vehicle in a horizontal direction,”
the Appellant argues that Fujita’s disclosure of a “display unit [that] can be
visually recognized from any direction of the vehicle” (Appeal Br. 14
(quoting Fujita ¶ 25)) “does not necessarily equate with a display unit that is
capable of irradiating light ‘over an entire circumference of the vehicle in a
horizontal direction’” (id. (quoting claim 1)). In response, the Examiner
explains in detail why the combination of Fujita’s display units would have
been expected to irradiate light “over an entire circumference of the vehicle in
a horizontal direction,” and provides annotated copies of Fujita Figure 9
illustrating that various exterior vehicle components would not block light
emission from Fujita’s display units. See Ans. 6–7.
The Appellant argues that Fujita Figure 9 does not depict any structural
features, including the body of the vehicle, and “it is not even clear from
Fujita’s disclos[ur]e whether the illumination system in Fig. 9 is installed in a
vehicle or whether the system is shown without the vehicle.” Reply Br. 7–8.
The Appellant thus contends that the Examiner’s findings lack evidentiary
support. See id.
The Appellant’s arguments are not persuasive of reversible error. The
Examiner’s findings are not based solely on Figure 9. Rather, the Examiner
also relies on Figures 3–5, which illustrate how display units 100, 110, 120,
130, 140, 150 are positioned around vehicle 1. See Non-Final Act. 4; Fujita
¶¶ 26–28. In addition, the Examiner cites Fujita ¶ 25 (Non-Final Act. 4),
which includes the following description:
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Since the display units 100, 110, 120, 130, 140, and 150 are
used for viewing from outside the vehicle, they are displayed
toward the outside of the vehicle. Two display units are
provided in front of and behind the vehicle 1 and one on the left
and right of the vehicle 1, respectively, so that the display unit
can be visually recognized from any direction of the vehicle 1.
[Fujita ¶ 25.]
When considering Fujita’s entire disclosure, the ordinary artisan would
have understood that Figure 9 depicts the combination of display unit
configurations illustrated in Figures 3–5 and described in paragraphs 25–28.
Compare Fujita ¶ 26 (“FIG. 3 . . . Two display units 100, 110 are provided at
the upper position of the windshield of the vehicle 1 . . . .”), ¶ 27 (“FIG. 4 . . .
Two display units 120, 130 are provided at the upper position of the rear
window of the vehicle 1 . . . .”), and ¶ 28 (FIG. 5 . . . The direction indicated
by the arrow D 1 is the front direction of the vehicle. A display unit 140 is
provided at the upper position of the rear seat left door glass of the vehicle 1 .
. . . Similarly, a display unit 150 is provided at the upper position of the rear
seat right door glass of the vehicle 1 . . . .”), with ¶ 42 (“FIG. 9 is a diagram
for explaining the first display mode of the display unit for the entire vehicle.
The direction indicated by the arrow D 1 is the front direction of the
vehicle.”), and Fig. 9 (illustrating display units 100, 110 at the vehicle’s front
per arrow D 1, display units 140, 150 on left and right sides, and display units
120, 130 toward the vehicle’s back per arrow D 1).
We now turn to the claim 1 recitation, “information indicating . . . a
change between an automatic driving mode . . . and a manual driving mode.”
The Appellant argues that James’s transition alert provides a driver “with a
countdown or timer for when the vehicle may switch between operational
modes.” Appeal Br. 12; see also Reply Br. 5 (“James does not clearly and
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explicitly disclose that after the alert is presented, the vehicle definitely will
continue on its already determined path of switching driving modes.”). The
Appellant argues that claim 1 requires a configuration in which the displayed
information “indicate[s] that the vehicle is currently in the process of
changing or will soon change.” Appeal Br. 12. “In other words, the displayed
information according to claim [1] ‘indicates a change,’ while James merely
discloses displaying information indicating a hypothetical event.” Id.
The Appellant’s argument is not persuasive because, as indicated by the
Examiner, claim 1 requires an illumination device configured to display
information indicating a change between automatic and manual driving
modes, but does not require that the change actually take place. See Ans. 5. In
this regard, we note that the Appellant has not identified, nor do we find, any
Specification disclosure that supports the Appellant’s more narrow
interpretation of claim 1 as requiring that the illumination device display
information regarding a vehicle’s transition state only if the vehicle will
necessarily complete the transition from one driving mode to another.
The Appellant also argues that the Examiner relied on improper
hindsight reasoning in determining that the ordinary artisan would have
combined James and Fujita in a manner resulting in the claimed invention.
Appeal Br. 14. Quoting Fujita’s statement, “it is desirable to be able to
recognize in what manner the driving state is in detail from the outside”
(Fujita ¶ 3), the Examiner explains that the ordinary artisan would have
modified James to include Fujita’s vehicle illumination system, as “this would
allow the transitional alert system to not only display transitional alert to the
occupants of the vehicle, but also display transitional alert to the pedestrians,
and those outside of the vehicle; so that everyone is aware of the operational
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state of the autonomous vehicle for safety reasons.” Ans. 8. In response, the
Appellant argues that, “even though Fujita may disclose advantages of
knowing a present driving state of a vehicle, the reference fails to disclose
advantages of knowing a future driving state of a vehicle.” Reply Br. 9.
The Appellant’s argument is not persuasive because it fails to address
the Examiner’s finding that James recognizes the benefits of displaying
transitional information—i.e., information relating to the future driving state
of a vehicle—and Fujita is relied upon for a teaching of displaying such
information toward the outside of the vehicle. See Ans. 8.
In sum, for the reasons discussed above, the Appellant has not
persuaded us of reversible error in the rejection of claim 1. Because the
Appellant relies on the same arguments in support of patentability of
dependent claims 2–4, 6–12, and 17–19 (see Appeal Br. 16), we sustain the
rejections of claims 1–4, 6–12, and 17–19.
Claims 13 and 14
The Appellant argues that claims 13 and 14 are patentable “for at least
the same reasons as claim 1.” Appeal Br. 15. The Appellant’s argument is not
persuasive for the reasons discussed above.
The Appellant argues that the Examiner reversibly erred in finding that
James discloses “information indicating that the vehicle is travelling in a fully
automatic driving mode in a state where no occupant exists in a driver’s seat”
(claim 13) and “information indicating that the vehicle is travelling in a fully
automatic driving mode in a state where an occupant exists in the vehicle”
(claim 14). Appeal Br. 9. The Appellant acknowledges that James “discloses
that some of its driving modes may require ‘no input or supervision [] from a
human driver,’” but argues, “[t]he reference is silent about any information or
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determination of whether a driver or occupant is present in a vehicle.” Id. at
15.
The Specification discloses four possible driving modes: fully
automatic; advanced driving support; driving support; and manual. Spec. ¶ 41.
“In the fully automatic driving mode, the vehicle system 2 automatically
performs all of the travelling controls of the steering control, the brake control
and the accelerator control, and the driver is not in a state where it is possible
to drive the vehicle 1.” Id. “[T]he vehicle control unit 3 generates a mode
signal indicating a driving mode of the vehicle 1 and transmits the mode
signal to the illumination control unit 43.” Id. ¶ 34. “Sensor 5 is configured to
. . . output the travelling condition information to the vehicle control unit 3.”
Id. ¶ 35. [S]ensor 5 may further include a seating sensor configured to detect
whether a driver is sitting on a driver’s seat, a face orientation sensor
configured to detect a direction of a driver’s face, . . . [and] a human sensor
configured to detect whether a person is inside a vehicle . . . .” Id. Based on
the Specification, we interpret the claim 13 language, “a fully automatic
driving mode in a state where no occupant exists in a driver’s seat,” as
encompassing driving modes in which an occupant is in the vehicle, but not in
the driver’s seat. We interpret the claim 14 language, “a fully automatic
driving mode in a state where an occupant exists in the vehicle,” as
encompassing driving modes in which (1) an occupant is in the vehicle, but
not in the driver’s seat, and (2) an occupant is in the driver’s seat but not
prepared to drive, for example, the driver is asleep or distracted, as detected
by the face orientation sensor (see Spec. ¶ 35).
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James discloses a system that can detect whether a vehicle occupant
has provided an indication of increased manual involvement. James ¶ 103.
James discloses that a vehicle occupant can provide such indication “through a
touch screen, button, switch or other in vehicle user interface element[, or] . . .
by speaking.” Id. Thus, James discloses a fully automatic driving mode in
which an occupant is in the vehicle, but not in the driver’s seat. James further
discloses that “[r]esponsive to detecting that a user has not provided such an
indication (e.g., the driver is asleep, distracted, etc.), the vehicle can be caused
to switch from the current operational mode to the special operational mode.”
Id. ¶ 104. “‘Special operational mode’ means that, if a requested human driver
action is not taken or confirmed within a predetermined amount of time, the
navigation and/or maneuvering of the vehicle can be controlled by one or
more computing systems to implement one or more safety maneuvers.” Id.
¶ 17. This is a description of a fully automatic driving mode in which an
occupant is in the driver’s seat, but not prepared to drive. In other words, we
find that the above descriptions in James support the Examiner’s findings that
James discloses “a fully automatic driving mode in a state where no occupant
exists in a driver’s seat” (claim 13), and “a fully automatic driving mode in a
state where an occupant exists in the vehicle” (claim 14).
Fujita discloses that, “in the case of an automatic driving vehicle or an
autonomous driving vehicle that automatically performs not only automatic
follow-up but also from start to stop, it is desirable to be able to recognize in
what manner the driving state is in detail from the outside.” Fujita ¶ 3. Given
this disclosure and the above disclosures in James, we are not convinced that
the Examiner reversibly erred in finding that the ordinary artisan would have
modified James to include Fujita’s illumination system, thereby providing an
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illumination unit configured to display toward an outside of the vehicle
information that a “vehicle is travelling in a fully automatic driving mode in a
state where no occupant exists in a driver’s seat” (claim 13) or that a “vehicle
is travelling in a fully automatic driving mode in a state where an occupant
exists in the vehicle” (claim 14).
In sum, for the reasons discussed above, the Appellant has not
persuaded us of reversible error in the rejection of claims 13 and 14, and we
sustain the rejection as to these claims.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 6–8,
10, 12–14,
17–19
103 James, Fujita 1–3, 6–8,
10, 12–14,
17–19

4 103 James, Fujita, Au 4
9 103 James, Fujita, Oki 9
11 103 James, Fujita,
Burandon
11
Overall
Outcome:

1–4, 6–14,
17–19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED