Kyu Hwang Cho

Patent Trials and Appeals Board

Jun 29, 2021

2021000048 (P.T.A.B. Jun. 29, 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.
14/332,040 07/15/2014 Kyu Hwang Cho 3232
62957 7590 06/29/2021
KYU HWANG CHO
4384 Burgess Dr.
Sacramento, CA 95838-4901
EXAMINER
EDWARDS, TYLER B
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
06/29/2021 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):
chmyr@naver.com
denikdebro@gmail.com
hwang@DriveOnPay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYU HWANG CHO
Appeal 2021-000048
Application 14/332,040
Technology Center 2400
Before ERIC B. CHEN, JAMES B. ARPIN, and MICHAEL J. ENGLE,
Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 27–34, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
TECHNOLOGY
The application relates to mirrorless driving of an automotive vehicle
using digital image sensors and a touchscreen. Spec. Title.
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ILLUSTRATIVE CLAIM
Claim 27 is the only pending independent claim and is reproduced
below with certain limitations at issue emphasized:
27. A mirrorless car, wherein the improvement is characterized
by roadworthy enablers, comprising:
a set of lens balls;
a plurality of digital image sensors embedded into the lens balls;
and a set of brackets secured to the lens balls
to actuate all-around movements thereof,
wherein the improvement comprises
activation by voice and finger actions;
a haptic touchscreen mounted enabling
a user to control the activation;
digitized image data generated
from the digital image sensors;
transmitting the image data to the touchscreen,
characterized in that, a set of algorithmic presets
determines a sequence of priority of:
capturing the image data;
streaming the transmitted image data
to the touchscreen;
and overriding the said presets to
meet said user’s needs to alter an order of
displaying the image data viewable on-screen.
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REFERENCES
The Examiner relies on the following references:
Name Number Date
Grigsby US 2009/0231158 A1 Sept. 17, 2009
Huebner US 2012/0262580 A1 Oct. 18, 2012
Johnson US 7,697,028 B1 Apr. 13, 2010
Schmid US 2008/0036878 A1 Feb. 14, 2008
Stimel US 2012/0062741 A1 Mar. 15, 2012
REJECTIONS
The Examiner makes the following rejections:
Claims Statute Basis Final Act.
27–34 § 112(b) Indefiniteness 8
27, 34 § 103 Grigsby, Stimel, Johnson 11
28–32 § 103 Grigsby, Stimel, Johnson, Schmid 17
33 § 103 Grigsby, Stimel, Johnson, Huebner 24–25
ISSUES
1. Did the Examiner err in concluding that the following terms
render each pending claim indefinite?
Claim Term
27 “roadworthy enablers”
27 “all-around movements thereof”
27 “overriding the said presets”
28 “said data streams”
29 “such archived data”
30 “multi-channel uses”
31, 32 “synchronizing”
31 “by a factor of number of finger pressings thereon”
32 “the spherical configuration”
32 “split . . . windows”
32 “voice command and finger actions”
32 “embedding servomechanism thereto”
33 “merging split windows into one or more”

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2. Did the Examiner err in finding the combination of references
teaches or suggests “roadworthy enablers” and “lens balls,” as recited in
claim 27?
3. Did the Examiner err in finding a person of ordinary skill in the
art would have had a rationale for combining the references, including any
errors due to the references teaching away, being unpredictable, or being
rendered inoperable for their intended purpose?
ANALYSIS
Indefiniteness
Claim 27
Independent claim 27 recites “a set of algorithmic presets determines
a sequence of priority” and “overriding the said presets to meet said user’s
needs to alter an order of displaying the image data viewable on-screen.”
The Examiner states, “The ‘presets’ described include limitations such as
‘sequence of priority of capturing the image data.’ It is unclear what is
meant by overriding presets such as these.” Final Act. 9. However, we are
not persuaded this would have been unclear to a person of ordinary skill in
the art. As Appellant explains, “[o]verriding the presets means the default
setting shown on Figs.1,2,3,4,5,6 is paused at a user’s choice to change
display priority in order to enable on-screen display of the image data
generated but not displayed on-screen by default setting.” Appeal Br. 38
(Dec. 30, 2019).
Claim 27 further recites, “A mirrorless car, wherein the improvement
is characterized by roadworthy enablers, comprising: . . . .”
The Examiner determines that “the recitation of an apparatus being
‘roadworthy’ or comprising ‘roadworthy enablement’ is akin to that of an
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element being ‘capable of’ performing a function, and is not a positive
limitation, and as such, does not constitute a limitation in any patentable
sense.” Ans. 24 (citing In re Hutchison, 154 F.2d 135 (CCPA 1946)), 29.
Appellant disagrees:
Roadworthiness is not a claim limitation but is an attribute of the
functional integrity of a mirrorless car . . . .
The lexicographic definition of the word “ roadworthy “ is safe
and suitable for using on a road or fit for use on the road,
according to Merriam Webster.
Appeal Br. 10. Appellant also argues, “The claim recites a capability of the
claimed structure, in which case the claim is not indefinite.” Id. at 36 (citing
UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816 (Fed. Cir. 2016)).
We are persuaded that the Examiner errs in concluding “roadworthy
enablers” renders claim 27 indefinite. Claim 27 is written in a modified
version of a Jepson format that recites (1) a preamble describing what was
conventional or known (“A mirrorless car”); (2) a transitional phrase
(“wherein the improvement is characterized by”); and (3) the elements that
constitute what Appellant considers as new or improved (“roadworthy
enablers, comprising: . . . ”).1 See 37 C.F.R. § 1.75(e); MPEP § 1824 (citing
PCT Rule 6); Ex parte Jepson, 1917 C.D. 62, 243 O.G. 525 (Ass’t Comm’r
Pat. 1917). Even if the Examiner were correct that “roadworthy enablers” is
akin to meaning “capable of” being roadworthy, Appellant is correct that
such a capability of the claimed structure (e.g., a “mirrorless car” with “lens
balls”; “digital image sensors”; and “brackets”) does not automatically

1 Claim 27 having two transitional phrases (“the improvement is
characterized by” and “the improvement comprises”) adds some confusion
about whether the items in the second list are intended to be “roadworthy
enablers” like the first list or rather are a separate improvement.
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render the claim indefinite. The term “roadworthy enablers” is very broad
and may well be satisfied by almost any car’s “lens balls” pointed at a road,
but, as the Federal Circuit has said, “breadth is not indefiniteness.”
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir.
2005) (quotation omitted). “Merely claiming broadly does not . . . prevent
the public from understanding the scope of the patent.” Ultimax Cement
Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir.
2009). The Examiner fails to persuade us that a person of ordinary skill in
the art would not have understood “roadworthy enablers” or that the term
should be given no patentable weight.
Claim 27 also recites “a set of brackets secured to the lens balls to
actuate all-around movements thereof.” The Examiner concludes that “[i]t is
unclear . . . what is moving, and whether it be the lens balls, sensors, or
brackets.” Final Act. 8. Appellant argues Figures 9–11 and paragraphs 96–
98 of the Specification “explain[] how brackets and lens balls work
together.” Appeal Br. 37. However, the cited portion discusses two
different movements, one for the bracket and one for the lens ball: “the
bracket can swivel back and forth within 270° and the lens ball itself can
rotate 360° on its vertical axes.” Spec. ¶ 96. Thus, the Specification leaves
it unclear whether the claim’s movements “thereof” refer to movements of
the brackets (e.g., “swivel” 270°), lens balls (e.g., “rotate” 360°), or both.
Accordingly, we sustain the Examiner’s indefiniteness rejection of
claim 27 and of its dependent claims 28–34.
Claim 28
Dependent claim 28 recites “traffic image data are generated”;
“prioritizing said data streams”; and “enabling said data streams.”
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The Examiner determines that “said data streams” lacks antecedent
basis and therefore renders claim 28 indefinite. Final Act. 9.
According to Appellant, “the preamble contains the phrase ‘traffic
image data’ that is predestined to flow either in a burst or stream mode.”
Appeal Br. 24. Although the Examiner suggested amending the claim to
recite “traffic image data streams are generated” (Final Act. 4), Appellant
argues that “data is generated, not data stream, and transmitted through a
media and forms a flow: in a burst or stream mode” and therefore amending
the language to “traffic image data streams are generated” is not appropriate.
Appeal Br. 24. Appellant then states, “There is a reasonable likeliness that
‘prioritizing said traffic image data, when streaming,’ may replace ‘said data
streams’.” Id.
Given that Appellant has not yet amended claim 28 on this issue, we
agree with the Examiner. In patent claims, “said” generally indicates that
the object it modifies was previously introduced in the claim. Thus, a type
of uncertainty called a lack of antecedent basis can arise when a claim refers
to “said element” without first introducing such an element (e.g., by reciting
“an element”). See generally MPEP § 2173.05(e); Slimfold Mfg. Co. v.
Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Here, although
“traffic image data” is previously introduced in claim 28, “streams” of such
traffic image data are not. Instead, claim 27, from which claim 28 depends,
previously introduced “streaming” different data (“digitized image data
generated from the digital image sensors”). Thus, a person of ordinary skill
in the art would not have been reasonably certain what “streams” or “data”
are referenced when claim 28 recites “said data streams.” Until the
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antecedent basis problem is corrected, we agree with the Examiner that
claim 28 is indefinite.
Thus, we sustain the Examiner’s indefiniteness rejection of claim 28.
Claim 29
Claim 29 recites “populating such archived data as from on-board
memory, cloud-based storage and V2V shared data.”
The Examiner concludes that “such archived data” lacks antecedent
basis. Final Act. 9. Appellant states, “Examiner makes sense. The phrase
‘such archived data as’ in the body of claim 29 has to be amended to
‘archived data’.” Appeal Br. 24.
Given that such amendment has not yet been made, we sustain the
Examiner’s indefiniteness rejection of claim 29.
Claim 30
Claim 30 recites “both a video-based EDR (Event Data Recorder) and
a rear-view backup camera are combined to be incorporated for multi-
channel uses into a haptic touchscreen.”
The Examiner determines, “It is unclear what is meant by ‘multi-
channel uses’ or even what is being described as a ‘channel.’” Final Act. 9.
Appellant states, “Appellant believes a reasonable likeliness is to delete the
phrase of ‘multi-channel uses’.” Appeal Br. 25.
Given that such amendment has not yet been made, we sustain the
Examiner’s indefiniteness rejection of claim 30.
Claim 31
Claim 31 recites “synchronizing said virtual signs with out-of-sight
physical roadside signs.”
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The Examiner determines, “It is unclear what is meant by
‘synchronizing’ in this limitation.” Final Act. 9.
Appellant describes synchronizing in the context of mixed reality
(“MR”):
In general, MR-enhanced features are focused on
synchronization of reality and virtual reality. The said
synchronization would not be a new territory to a [person of
ordinary skill in the art]. When a driver is at the wheel, said
driver can hardly see a mile ahead depending on weather, road
conditions and traffic, etc. and would like to see a road sign that
happens to be out of sight for now, popping up a virtual sign on-
screen that might have been augmented with reality. See
Spec.[0096],[0097]. See Fig.6.
Without a synchronization process, this MR-enhanced feature
cannot be enabled. A [person of ordinary skill in the art] would
have known that syncing both virtuality and reality in real time
is central to MR-enhanced feature. See Spec. [0100]
Appeal Br. 41–42. Elsewhere, Appellant explains that “a car driver cannot
see a physical road sign a couple of miles away, but a mirrorless car driver
can see a virtual sign on-screen ahead of time and from some miles away”
and provides an example of a “virtual sign” for “a 25-mile speed limit”
improving road safety. Amendment 10 (Sept. 15, 2018).
The Specification does not appear to use any variant of the term
“synchronize,” but the cited portion does disclose an example of a “virtual”
overlay: “virtual delineator posts will show up on the screen to warn or alert
a driver, if he or she tailgates or gets closer to a vehicle in the next lane.”
Spec. ¶ 100. Elsewhere, the Specification also discloses overlays
specifically for virtual road signs:
The mixed reality may comprise an overlay of graphic images
over real-time street scenes and/or traffic scenes displayed on a
touchscreen. Self-generated on-screen graphic alerts and
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electronic voice warnings plus virtual on-screen road signs might
be an urgent necessity to raise awareness of driving safety . . . .
Spec. ¶ 47.
We agree with Appellant that this limitation does not render claim 31
indefinite. Although “synchronizing” is a broad term, “breadth is not
indefiniteness.” SmithKline, 403 F.3d at 1341 (quotation omitted). The
Examiner fails to persuade us that a person of ordinary skill would not have
understood “synchronizing” in the context of the claims and the rest of the
Specification. For instance, in Appellant’s example of a 25 mph speed limit
where the physical sign cannot be seen, road safety might be increased by
showing a virtual sign with the same speed limit as the physical sign (i.e.,
synchronized) rather than no virtual sign or a virtual sign with the wrong
speed limit. See Amendment 10.
Claim 31 further recites “magnifying . . . by finger actions and by a
factor of number of finger pressings thereon.”
The Examiner determines, “It is unclear what is meant by ‘by a factor
of number of finger pressings’ in this limitation, and what is being modified
‘by a factor.’” Final Act. 9.
Appellant points to the caption in Figure 6, “Enlarge the highlighted
spot by a factor of 2, 4, 6 by tapping once, twice, thrice.” Appeal Br. 42–43.
The Specification likewise discloses: “If the driver wants to see a
highlighted view, he will circle around a desired spot, and tap once, twice or
thrice to get an enlarged view by a factor of 2, 4 and 6.” Spec. ¶ 85.
Given this description in the Specification and figures, we agree with
Appellant that this limitation does not render claim 31 indefinite.
Nevertheless, claim 31 depends from claim 27 and therefore is indefinite
based solely on its dependency from an indefinite base claim.
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Accordingly, we sustain the Examiner’s indefiniteness rejection of
claim 31.
Claim 32
Claim 32 recites activating “split . . . windows.” We agree with
Appellant that “split windows” are adequately disclosed in the Specification
and shown in the figures such that a person of ordinary skill in the art would
have reasonably understood their meaning. Appeal Br. 43 (citing Figs. 1, 3–
6); see also Spec. ¶¶ 55, 85.
Claim 32 also recites activating at a user’s “voice command and
finger actions.” The Examiner determines, “It is unclear whether this is
referring to the need for both actions and commands, or if this statement is
meant to imply voice commands or finger actions.” Final Act. 10 (emphasis
added). Appellant argues that “whether this is referring to both actions or
not is insignificant and meaningless.” Amendment 11. However, to a car
manufacturer whose car only accepts voice command or finger actions, this
distinction from voice command and finger actions could mean the
difference between infringement or not. Here, we disagree with the
Examiner’s conclusion that “and” might mean “or.” “Although we have
construed ‘and’ to mean ‘or’ when the specification so requires, those cases
. . . . have a common theme that . . . the specification compels a disjunctive
construction for ‘and,’” such as when “and conjoins mutually exclusive
possibilities.” Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949–50
(Fed. Cir. 2016) (citation and quotation omitted). The Examiner has
provided no reason why “and” should be construed as “or.” Thus, “voice
command and finger actions” is clear and definite. To the extent Appellant
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intended to claim activating at a user’s “voice command or finger actions”
rather than requiring both, Appellant should amend the claim to say so.
Claim 32 further recites “synchronizing real-time traffic scenes.” We
are not persuaded this limitation renders claim 32 indefinite for the same
reasons discussed above with respect to the term “synchronizing” in claim
31.
The Examiner and Appellant also discuss whether “characterized by
roadworthy enablers” renders claim 32 indefinite. Final Act. 10; Appeal
Br. 43–45. However, this limitation appears only in independent claim 27,
not separately in dependent claim 32.
Claim 32 also recites “embedding servomechanism thereto.” We
agree with the Examiner that “[i]t is unclear what the servomechanism is
being embedded upon.” Final Act. 10. Appellant argues that a person of
ordinary skill in the art “would have known servomechanism (control) is
embedded to the touchscreen.” Appeal Br. 48. However, in the context of
claim 32, it is not reasonably clear what “thereto” refers to. To the extent
Appellant wants it to be the touchscreen, Appellant should amend the claim
to say that.
Finally, claim 32 recites “the spherical configuration.” The Examiner
concludes that this limitation lacks antecedent basis. Final Act. 10.
Appellant argues that a person of ordinary skill in the art “would have
known that it is contextual to see lens balls are directed to the spherical
configuration.” Appeal Br. 43; see also Amendment 10 (“lens balls are the
spherical configuration”). We agree with the Examiner. Although it is
possible that “the spherical configuration” might refer to the lens balls, that
is not reasonably certain. For example, the Specification does not appear to
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use the term “configuration” outside of the claims and claim 32 does not
elsewhere refer to any “configuration.” There are many potential ways to
clarify this depending on Appellant’s desired intent, such as “the lens balls
having a spherical configuration” or even simply saying “the lens balls.”
Accordingly, we sustain the Examiner’s indefiniteness rejection of
claim 32.
Claim 33
Claim 33 recites “merging split windows into one or more.”
The Examiner determines that “it is unclear what is meant by ‘split
windows,’ and additionally, it is unclear how windows are merged into more
than one window.” Final Act. 10; see also Ans. 31.
Appellant argues that Figures 1 and 3–6 illustrate “three split
windows” that “can merge into one or two by finger action.” Appeal Br. 49.
For example, the Specification discloses:
Dragging left or right in any window will gradually expand an
on-screen image by stages to finally merge the adjoining window
to get a 2-window-wide view at maximum. Both driver’s side
view and passenger’s side view will only merge the center
window, but the center window for rearview will do that either
way.
Spec. ¶ 85.
We agree with Appellant that in view of the figures and Specification,
a person of ordinary skill would have reasonably understood what it means
to merge split windows into one or more, such as merging three split
windows into either one window or two windows.
Nevertheless, claim 33 depends from claim 27 and therefore is
indefinite based solely on its dependency from an indefinite base claim.
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Accordingly, we sustain the Examiner’s indefiniteness rejection of
claim 33.
Claim 34
The Examiner rejects claim 34 as “indefinite for failing to remedy the
deficiencies of the claims from which it depends.” Final Act. 11. Appellant
does not introduce a separate substantive argument for claim 34 and instead
notes that “the alleged deficiencies of claim 27 are being disputed.” Appeal
Br. 50. Because we affirmed the indefiniteness rejection of claim 27 above,
we sustain the Examiner’s indefiniteness rejection of claim 34 based on its
dependency from indefinite claim 27.
We also note that claim 34 recites “the spherical configuration,”
which we affirmed as rendering claim 32 indefinite. The Examiner and
Appellant may wish to address that limitation in claim 34 as well.
Obviousness
Claims 27 & 34
Claim 27 recites in part:
27. A mirrorless car, wherein the improvement is characterized
by roadworthy enablers, comprising:
a set of lens balls;
a plurality of digital image sensors . . . ;
and a set of brackets secured to the lens balls . . . .
According to Appellant, “[t]he critical and central issue of the claimed
invention is ROADWORTHY ENABLERS involving lens balls embedded
with digital image sensors on dual-axis brackets, a touchscreen, and a
plurality of digital image sensors embedded into a vehicular body. The
roadworthy enablement is not found in the Examiner-referenced prior art
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teachings.” Amendment 1. Appellant argues that the “Examiner repeatedly
failed to proffer a sustainable basis for the benefit of roadworthy enablement
of prior art references.” Appeal Br. 9.
We are not persuaded of Examiner error. The word “comprising”
means that the subsequent elements (e.g., “lens balls”; “digital image
sensors”; and “brackets”) are a non-exhaustive list of components of
“roadworthy enablers.” See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997). The Examiner finds that Grigsby teaches
roadworthy enablers comprising “cameras mounted on a vehicle” whose
output is shown on a touchscreen display. Final Act. 11–12 (citing Grigsby
Figs. 3, 6, 7, ¶¶ 32, 45). The Examiner further finds that Stimel teaches
brackets securing cameras to cars in place of mirrors and Johnson teaches
that cameras on cars can be “generally dome shape,” which the Examiner
determines teaches or suggests “lens balls.” Final Act. 14 (citing Stimel
¶¶ 23, 24, 50, 51, Figs. 8A–C), 15 (citing Johnson 2:21–34, Figs. 2, 3).
Thus, the Examiner finds that the references teach or suggest all of the
limitations that claim 27 says “comprise” roadworthy enablers.
Appellant also argues that Grigsby’s “slideshow is intended for static
home computer or home TV, when a user is not driving at the wheel.”
Appeal Br. 18. According to Appellant, a person of ordinary skill in the art
“wouldn’t believe watching a video slideshow at the wheel is roadworthy,
unless technological efficacy is provided.” Id. at 19. “Unless the video
slideshow provides technological details inclusive of quantifiers of
roadworthiness enablers and FPS [i.e., frames per second], it will cause to
distract a driver’s attention to risk fatality of the driver as well as other
drivers and passengers nearby.” Id. (footnote omitted).
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We are not persuaded of error by this argument. For claim 27’s
“transmitting,” “capturing,” and “overriding” limitations, the Examiner finds
Grigsby discloses its “slideshow” rotating through the available cameras:
If the driver specified that only locally-generated video feeds are
to be considered, the driver may, by selecting Cycle Local
Cameras soft button 158, immediately begin what amounts to a
video “slideshow” of the locally-generated video feeds. Each
locally-generated video feed will appear on the in-vehicle display
for a limited period of time (on the order of 1-2 seconds) before
being automatically replaced by the next locally-generated video
feed.
Grigsby ¶ 50; Final Act. 13–14. The driver can adjust the length of each
display cycle. Grigsby ¶ 50. In addition to cycling through all cameras,
Grigsby discloses an alternate embodiment in which “a driver might want to
limit the view directions to be considered so that the video slideshow would
be limited to video feeds from vehicle-mounted cameras pointing in a
particular direction (i.e., front, rear, left, right) relative to the direction of
travel of the vehicle.” Id. ¶ 51 (emphasis added).
Thus, Grigsby’s slideshow is not limited to home use as Appellant
contends because Grigsby states a “driver” can cycle through “vehicle-
mounted cameras” based on “the direction of travel of the vehicle.” Grigsby
¶¶ 50–51. This further persuades us that the Examiner shows Grigsby
teaches or suggests “roadworthy enablers” because Grigsby’s inventions are
meant to be used in a car on the road. Similarly, Johnson discloses
“providing a steady image stream during vehicle motion” (Johnson 1:21–24)
and Stimel discloses “the use of cameras in lieu of sideview [mirrors] on the
outside of a truck cab,” including “an object detection/warning system that
notifies the driver of objects and other obstructions in the path of the truck”
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(Stimel Abstract). Thus, contrary to Appellant’s argument, each of Grigsby,
Johnson, and Stimel is intended for use on moving, roadworthy vehicles.
More generally, although Appellant argues that there are “structural
differences” between the claimed roadworthy enablers and the prior art (e.g.,
Amendment 7; Appeal Br. 9), Appellant does not adequately identify what
those structural differences are or why they are different.
Appellant further argues that the “Examiner failed to proffer intrinsic
and extrinsic evidence or empirical data to substantiate his self-serving prior
art is compatible with each other to motivate the successful combination of
the prior teachings.” Appeal Br. 10–11. Appellant’s arguments against
combining the references take a variety of forms which we address below.
First, Appellant points to the “interdisciplinary” nature of the
technology as “a big obstacle” for a person of ordinary skill in the art.
Appeal Br. 21, 10. Yet the interdisciplinary technologies that Appellant
points to for its own invention, such as “telematics” encompassing
“telecommunications, vehicular technologies, for instance road
transportation, road safety, electrical engineering (sensors, instrumentation,
wireless communications, etc.), and computer science (multimedia, Internet,
etc.),” are the same technologies addressed by the applied references. Id. at
1 n.1. For instance, Grigsby is titled “guided video feed selection in a
vehicle-to-vehicle network,” which also entails vehicles with cameras
communicating wirelessly over a network. Similarly, Stimel discloses “the
use of cameras in lieu of side view [mirrors] on the outside of a truck cab”
such that “images can be captured” and “displayed upon monitors . . . within
the dash area of the driver.” Stimel Abstract. Johnson likewise discloses
using “cameras” for “recording information outside a vehicle and delivering
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such information to a remote location.” Johnson Abstract. Appellant fails to
explain sufficiently why the Examiner errs in finding a person of ordinary
skill in the art would have had reason to combine the teachings of references
already in the same interdisciplinary field as claim 27.
Second, Appellant’s arguments against the “predictability” of the
combination fail for the same reason. E.g., Appeal Br. 10–11, 20. Appellant
fails to adequately explain what, if anything, about the references’ teachings
or their combination would make the results unpredictable. See also
Ans. 26.
Third, the same is true for Appellant’s arguments that the combination
of the references’ teachings “would render a prior art technology
unsatisfactory for its intended purpose seems to persuasively point toward
the use of hindsight.” E.g., Appeal Br. 27. Appellant has not adequately
explained what intended purpose of which reference would be unsatisfied
and why. See also Ans. 26.
To the extent Appellant relies on limitations found in withdrawn
claim 13 (e.g., Appeal Br. 26), claim 27 neither depends from claim 13 nor
recites its further limitations. Thus, such limitations from claim 13 are not in
claim 27 and do not distinguish claim 27 from the prior art. See, e.g., Aro
Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961)
(“the claims made in the patent are the sole measure of the grant”).
Nevertheless, we are persuaded that the Examiner has not yet shown
whether or why Johnson teaches “lens balls.” For the “lens balls” limitation,
the Examiner relies on Johnson’s disclosure of “a generally dome shape”
housing containing multiple cameras. Final Act. 15 (citing Johnson 2:21–
34, Figs. 2–3).
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Figures 2 and 4 of Johnson are reproduced below:

Figure 2 of Johnson depicts a dome-shaped housing 20 with a plurality of
cameras 30 mounted inside. Johnson, 5:4–9, 4:34–37. Figure 4 of Johnson
depicts a cross-section of the same dome-shaped housing with cameras. Id.
at 4:39–40. As can be seen, Johnson’s dome shape consists of the top third
or half of a sphere. As shown in Figure 4, although the top of Johnson’s
dome shape is rounded, the bottom is flat.
Appellant asks, “What is the structural difference between Johnson’s
‘generally a dome’ and Appellant’s lens ball?” and “What is the correct
definition of Johnson’s generally a dome? Is it a dome or a dome-shaped
cone, an orb, or a ball?” Appeal Br. 59.
We are persuaded the Examiner has not adequately explained how
Johnson’s flat-bottomed dome shape teaches a ball, as required by claim 27.
See Figs. 9–11. Accordingly, we do not sustain the Examiner’s obviousness
rejection of claim 27 and of its dependent claims 28–34.
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Issues Not on Appeal
Subject Matter Eligibility
At various points, Appellant refers to tests for subject-matter
eligibility under 35 U.S.C. § 101. E.g., Appeal Br. 2, 7, 26, 42, 45, 46, 48,
50. However, as the Examiner correctly points out, “there are no applicable
rejections under 35 U.S.C. 101 in the Final Rejection.” Ans. 30. Subject
matter eligibility under § 101, obviousness under § 103, and indefiniteness
under § 112 are separate tests that a claim must independently pass in order
to be patentable. See, e.g., Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)
(“The ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the § 101 categories of possibly patentable subject matter.”);
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1261 (Fed. Cir. 2017)
(“whether a patent specification teaches an ordinarily skilled artisan how to
implement the claimed invention presents an enablement issue under 35
U.S.C. § 112, not an eligibility issue under § 101”). In appeals such as this
one, the Board’s role is limited to “review adverse decisions of examiners”
where an applicant’s claims have “been twice rejected.” 35 U.S.C.
§§ 6(b)(1), 134(a). Here, the only rejections are for obviousness and
indefiniteness, not subject-matter eligibility. See Final Act. 8–27.
Withdrawn Claim 13
Similarly, Appellant asks that withdrawn claim 13 “be reframed in
this art unit.” Appeal Br. 84. However, as the Examiner explains, this arose
from a restriction requirement in 2015, not any rejection in the Final Office
Action, and we therefore lack jurisdiction to hear it. Ans. 23–24; see also In
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re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (“There are a host of
various kinds of decisions an examiner makes . . . which . . . are not now
appealable to the board . . . when they are not directly connected with the
merits of issues involving rejections of claims, but traditionally have been
settled by petition to the Commissioner.”); MPEP § 1002.02(c)(2).
Claim Interpretation Standard
Appellant also inquires about “the Phillips standard” for claim
construction as opposed to the broadest reasonable interpretation. Appeal
Br. 50, 26. Appellant appears to be referring to the USPTO’s published rule
in Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51340 (Oct. 11, 2018). That rule applies only to issued patents being
challenged in trial proceedings under the America Invents Act such as inter
partes review. It does not apply to applications during examination prior to
issuance. E.g., In re Fought, 941 F.3d 1175, 1177 (Fed. Cir. 2019) (“Claims
in pending applications receive their broadest reasonable interpretation
during examination.”).
Mixed Apparatus and Method Claims
Finally, a single claim “reciting both an apparatus and a method of
using that apparatus renders a claim indefinite” because “it is unclear
whether infringement occurs when one creates an infringing system, or
whether infringement occurs when the user actually uses the system in an
infringing manner.” IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005); UltimatePointer, 816 F.3d at 826 (quotation
omitted). In the event of further prosecution, Appellant and the Examiner
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may wish to consider whether each claim here recites both an apparatus and
a method of using that apparatus.
In particular, all of the dependent claims expressly recite “The system
and method of Claim 27 . . . .” Claim 27 is the only independent claim and
it recites an apparatus (claim 27: “A mirrorless car”), but all of the claims
also introduce limitations that arguably are method steps, such as
“transmitting the image data” (claim 27), “prioritizing said data streams”
(claim 28), “converting real-time traffic data” (claim 29), “modifying said
backup camera” (claim 30), “synchronizing” (claims 31–32), “merging split
windows” (claim 33), and “positioning said sensors” (claims 34). Appellant
and the Examiner may wish to consider if this makes it unclear whether
infringement occurs at the time the mirrorless car is created or instead when
the method is actually performed. See, e.g., Rembrandt Data Techs., LP v.
AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (holding a claim indefinite
because “[t]he first four elements of claim 3 . . . recite apparatus elements:
buffer means, fractional encoding means, second buffer means, and trellis
encoding means,” but “[t]he final element is a method: ‘transmitting the
trellis encoded frames’”); MPEP § 2173.05(p)(II).
Appellant repeatedly refers to the claims as reciting “a capability of
the claimed structure” (e.g., Appeal Br. 32–34, 36, 37, 39, 48), but it may
not even be clear which structure is intended to have such capabilities, such
as whether “transmitting the image data” in claim 27 is a capability of the
“mirrorless car,” the “roadworthy enablers,” the “sensors,” or something else
entirely. To the extent Appellant wants to claim an apparatus rather than a
method, Appellant may wish to consider whether the claims could be
amended to recite more clearly either structural components (e.g., “a
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transmitter”) or capabilities of structural components, including specifically
identifying which structure has that capability (e.g., “said mirrorless car
capable of transmitting” or “said digital image sensors capable of
transmitting”).
OUTCOME
The following table summarizes the outcome of each rejection:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27–34 112(b) Indefiniteness 27–34
27, 34 103 Grigsby, Stimel, Johnson 27, 34
28–32 103 Grigsby, Stimel, Johnson,
Schmid
28–32
33 103 Grigsby, Stimel, Johnson,
Huebner
33
Overall
Outcome
27–34
TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED