Waymo LLC

Patent Trials and Appeals Board

Feb 25, 2022

2021003339 (P.T.A.B. Feb. 25, 2022)

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. 16/009,499 06/15/2018 William Grossman XSDV 3.0F-089 1479 146033 7590 02/25/2022 WAYMO LLC BOTOS CHURCHILL IP LAW 430 Mountain Ave Suite 401 New Providence, NJ 07974 EXAMINER VORCE, AMELIA J.I. ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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): pto@bciplaw.com waymo@bciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte WILLIAM GROSSMAN and BENJAMIN PITZER ________________ Appeal 2021-003339 Application 16/009,499 Technology Center 3600 _________________ Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a Request for Rehearing (“Req. Reh’g”) February 7, 2022, of the Decision on Appeal mailed December 15, 2021 (“Dec.”). This Decision by the Patent Trial and Appeal Board (“Board”) affirmed the Examiner’s rejections of claims 1-6, 8-14, and 16-22 as being unpatentable under 35 U.S.C. § 103. See Dec. 1, 7-8. Appellant contends, “the Board’s Decision affirming the rejections misapprehends certain claimed features, the relied-upon references, Appellant's arguments on appeal, and issues raised by the Examiner in the 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Waymo LLC.” Appeal Br. 2. Appeal 2021-003339 Application 16/009,499 2 Answer.” Req. Reh’g 2. Appellant also contends, “[t]he Board’s Decision also appears to present one or more new grounds of rejection that were not designated as such.” Req. Reh’g 2. Upon consideration of Appellant’s Request, we do not modify the outcome of the Decision (i.e., we do not reverse the Examiner’s rejections of the above claims). REQUIREMENTS OF A REQUEST FOR REHEARING A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). This section also states that arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs “are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” In addition, a request for rehearing is not an opportunity to express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked by the Board in rendering its Decision. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. ANALYSIS As expressed in the Decision, the Examiner relied upon “Juelsgaard for teaching [the limitation,] ‘a plurality of sensors . . . affixed within the housing relative to a common vertical axis.’ Final Act. 5, 9; Ans. 2-3.” Dec. 4. Appellant contends that “Juelsgaard not only fails to disclose such features of the claimed technology, but is also not properly applied as a prior Appeal 2021-003339 Application 16/009,499 3 art reference given Appellant’s priority date.” Req. Reh’g 3; see also id. at 4, 8. Both such matters had been previously discussed in the Decision (see, e.g., Dec. 4) and we decline to re-address them (except as may be discussed herein) because there is no indication the Board misapprehended or overlooked such arguments. Appellant also contends, “the Board’s Decision presents a different BRI interpretation than that applied in the Examiner’s Answer.” Req. Reh’g 4. We disagree because our interpretation was not different, only more explanatory. See Dec. 5 (explaining a difference between sensors that are affixed within a housing and those that are loose and thus free to move about the housing thereby changing orientations); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that the Board may go into more detail than the Examiner without entering what amounts to a new ground of rejection). The Examiner also addresses this point stating “Appellant appears to be arguing that the plurality of sensors of Juelsgaard are not vertically stacked” when the claims are silent as to any particular orientation of the individual sensors themselves. Ans. 7 (citations omitted). Appellant’s Specification is consistent with this understanding stating only that sensors “are affixed within the housing relative to a common axis or physical reference point of the housing.” Spec. ¶ 7; see also Spec. ¶¶ 12, 35-37 (the latter stating that the sensors themselves “may be distributed” about the housing and also “may be aligned” about a common axis), 46, 49. In other words, the various sensors themselves can be affixed in different orientations but, as understood, it is their affixation that causes these various sensors to now become relative to a common axis or reference point. Appellant does seem to grasp this point by paraphrasing the above Appeal 2021-003339 Application 16/009,499 4 limitation “to mean that each sensor in the plurality may have a different vertical axis notwithstanding the requirement of a ‘common’ vertical axis.” Req. Reh’g 5. However, Appellant still contends that the proper BRI “would encompass a plurality of sensors that are co-located in the housing, aligned along a common axis.” Req. Reh’g 10. Appellant is reading more into this limitation than exists (i.e., each sensor is “co-located . . . along a common axis”). It should also be noted that our reviewing court has provided instruction that “during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. . . . [T]his way . . . uncertainties of claim scope [can] be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). Appellant further addresses the Board’s discussion of sensors that are “loose within the housing such that they can move freely about.” Req. Reh’g 5. As noted above, this language was provided to further explain and differentiate the claim construction analysis undertaken because affixation prevents the sensors from moving about and changing orientations. Appellant misconstrues this effort stating instead “the Board appears to be introducing a new argument.” Req. Reh’g. 5. This was not the case. Accordingly, and in view of the above, we are not persuaded the Board relied upon a “different” interpretation of that claim limitation as asserted by Appellant. Req. Reh’g 4. Appellant also contends that “the Decision did not make any reference to Appellant’s specification or the teachings thereof.” Req. Reh’g 6; see also id. at 9. Even if this was the case, the lack of any reference to Appeal 2021-003339 Application 16/009,499 5 Appellant’s Specification in the Decision is not indicative that the analysis undertaken did not take Appellant’s Specification into account. The above discussion regarding claim construction clearly references Appellant’s Specification to show consistency therewith. Consequently, Appellant’s contention is not persuasive that the Board misapprehended or overlooked such issues or concerns. Appellant next attempts to read limitations from Appellant’s drawings into the claims by providing “[a]n example of the claimed structure [as] illustrated in Figure 4A.” Req. Reh’g 6; see also id. at 7-8 (also referencing Spec. ¶¶ 36, 37, 46, and 49). Our analysis above already took these paragraphs into consideration. Further, “while it is true that claims are to be interpreted in light of the specification . . . , it does not follow that limitations from the specification may be read into the claims . . . . [T]he claims define the invention.” Sjolund v. Musland, 847 F.2d 1573, 1581-82 (Fed. Cir. 1988). Appellant also addresses the Board’s language that “Appellant does not explain how, upon the sensor assembly being ‘structured in a housing’ as described, these sensors fail to be ‘affixed within the housing relative to a common vertical axis’ as recited.” Req. Reh’g 9 (quoting Dec. 5); see also id. at 10. Appellant notes that “the ‘structured in a housing’ phrase was presented for the first time in the Examiner’s Answer” and that “Appellant respectfully disagreed with the Examiner’s assertion then (and now), and notes that the Reply Brief at pages 11-12 expressly addressed” this topic. Req. Reh’g 9. In short, Appellant contends that the Juelsgaard provisional application “fails to disclose how the sensors are disposed in within housing [sic].” Req. Reh’g 9. Appeal 2021-003339 Application 16/009,499 6 There is no need for the cited art to “disclose how the sensors are disposed,” only that they are so disposed, such that once disposed, they become “relative to a common vertical axis” as recited. Hence the Board’s statement above, “Appellant does not explain how, upon the sensor assembly being ‘structured in a housing’ as described, these sensors fail to be ‘affixed within the housing relative to a common vertical axis’ as recited.” Dec. 5. Appellant fails to provide such an explanation. Further, it was this “structured in a housing” teaching in Juelsgaard’s provisional application that prompted the Board to explain that Juelsgaard’s sensors were not loose or unfastened therein. In summation, there is no indication that the Board misapprehended or overlooked this argument. Appellant also addresses the Board’s discussion of the primary reference to Frank. See Req. Reh’g 10-11. As acknowledged by Appellant, the Board stated that “even without the teachings of Juelsgaard, it is equally understood that Frank’s sensors, located within a mirror housing (see Frank Fig. 1; ¶¶ 13, 15), are likewise ‘affixed within the housing relative to a common vertical axis’ as recited.” Req. Reh’g 10-11 (quoting Dec. 5). “Appellant submits that this is a new ground of rejection not previously of record.” Req. Reh’g 11. Appellant supports this position by restating the Examiner’s acknowledgement that “Frank in view of Fakhfakh do not explicitly teach” this affixed limitation. Req. Reh’g 11 (emphasis omitted) (quoting Final Act. 8). Appellant contends that “[n]owhere in the prosecution history has Frank been applied in this manner” and that “it was the Examiner’s position that Frank did not disclose such a feature.” Req. Reh’g 11. Appeal 2021-003339 Application 16/009,499 7 Appellant’s contentions are not persuasive of error because the Examiner did not state that Frank did not disclose such a feature, but instead, the Examiner stated that Frank did not “explicitly teach” the feature. See above. The Board simply noted that as regarding the fixation of sensors, Frank can also be understood to disclose same. In any event, the Board did not rely on Frank for this teaching, only that Frank’s disclosure can also be said to teach same. In summation, there is no indication that the Board misapprehended or overlooked this argument, or that the Board’s reference to Frank constituted a New Ground of Rejection. DECISION Accordingly, Appellant’s Request for Rehearing has been granted to the extent that the Board reconsidered its Decision in light of the statements made in Appellant’s Request, but is denied with respect to the Board altering the outcome of the Decision which affirmed the Examiner’s rejections of these claims. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1-3, 5, 9- 12, 18, 19 103 Frank, Fakhfakh, Juelsgaard 1-3, 5, 9- 12, 18, 19 4 103 Frank, Fakhfakh, Juelsgaard, Zeleny 4 6, 8, 13, 14, 16, 17 103 Frank, Fakhfakh, Juelsgaard, Li 6, 8, 13, 14, 16, 17 20 103 Frank, Fakhfakh, Juelsgaard, Lee 20 21, 22 103 Frank, Fakhfakh, Juelsgaard, Lang 21, 22 Appeal 2021-003339 Application 16/009,499 8 Claims 35 U.S.C. § Reference(s)/Basis Denied Granted Overall Outcome 1-6, 8-14, 16-22 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5, 9- 12, 18, 19 103 Frank, Fakhfakh, Juelsgaard 1-3, 5, 9- 12, 18, 19 4 103 Frank, Fakhfakh, Juelsgaard, Zeleny 4 6, 8, 13, 14, 16, 17 103 Frank, Fakhfakh, Juelsgaard, Li 6, 8, 13, 14, 16, 17 20 103 Frank, Fakhfakh, Juelsgaard, Lee 20 21, 22 103 Frank, Fakhfakh, Juelsgaard, Lang 21, 22 Overall Outcome 1-6, 8-14, 16-22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED