9358920 et al.

Patent Trials and Appeals Board

Jul 9, 2020

96000253 - (D) (P.T.A.B. Jul. 9, 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.
96/000,253 07/11/2018 9358920 4041P-000492-US-RXA 3346
27572 7590 07/09/2020
Harness Dickey (Troy)
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
DEB, ANJAN K
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/09/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DENSO CORPORATION
Patent Owner and Appellant
____________

Appeal 2020-004623
Reexamination Control 96/000,253
United States Patent 9,358,920
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and MICHAEL J. ENGLE,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s
decision to reject claims 1–15. We have jurisdiction under 35 U.S.C. §§ 134
and 306.
We AFFIRM.

1 Appellant identifies the real party in interest as DENSO CORPORATION.
Appeal Br. 3.
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STATEMENT OF THE CASE
This appeal arose in connection with a supplemental examination of
United States Patent 9,358,920 (“the ’920 patent”), issued to Hibino on June
7, 2016.
The ’920 patent pertains to controlling vehicle headlights. To this
end, a headlight’s illumination state automatically changes to (1) a “less-
dazzling state” where a degree of dazzling a forward vehicle’s occupant is
lower than in the low-beam state, or (2) a “less-power consumption state”
where the headlight consumes less electric power than in a daylight running
lighting state. See generally ’920 patent, col. 5, l. 49 – col. 8, l. 48. Claim 1
is illustrative of the invention and is reproduced below:
1. A vehicular lighting apparatus comprising:
a headlight illuminating an outside of a subject vehicle;
a vehicle-to-vehicle distance detecting unit detecting a
vehicle-to-vehicle distance between the subject vehicle and a
forward vehicle present in front of the subject vehicle;
a following-state determining unit determining whether
the subject vehicle is in an automatic following state with
respect to the forward vehicle;
a vehicle-to-vehicle distance determining unit
determining whether the vehicle-to-vehicle distance detected by
the vehicle-to-vehicle distance detecting unit is less than a
predetermined vehicle-to-vehicle distance; and
an illumination controlling unit automatically controlling
an illumination state of the headlight,
wherein
the illumination controlling unit automatically changes
the illumination state of the headlight when the subject vehicle
is determined by the following-state determining unit as being
in the automatic following state or the vehicle-to-vehicle
distance detected by the vehicle-to-vehicle distance detecting
unit is determined by the vehicle-to-vehicle distance
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determining unit as being less than the predetermined vehicle-
to-vehicle distance,
wherein
the illumination controlling unit automatically changes
the illumination state of the headlight from one of a high-beam
state where the headlight illuminates upward, a low-beam state
where the headlight illuminates normally-downward and a
daytime running lighting state where the headlight illuminates
in daytime,
wherein
the illumination controlling unit automatically changes
the illumination state of the headlight to a less-dazzling state
where a degree of dazzling an occupant of the forward vehicle
is lower than in the low-beam state or to a less-power
consumption state where the headlight consumes less electric
power than in the daytime running lighting state, and
wherein
the low-beam state is a state where an optical axis angle
of the headlight in a vertical direction of the vehicle is
downward by a predetermined angle; and
the illumination controlling unit automatically changes
the illumination state of the headlight to the less-dazzling state
by tilting the optical axis angle of the headlight more downward
than the predetermined angle of the low-beam state.

THE REJECTIONS
The Examiner rejected claims 1–8 and 11–15 under 35 U.S.C. § 103
as unpatentable over Kawasaki (JP 2003-276502 A; published Oct. 2, 2003),
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Kiyotaka2 (EP 2,100,771 A2; published Sept. 16, 2009), and Bos (US
7,029,155 B2; issued Apr. 18, 2006). Final Act. 10–34.3
The Examiner rejected claim 9 under 35 U.S.C. § 103 as unpatentable
over Kawasaki, Kiyotaka, Bos, and Watanabe (US 2011/0012511 A1;
published Jan. 20, 2011). Final Act. 34–35.
The Examiner rejected claim 10 under 35 U.S.C. § 103 as
unpatentable over Kawasaki, Kiyotaka, Bos, and Karpen (US 5,961,208;
issued Oct. 5, 1999). Final Act. 36.
The Examiner rejected claim 14 under 35 U.S.C. § 103 as
unpatentable over Kawasaki, Kiyotaka, and Bos or, alternatively, Kawasaki,
Kiyotaka, Bos, and Stade (US 8,403,547 B2; issued Mar. 26, 2013). Final
Act. 37–38.

THE REJECTION OVER KAWASAKI, KIYOTAKA, AND BOS
Regarding independent claim 1, the Examiner finds that Kawasaki’s
vehicular lighting apparatus includes, among other things, an illumination
controlling unit that changes a headlight’s illumination state automatically
from one of (1) a high-beam state where the headlight illuminates upward,
and (2) a low-beam state where the headlight illuminates normally-

2 Although the first-named inventor of this reference is Kiyotaka Mochizuki,
we nonetheless refer to this reference by the inventor’s first name (Kiyotaka)
for consistency with the Examiner’s and Appellant’s nomenclature.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed September
6, 2019 (“Appeal Br.”); (2) the Examiner’s Answer mailed March 11, 2020
(“Ans.”); and (3) the Reply Brief filed May 11, 2020 (“Reply Br.”).
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downward such that the headlight’s optical axis angle in the vehicle’s
vertical direction is downward by a predetermined angle. Final Act. 10–16.
Although the Examiner finds that Kawasaki’s illumination controlling
unit also changes the headlight’s illumination state to (1) a less-dazzling
state to a dazzling degree lower than that in the low-beam state, and (2) a
less-power consumption state, the Examiner nonetheless cites Kiyotaka for
teaching these features, including changing to the less-dazzling state
automatically by tilting the headlight’s optical axis angle more downward
than the low-beam state’s predetermined angle. Final Act. 15–17. The
Examiner also cites Bos for teaching a daylight running lighting state where
the headlight illuminates in daytime. Final Act. 14. Based on these
collective teachings, the Examiner concludes that the claim would have been
obvious. Final Act. 10–17.
Appellant argues that the Examiner’s reliance on Kiyotaka for
teaching the recited illumination controlling unit functionality is misplaced
because Kiyotaka gradually increases illumination of an upper part of an
area in front of the vehicle by aiming the headlight upwards and, therefore,
does not tilt the headlight’s optical axis angle more downward than the low-
beam state’s predetermined angle as claimed. Appeal Br. 11–15; Reply Br.
1–4. Appellant adds that neither Kawasaki nor Kiyotaka teaches or suggests
automatically changing the headlight’s illumination state to either the less-
dazzling or less-power consumption states as claimed. Appeal Br. 16–18.
Appellant argues various other recited limitations summarized below.

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ISSUES
I. Under § 103, has the Examiner erred by finding that Kawasaki,
Kiyotaka, and Bos collectively would have taught or suggested:
(1) an illumination controlling unit that changes a headlight’s
illumination state automatically to (a) a less-dazzling state where a degree of
dazzling a forward vehicle’s occupant is lower than in the low-beam state, or
(b) a less-power consumption state where the headlight consumes less
electric power than in a daylight running lighting state, where the
illumination state is changed to the less-dazzling state by tilting the
headlight’s optical axis angle more downward than the low-beam state’s
predetermined angle; and
(2) the limitations recited in claims 4 and 7?
II. Is the Examiner’s combining the teachings of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
Claims 1–3, 7, 8, 11–13, and 15
We begin by noting that claim 1 recites an apparatus whose structural
elements are recited in terms of what they do—not what they are capable of
doing. That is, the claim is replete with structural elements performing
active method steps, such as a headlight illuminating an outside of a subject
vehicle, a vehicle-to-vehicle detecting unit detecting a vehicle-to-vehicle
distance, an illumination unit automatically changes the illumination state,
etc. Apparatus claims reciting active method steps have been held indefinite
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under § 112(b), for such claims raise the question of whether they are
infringed by devices that are merely capable of performing the recited
function, or that they must actually perform that function. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005);
see also Rembrandt Data Technologies, LP v. AOL, LLC, 641 F.3d 1331,
1339 (Fed. Cir. 2011) (data transmitting device held indefinite for reciting
transmitting method step). Independent claims 4 and 7 have similar
deficiencies.
Turning to the merits, claim 1 recites three initial headlight
illumination states: (1) a high-beam state where the headlight illuminates
upward; (2) a low-beam state where the headlight illuminates normally-
downward; and (3) a daylight running lighting state where the headlight
illuminates in daytime.
Claim 1 also recites, in pertinent part, an illumination controlling unit
that changes the headlight’s illumination state automatically to (A) a “less-
dazzling state” where a degree of dazzling a forward vehicle’s occupant is
lower than in the low-beam state, or (B) a “less-power consumption state”
where the headlight consumes less electric power than in a daylight running
lighting state.
Our emphasis on the term “or” underscores that only one of the
recited alternatives need be taught or suggested by the prior art to satisfy the
claim. That is, the cited prior art need only teach automatically changing to
either the less-dazzling state or the less-power consumption state to satisfy
the claim given the claim’s alternative language.
The last clause of claim 1 recites:
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the illumination controlling unit automatically changes the
illumination state of the headlight to the less-dazzling state by
tilting the optical axis angle of the headlight more downward
than the predetermined angle of the low-beam state.
The beginning of this last clause is identical to the beginning of the
previously-recited first alternative, other than changing one “a” to “the”:
the illumination controlling unit automatically changes the
illumination state of the headlight [(A)] to a less-dazzling state
where a degree of dazzling an occupant of the forward vehicle is
lower than in the low-beam state or [(B)] to a less-power
consumption state where the headlight consumes less electric
power than in the daytime running lighting state.
After the overlapping language, the last clause newly adds the way its state
change is achieved (i.e., “by tilting . . . ”). There are at least two ways that
the last clause could be interpreted: (A) merely narrowing the first
alternative without requiring that the first alternative actually be selected, or
(B) an independent requirement that the unit must automatically change to
the less-dazzling state by tilting. On the one hand, the last clause is not tied
solely to the earlier limitation’s first alternative (e.g., through language more
along the lines of “said changing the illumination state to the less-dazzling
state comprising tilting . . .”). On the other hand, treating the last clause as
an independent requirement would render the earlier second alternative a
nullity (i.e., because if any device satisfied the last clause’s independent
requirement for changing to the less-dazzling state, it necessarily also would
satisfy the earlier limitation’s first alternative, thereby never needing the
second alternative).
“During reexamination proceedings of unexpired patents, however,
the Board uses the broadest reasonable interpretation consistent with the
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specification standard, or BRI.” In re CSB-Sys. Int’l, Inc., 832 F.3d 1335,
1340 (Fed. Cir. 2016) (quotation omitted). Here, both interpretations
arguably may be reasonable—plural plausible constructions that may render
the claim indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential) (“[I]f a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.”). Although the Examiner did not reject claim 1 on this basis, we
nonetheless leave this question for the Examiner to consider after this
opinion.
Here, the former interpretation (i.e., merely narrowing the first
alternative) results in a broader claim (e.g., a claim that can be met by the
second alternative alone), and we therefore apply that construction here. We
need not resolve what the most reasonable construction would be under
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and we
encourage Appellant to amend the claims to clarify the desired intent.
Under the broadest reasonable interpretation, even if we were to
accept Appellant’s contentions regarding the cited prior art’s alleged
shortcomings with respect to the less-dazzling state alternative (Appeal Br.
11–16; Reply Br. 1–4), those arguments are not germane to the Examiner’s
findings and conclusions regarding the less-power consumption state
alternative. As noted above, under the broadest reasonable interpretation,
the claim as presently written requires only one of the alternatives be met,
not both.
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In the rejection, the Examiner finds that Kawasaki changes a
headlight’s illumination state to a less-power consumption state given the
functionality of Kawasaki’s illumination controlling unit 44 that reduces
headlight 32’s illumination from “above zero to zero” according to the
vehicle-to-vehicle distance. Final Act. 14–15 (citing Kawasaki ¶ 18).
We see no error in these findings and conclusions. Although
Kawasaki’s paragraph 18 pertains to the device recited in Kawasaki’s claim
9 that reduces light radiated from behind the vehicle as Appellant indicates
(Appeal Br. 16–17), that paragraph also refers to the device of Kawasaki’s
claim 1 that similarly reduces light radiated in front of the vehicle as the
Examiner indicates (Ans. 4–5). Compare Kawasaki claim 9 with Kawasaki
claim 1. See also Kawasaki ¶ 9. Given these commensurate headlight and
taillight light-reducing functionalities, we see no error in the Examiner’s
reliance on Kawasaki’s paragraphs 9 and 18 for at least suggesting that
applying the disclosed light-reduction functionality to headlights would have
been at least an obvious variation. Nor has Appellant shown that such an
application would have been uniquely challenging or beyond the level of
ordinarily skilled artisans.
Although Kawasaki does not state explicitly that the disclosed light
reduction consumes less electric power than in a daylight running lighting
state, Kawasaki nevertheless teaches turning the lights off or, in Kawasaki’s
parlance, “[s]etting the amount of irradiation light to ‘0’.” See Kawasaki
¶¶ 9, 18, 102. Ordinarily skilled artisans would understand that shutting off
vehicle lights would consume less electric power than other states where the
lights are activated—including a daylight running lighting state—
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notwithstanding Kawasaki’s silence regarding this particular daytime
lighting mode. Nevertheless, we see no error in the Examiner’s reliance on
Bos merely to show that a daytime lighting state is known in the art, and that
providing such a mode in the Kawasaki system would have been obvious to
not only render the vehicle more visible during the day, but also comply
with some jurisdictions’ legal requirements in that regard. See Final Act. 14.
The Examiner’s rationale is, therefore, supported by articulated reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).
Appellant’s arguments regarding the cited references’ individual
shortcomings in this regard do not show nonobviousness where, as here, the
rejection is based on the cited references’ collective teachings. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
On this record, then, Appellant does not persuasively rebut the
Examiner’s findings and conclusions regarding the cited prior art
collectively at least suggesting an illumination controlling unit that changes
the headlight’s illumination state automatically to a “less-power
consumption state” where the headlight consumes less electric power than in
a daylight running lighting state.
As noted above, Appellant’s arguments regarding the cited prior art’s
alleged shortcomings with respect to the less-dazzling state are not germane
to the alternative less-power consumption state and, therefore, do not
persuasively rebut the Examiner’s findings and conclusions regarding the
latter alternative. To the extent Appellant contends otherwise, such
arguments are not commensurate with the scope of the claim, particularly in
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light of the claim’s alternative language. Therefore, we are not persuaded of
error in the Examiner’s rejection for that reason alone.
Because this issue is dispositive, we need not address whether the
prior art teaches or suggests the alternative less-dazzling state limitations.
Nevertheless, we leave to the Examiner to consider the functionality of
Kawasaki’s Figure 8 and paragraphs 115 to 117 that teach iteratively
changing the front change angle in steps S510 to S550 via the feedback loop
in steps S530 to S520 so that, as noted in paragraph 115, “the direction of
radiation of the irradiation light by the head lamp 32 becomes low
gradually” (emphasis added). Although this functionality apparently tilts
the head lamp more downwardly in each iteration than the downward angle
in the previous iteration in this feedback loop, we need not address that
aspect of Kawasaki here or its relevance to the less-dazzling state
alternative, for the claim is fully met by the less-power consumption state
alternative as noted above. Nevertheless, we direct the Examiner’s attention
to this functionality in Kawasaki should prosecution reopen after this
decision.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 3, 7, 8, 11–13, and 15 not argued separately with
particularity.4

4 Although Appellant nominally argues claim 7 separately (Appeal Br. 23–
26), Appellant’s arguments are similar to those made for claim 1. We,
therefore, group these claims accordingly.
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Claims 4–6
We also sustain the Examiner’s rejection of claim 4 reciting, in
pertinent part, automatically changing the headlight’s illumination state from
the daylight running lighting state to the less-power consumption state by
turning the headlight off.
Despite Appellant’s arguments to the contrary (Appeal Br. 18–23;
Reply Br. 5), we see no error in the Examiner’s reliance on Kawasaki and
Bos for collectively teaching the disputed limitation. See Ans. 9. Although
Kawasaki does not state explicitly that the disclosed light reduction
consumes less electric power than in a daylight running lighting state,
Kawasaki nevertheless teaches turning the lights off or, in Kawasaki’s
parlance, “[s]etting the amount of irradiation light to ‘0’.” See Kawasaki
¶¶ 9, 18, 102. Ordinarily skilled artisans would understand that shutting off
vehicle lights would consume less electric power than other states where the
lights are activated—including a daylight running lighting state—
notwithstanding Kawasaki’s silence regarding this particular daytime
lighting mode. Nevertheless, we see no error in the Examiner’s reliance on
Bos merely to show that a daytime lighting state is known in the art, and that
providing such a mode in the Kawasaki system would have been obvious to
not only render the vehicle more visible during the day, but also comply
with applicable legal requirements in that regard. See Final Act. 14. The
Examiner’s rationale is, therefore, supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion. See KSR, 550 U.S. at 421. Appellant’s arguments regarding the
cited references’ individual shortcomings in this regard do not show
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nonobviousness where, as here, the rejection is based on the cited
references’ collective teachings. See In re Merck, 800 F.2d at 1097.
Also, as noted previously, Appellant’s arguments regarding the cited
prior art’s alleged shortcomings regarding the less-dazzling state (Appeal Br.
20–23) are not commensurate with the scope of the claim that recites this
state as an alternative to the less-power consumption state.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4, and claims 5 and 6 not argued separately with particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 9,
10, and 14. Final Act. 34–38. Because these rejections are not argued
separately with particularity (see Appeal Br. 26–27), we are not persuaded of
error in these rejections for the reasons previously discussed.

CONCLUSION
The Examiner’s decision rejecting claims 1–15 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 11–
15
103 Kawasaki,
Kiyotaka, Bos
1–8, 11–
15

9 103 Kawasaki,
Kiyotaka, Bos,
Watanabe
9
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10 103 Kawasaki,
Kiyotaka, Bos,
Karpen
10
14 103 Kawasaki,
Kiyotaka, Bos,
Stade
14
Overall
Outcome
1–15

REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this proceeding are governed by 37
C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

Msc

For PATENT OWNER:

Harness Dickey (Troy)
P.O. Box 828
Bloomfield Hills, MI 48303