Ex Parte 6942248 et al

Board of Patent Appeals and Interferences

Sep 28, 2010

90008351 (B.P.A.I. Sep. 28, 2010)

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.
95/001,012 10/11/2007 6,942,248 ATI-233 IP REEX 5467
22846 7590 03/30/2011
BRIAN ROFFE, ESQ
8170 McCormick Boulevard, Suite 223
Skokie, IL 60076-2914
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/30/2011 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
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.
90/008,351 11/27/2006 6942248 ATI-233 RE 5110
22846 7590 03/30/2011
BRIAN ROFFE, ESQ
8170 McCormick Boulevard, Suite 223
Skokie, IL 60076-2914
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/30/2011 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)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

ELESYS NORTH AMERICA, INC.
Requester, Respondent
v.
AUTOMOTIVE TECHNOLOGIES INTERNATIONAL, INC.1
Patent Owner, Appellant
____________________

Appeal 2010-008462
Reexamination Control 95/001,012 and 90/008,3512
Patent US 6,942,248 B23
Technology Center 3900
____________________

Before SALLY C. MEDLEY, KARL EASTHOM and DANIEL S. SONG,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Automotive Technologies International, Inc. is the real party in interest
(App. Br. 3).
2 These reexamination proceedings were merged by Decision, Sua Sponte, to
Merge Reexamination Proceedings, mailed February 20, 2008.
3 Issued September 13, 2005 to Breed et al. (hereinafter "'248 patent").
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The Requester requests reconsideration (hereinafter "Req.") under 37
C.F.R. § 41.79 of our Decision mailed September 28, 2010 (hereinafter
"original Decision") affirming-in-part, the Examiner's Final rejections of the
appealed claims. The Requester asserts that in the original Decision, we
misapprehended or overlooked various issues, and requests the modification
of the original decision with respect to these issues.
We grant the Request to the extent that we consider the Requester's
arguments infra, but DENY the request to modify our original Decision.

Issue 1
The Requester observes that the original Decision affirms the
Examiner's rejection of dependent claims 7 and 15, but the rejections of
claims 1, 4-6, 11 and 14 from which claims 7 and 15 depend have been
reversed so that the broader claims "are identified as valid." (Req. 3). The
Requester states that "[u]nder these circumstances, the broader claims "must
be invalid as well." (Req. 3). Correspondingly, the Requester requests that
we modify the original Decision to add the following rejections:
1. Reject claims l, 4, 5, 6, 11 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Gentry in view of Blackburn and Krogmann;

2. Reject claims l, 4, 5, 6, 11 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Ishikawa in view of Blackburn and
Krogmann; and

3. Rejection of claims 11 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Gentry in view of Blackburn.
(Req. 4).
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We deny the Requester's request. Firstly, we clarify that the Board
does not identify claims "as valid" as stated by the Requester. Nor is the
Board empowered to find claims "patentable." Rather, the Board reviews
decisions of the Examiner for error. See 35 U.S.C. § 6(b). In deciding an
appeal, the Board generally looks to the arguments made by the Examiner
and the involved parties to determine whether the Examiner erred, especially
in the context of an inter partes reexamination where both the Patent Owner
and the Requester are represented by counsel. The Board relies on the
involved parties to focus the issues and decides on those issues based on
facts and arguments presented by the involved parties. See Ex Parte Frye, 94
U.S.P.Q. 2d 1072, 1075 (BPAI 2010 (precedential)). While the Board is
authorized to enter a new ground of rejection, this authority is discretionary.
See 37 C.F.R. § 41.77(b).
The above proposed rejections now requested by the Requester were
not on appeal for us to consider as they were not made by the Examiner. If
the Requester desired these rejections to have been made, the Requester
should have raised the above issue before the Examiner during the
reexamination, and should have cross-appealed any of the Examiner's
refusals to adopt proposed rejections for our consideration. In the present
case, no such cross-appeal has been made. Rehearing is not the appropriate
time to raise such new issues.

Issue 2
The claim 1 phrase at issue follows: "analyzing means . . . for
analyzing the signal in order to determine at least one of whether the
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contents of the seat include a child seat, whether the contents of the seat
include a child seat in a particular orientation and whether the contents of the
seat include a child seat in a particular position."
The Requester contends that the original Decision decided the issue of
whether the '248 patent under reexamination was entitled to the filing date of
the '978 application merely based on analysis of a single sentence therein
that states "[t]he vehicle identification and monitoring system of this
invention will control such inflators based on the presence and position of
vehicle occupants or of a rear facing child seat." (Req. 5). The Requester
further asserts that we overlooked the Examiner's and Requestor's alternative
argument that even if the sentence disclosed inflation of air bags based on
the presence and position of a rear facing child seat, the disclosure in the
'978 application is narrower than the claims. In particular, the Requester
contends that "the '978 application at best describes a system that controls
the airbag based on all three of presence, position, and orientation[]" of the
child seat, not at least one of these parameters as claimed (Req. 6). In
addition, the Requester argues that "the '978 application does not describe
detection of a front facing child seat." (Req. 6).
We disagree with the Requester. Firstly, in addition to the analysis of
the above noted sentence, we also referred to the disclosure of the '978
patent in making the factual finding that "the '978 Specification reasonably
conveys to those skilled in the art that the inventor had possession of the
subject matter now claimed." (Original Decision 15). In addition, we do not
see where the Examiner made the alternative argument as alleged by the
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Requester. Nonetheless, we address the merits of this alternative argument
infra, and elaborate on our original Decision.
We disagree with the Respondent's contention that the '978
application only supports controlling an airbag based on all three of
presence, position, and orientation of the car seat. In addition to general
disclosures pertaining to determining presence and position of various
objects within a vehicle interior (see generally, pgs. 7-10), and the specific
disclosure of controlling airbags based on "the presence and position . . . of a
rear facing child seat" (pg. 2, ll. 18-21), a principle object and advantage of
the invention described in the '978 application is identified as
14. To recognize the presence of a rear facing child seat on a
particular seat of a motor vehicle and to use this information to
affect the operation of another vehicle system such as the airbag
system.
('978 Specification, Pg. 9, ll. 10-12).
Hence, not all three parameters are required to affect the operation of
the airbag system using the information from the vehicle interior
identification and monitoring system described in the '978 Specification.
Further, we also observe that the specific disclosure of detecting a rear
facing child seat provides support for detection of "a child seat" by the virtue
of the fact that a rear facing child seat is, in fact, a child seat. See In re
Smythe, 480 F.2d 1376, 1382 (CCPA 1973) ("We cannot agree with the
broad proposition . . . that in every case where the description of the
invention in the specification is narrower than that in the claim there has
been a failure to fulfill the description requirement in section 112. Each case
must be decided on its own facts. The question which must be answered is
whether the application originally filed in the Patent Office clearly conveyed
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in any way to those skilled in the art, to whom it is addressed, the
information that appellants invented the [claimed invention]. If it did, then
appellants have made a written description of their invention within the
meaning of the first paragraph of 35 U.S.C. § 112." (Citations omitted)).
Furthermore, while the Respondent observes that "the '978 application does
not describe detection of a front facing child seat[,]" (Req. 6), we observe
that the claims do not require detection of a front facing child seat.
Fundamentally, the Requester is essentially requiring the '978
Specification to recite the claimed invention in haec verba, whereas in our
factual finding, we sought to look at the '978 Specification from the
perspective of a person of ordinary skill in the art to determine whether it
provides reasonably clear description of the claimed invention so as to
convey possession. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010)(en banc); Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991). In this regard, in addition to the above
noted text from the '978 Specification, there are numerous other passages in
the '978 Specification that provide a more complete picture of the scope of
disclosure.4 All of these disclosures in the '978 Specification must be

4 The '978 Specification also includes the following enumerated statements:

1. Also, a child in a rear facing child seat which is placed on the right
front passenger seat is in danger of being seriously injured if the passenger
airbag deploys. This has now become an industry wide concern and the US
automobile industry is urgently searching for a solution which will prevent
the deployment of the passenger side airbag if a rear facing child seat is
present. An improvement on the invention disclosed in the referenced
copending patent application as will be disclosed in greater detail below,
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considered when determining whether the '978 Specification reasonably

includes more sophisticated means to identify objects within the passenger
compartment and will solve this problem. (Pg. 1-2).

2. Initially these systems will solve the out-of-position occupant and the
rear facing child seat problems related to current airbag systems and prevent
unneeded deployments when a seat is unoccupied. (Pg. 2).

3. A system will therefore be needed to detect the presence of occupants,
determine if they are out-of-position and to identify the presence of a rear
facing child seat in the rear seats. (Pg. 2).

4. "To identify" as used herein will mean to determine that the object
belongs to a particular set or class. The class may be one containing all rear
facing child seats, one containing all human occupants, or all human
occupants not sitting in a rear facing child seat depending on the purpose of
the system. (Pg. 5).

5. Information obtained by the identification and monitoring system is
then used to affect the operation of some other system in the vehicle. (Pg. 7).

6. The principle objects and advantages are:
. . .
14. To recognize the presence of a rear facing child seat on a
particular seat of a motor vehicle and to use this information to affect
the operation of another vehicle system such as the airbag system.
(Pgs. 7 and 9).

7. FIG. 1 is a side planer view with parts cutaway and removed of a
vehicle showing the passenger compartment containing a rear facing child
seat on the front passenger seat and a preferred mounting location for an
occupant and rear facing child seat presence detector. (Pg. 11; see also Fig.
1).

8. FIG. 4 is a side planer view with parts cutaway and removed showing
schematically the interface between the vehicle interior monitoring system
of this invention and the vehicle airbag system. (Pg. 11; see also Fig. 4).
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conveys possession of the now claimed invention to one of ordinary skill in
the art.
In the above regard, we further find that the level of skill of a person
of ordinary skill in the art is quite high as evidenced by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
("[T]he absence of specific findings on the level of skill in the art does not
give rise to reversible error 'where the prior art itself reflects an appropriate
level and a need for testimony is not shown'") (quoting Litton Indus. Prods.,
Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). Whereas
the Declaration of Mr. Livernois (Decl. of Livernois, July, 8, 2008, ¶ 6) is
relied upon by the Examiner in support of the contention that a person of
ordinary skill in the art would not understand the '978 Specification as
providing description of the invention now claimed, as noted in the original
Decision, the Declaration merely sets forth Mr. Livernois' conclusion,
without explanation or detail for the basis of this conclusion, especially in
view of the above discussed and footnoted text of the '978 Specification, as
well as the pertinent figures therein.
Thus, while the recited limitation at issue is not provided in haec
verba when the '978 Specification is viewed in its entirety, including the
variation in the parameters used to affect operation of the airbag system, the
various noted disclosures, objectives, and figures, we discern no error in our
factual finding that the '978 Specification provides reasonably clear
description of the now claimed invention to a person of ordinary skill in the
art.

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Issue 3
Related to Issue 2 discussed supra was whether Corrado is prior art
under 35 U.S.C. § 102(b), and thus, anticipates various claims (original
Decision 14-15). Because we determined that the claims reexamined in the
'248 patent were entitled to claim priority, Corrado was no longer prior art
under 35 U.S.C. § 102(b). The Requester contends that the original
Decision overlooked the fact that even if Corrado is not prior art under 35
U.S.C. § 102(b), it is still prior art under 35 U.S.C. § 102(e) (Req. 8).
Correspondingly, the Requester requests us to modify the original Decision
to:
1. Reject claims 1-6 and 11-14 as anticipated by Corrado
under § 102(e); and

2. Reject 8 and 16 under § 103(a) as obvious over Corrado
in view of Kaji.
(Req. 8).

We decline the Requester's request for reasons similar to those
discussed supra with respect to Issue 1. The potential significance of 35
U.S.C. § 102(e) was made clear in view of the arguments and submissions
by the Patent Owner seeking to overcome the Examiner's 35 U.S.C. § 102(b)
rejection with a 37 C.F.R. § 1.131 Declaration when the Examiner rejected
the pertinent claims as anticipated by Corrado. The Requester should have
requested the Examiner to enter the now requested rejections under 35
U.S.C. § 102(e), and should have cross-appealed any of the Examiner's
refusals to adopt proposed rejections for our consideration. In the present
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case, no such cross-appeal has been made. Rehearing is not the appropriate
time to raise such new issues.

DECISION
While we have considered the original Decision in light of the
Request for Rehearing, and have elaborated on certain aspects of it, we
decline to modify the original Decision in any respect.

DENIED
ack

cc:
Patent Owner:
BRIAN ROFFE, ESQ
75 Wood Lane
Woodsburgh, NY 11598

Third Party Requester:
BRINKS, HOFER, GILSON, & LIONE
P.O. Box 10395
Chicago, IL, 60610