Ex Parte 7374003 et al

Patent Trial and Appeal Board

Mar 17, 2016

95002257 (P.T.A.B. Mar. 17, 2016)

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.
95/002,257 09/14/2012 7374003 6202
22877 7590 03/18/2016
FERNANDEZ & ASSOCIATES, LLP
1175 Osborn Avenue
Atherton, CA 94027
EXAMINER
DEB, ANJAN K
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/18/2016 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
____________

TOYOTA MOTOR CORPORATION
Requester

v.

DENNIS S. FERNANDEZ
Patent Owner
____________

Appeal 2016-001852
Reexamination Control 95/002,257
Patent 7,374,003 B1
Technology Center 3900
____________

Before JAMES T. MOORE, STEPHEN C. SIU, and
JEREMY J. CURCURI, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2016-001852
Reexamination Control 95/002,257
Patent 7,374,003 B1

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Dennis S. Fernandez (“Patent Owner”) appeals under 35 U.S.C.
§§ 134 and 315 the Examiner’s rejections of claims 1–4 over various
references. App. Br. 9–33.1 We have jurisdiction under 35 U.S.C. §§ 134
and 315.

STATEMENT OF THE CASE
This proceeding arose from a September 14, 2012 request by Toyota
Motor Corporation (“Requester”) for an inter partes reexamination of the
claims of U.S. Patent 7,374,003 B1, titled “Telematic Method and Apparatus
with Integrated Power Source” and issued to Dennis S. Fernandez, on May
20, 2008 (“the ’003 patent”).
The ’003 patent describes telematic devices and a processing method
in fuel cell vehicle applications. Spec. 1:13–15.

Claim 1 reads as follows:

1. An apparatus comprising:
a primary power source for driving the motor;
an auxiliary power source for supplying electrical energy to on-
board components;
a telematic appliance; and
an electronic controller for managing the power distributed
between the auxiliary power source and the primary power source;
wherein the electronic controller adaptively couples electrical power
from the auxiliary power source to the telematic appliance.

1 Amended Appeal Brief in Support of Appellants’ Appeal to the Patent
Trial and Appeal Board, filed June 2, 2014 (App. Br.).
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The cited references are as follows:

Tamai US 6,459,170 B1 Oct. 1, 2002
Flick US 6,512,466 B2 Jan. 28, 2003
Obayashi US 6,624,529 Sept. 23, 2003
Honda JP 2002-171691A June 14, 2002

2000 Model Year Prius New Car Features Manual (“Prius”).

Nathaniel Meyr et al., Design and Development of the 2002 UC Davis
FutureTruck, SAE INT’L, March 3, 2003 (“Meyr”).

Gabler et al., Development of a Low-cost Automated Crash
Notification System, FHWA-NJ-2001-027 Final Report 2001
(“Gabler”).

Patent Owner appeals the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(b) as anticipated by Prius, Honda, Tamai, or Obayashi or
under 35 U.S.C. § 103(a) as unpatentable over either of Tamai or Obayashi
and any one of Meyr or Gabler or over Flick and Meyr; claims 1 and 3 under
35 U.S.C. § 103(a) as unpatentable over Meyr and any one of Prius or
Honda; claims 1–4 under 35 U.S.C. § 103(a) as unpatentable over Prius and
Gabler; claims 2–4 under 35 U.S.C. § 103(a) as unpatentable over Prius and
Flick or under 35 U.S.C. § 112, 1st paragraph (written description and
enablement) or under 35 U.S.C. § 112, 2nd paragraph as being indefinite; and
claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Honda and
any one of Gabler or Flick.
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ISSUE

Did the Examiner err in rejecting claims 1–4?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Written Description - Claims 2–4
Claim 2 recites “wherein the electronic controller adaptively accesses
one or more telematic services” and “telematic appliance adaptively
communicates or transacts.” Claim 3 recites “coordinated programmably by
the controller with remote network nodes adaptively in a user-personalized
process.” Claim 4 recites similar features. The Examiner and Requester
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state that the Specification fails to provide sufficient written description
support for these claim features. RAN 50–51, 72; Comments of Requester,
Toyota Motor Corporation, Pursuant to 37 C.F.R. § 1.947, filed May 24,
2013 (“Comments”) 17–19. Patent Owner argues that “there is adequate
written [description] within the specification.” App. Br. 28–29 (citing Spec.
8:35–45, 8:59–9:3, 9:4–12, Fig. 6).
Specifically, claim 2 recites that the electronic controller adaptively
accesses one or more telematics services and that the telematics appliance
adaptively communicates or transacts with the internet. Requester argues
that the Specification fails to disclose “adaptively accesses” the “one or
more telematics services,” “adaptively communicates or transacts,” or “how
. . . communication or transaction would be done ‘adaptively.’” Comments
17–18. Hence, Requester argues that the Specification fails to provide
sufficient written support of “adaptively,” as claimed. The Examiner agrees
with Requester. RAN 50, 72. Patent Owner argues that the Specification
provides adequate written description support for this claim feature at 8:35–
45, 8:59–9:3, and Figure 6. App. Br. 28–29.
The Specification discloses, for example, that the “[t]elematic services
. . . may include adaptive network-accessible or electronically distributed
services such that a vehicle telematic appliance or mobile user
communicates or transacts with the Internet . . . to detect or indicate
automatically . . . .” Spec. 8:59–65. In other words, the Specification
discloses “adaptive” accessing. The Examiner and Requester do not explain
a sufficient difference between the disclosure of “adaptive” and the
“adaptive” accessing, communication and transacting, as recited in claim 2.
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The Examiner therefore erred in rejecting claim 2 as failing the written
description requirement.
Claim 3 recites that “one or more telematic services transmits and
receives” data with “one or more other telematic appliance” as “coordinated
programmably by the controller . . . adaptively in a user-personalized
process.” Requester argues that the Specification fails to disclose “adaptive”
coordination. Comments 18. The Examiner agrees with Requester. RAN
50, 72. Patent Owner argues that the Specification provides adequate
written description support for these claim features. App. Br. 29. For at
least the reasons previously discussed, we are not persuaded by the
Examiner or Requester. The Examiner therefore also erred in rejecting
claim 3 as failing the written description requirement.
Requester provides similar arguments with respect to claim 4.
Comments 19. The Examiner agrees with Requester. RAN 51, 72. We are
not persuaded by the Examiner or Requester for at least the reasons
previously discussed.
The Examiner erred in rejecting claims 2–4 as unpatentable under
35 U.S.C. § 112, first paragraph for failing the written description
requirement.

Enablement - Claims 2–4
Claim 2 recites multiple instances of the word “or,” which, according
to the Examiner and Requester, “lead[s] to several possible permutations of
the claimed invention” that “[o]ne of ordinary skill in the art would not have
been able to practice . . . without undue experimentation.” RAN 51–52, 72;
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Comments 21 (citing Declaration of Dr. Pierluigi Pisu under 37 C.F.R.
§ 1.132, dated February 25, 2013 (“Pisu Decl.”) ¶¶ 42–44). Requester’s
Declarant (Dr. Pisu) testifies that “one of ordinary skill in the art would not
have known how to implement an automatic detection of a power failure
using a remote server without undue experimentation” because “[n]ormally a
detection of a power failure would be done internal to the vehicle.” Pisu
Decl. ¶ 42. Dr. Pisu also testifies that “there is no indication of what signals
the telematic appliance is supposed to transmit or receive” and “one of
ordinary skill in the art would not have known how to use the automatic
detection to trigger supply of additional power from a portable power supply
‘dynamically.’” Pisu Decl. ¶¶ 42–44.
While Dr. Pisu testifies the belief that one of ordinary skill in the art
would not have known how to implement the claimed invention without
“undue experimentation,” Dr. Pisu fails to demonstrate sufficiently that one
of skill in the art would, in fact, have had to resort to “undue
experimentation” to practice the claimed invention, given the level of skill in
the art, predictability of the art, state of the prior art, the quantity of
experimentation needed to make or use the invention, or the nature of the
invention, for example. Indeed, Requester and Dr. Pisu do not appear to
address adequately any relevant factors at all. Rather, aside from
generalized, conclusory statements asserting that one of ordinary skill in the
art would supposedly have had to resort to “undue experimentation,”
Requester provides insufficient factual evidence supporting this assertion.
Regarding claim 3, Requester argues that one of skill in the art would
not have been enabled to “‘adaptively’ ‘sense[]’ some other telematic
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appliance that is remote from the apparatus itself” or to “‘sense[]’
‘remotely’.” Comments 22 (citing Pisu Decl. ¶¶ 45–47). Dr. Pisu testifies
that Dr. Pisu is of the belief that “the specification . . . would not have
enabled one of ordinary skill to practice proposed claim 3 without undue
experimentation” after “hav[ing] considered the same factors as outlined [for
claim 2].” Pisu Decl. ¶ 45. However, even assuming Dr. Pisu’s contention
that “there is no guidance” in the Specification “as to how to carry this out”
to be true, neither Requester nor Dr. Pisu provide sufficient evidence
demonstrating that, given the level of skill in the art, state of the prior art, or
the predictability of the art, for example, that one of skill in the art, in fact,
would have needed to resort to undue experimentation to, for example,
“sense” appliances remotely. Indeed, neither Requester nor Dr. Pisu appear
to address these (or other) factors at all.
Requester provides similar arguments regarding claim 4. Comments
22. We cannot agree with the Examiner or Requester for at least the
previously discussed reasons. The Examiner erred in rejecting claims 2–4
under 35 U.S.C. § 112, first paragraph as failing the enablement
requirement.

Indefiniteness - Claims 2–4
Claim 2 recites detecting or indicating automatically “when electrical
power usage is running high . . . or energy reserves are low.” Claim 2 also
recites a “power system failure” and “additional vehicle or portable power
supply” that is “accessed or delivered.” The Examiner finds that “[t]here is
insufficient antecedent basis for [these limitations] in the claim” because
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“the claim does not indicate what element must have high electrical power
usage or low energy reserves,” “does not [recite] what power system must
fail,” and “[i]t is unclear” what accesses the “additional power supply.”
RAN 52–53. We agree with the Examiner that the claim does not recite a
specific element with respect to electrical power usage, energy reserves, or
accessing additional power supplies. However, while the lack of such
specific recitations may demonstrate the breadth of the claim, neither the
Examiner nor Requester demonstrate sufficiently that the lack of such
specific recitations also relate to “insufficient antecedent basis” in the claim.
Similarly, the Examiner states that “[t]here is insufficient antecedent
basis” for “the limitation ‘power loading or usage’ in the claimed
apparatus,” as recited in claim 3, because “[t]he claim does not make clear
what ‘power loading and usage’ is supposed to be monitored, sensed or
controlled” or what portion of the system “is supposed to be monitored,
sensed or controlled.” RAN 54. Neither the Examiner nor Requester
address how the breadth of the claim (e.g., the alleged lack of a specific
recitation regarding which specific components are “monitored, sensed or
controlled”) relates to “insufficient antecedent basis” of claim terms.
The Examiner and Requester provide similar arguments with respect
to claim 4. See, e.g., RAN 54. We cannot agree with the Examiner or
Requester for at least the previously discussed reasons.
The Examiner therefore erred in rejecting claims 2–4 under 35 U.S.C.
§ 112, second paragraph, as indefinite.

Appeal 2016-001852
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Anticipation - Prius - Claim 1
Claim 1 recites that the electronic controller adaptively couples
electrical power from the auxiliary power source to the telematics appliance.
Patent Owner argues that Prius discloses components “such as the audio
system, GPS Voice Navigation and display screen” but that Prius “does not
explicitly disclose a telematics appliance.” App. Br. 10. We are not
persuaded by Patent Owner’s argument at least for the reasons set forth by
Requester. Resp. Br. 4–7. For example, the Specification discloses that
telematic appliances include a “radio,” “CD/DVD,” “GPS navigation,” or an
“LCD terminal” (Spec. Fig. 6, 2:1–5, 8:30–34, 46–58), which Patent Owner
does not distinguish sufficiently from the audio system, GPS Voice
Navigation and display screen as Patent Owner states Prius discloses.
Patent Owner also argues that Prius fails to disclose a “connection
between the HV ECU [i.e., “electronic controller”] and any of the telematic
appliances.” App. Br. 10. We are not persuaded by Patent Owner’s
argument at least for the reasons set forth by Requester. Resp. Br. 4–7. For
example, claim 1 recites that the electronic controller adaptively couples
electrical power from the auxiliary power source to the telematics appliance.
Patent Owner does not demonstrate sufficiently that claim 1 also recites a
connection between the electronic controller and any of the telematics
appliances. Therefore, we need not consider whether Prius discloses a
connection between the electronic controller and any of the telematics
appliances or not.
The Examiner did not err in rejecting claim 1 as anticipated by Prius.
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Obviousness (Prius and Gabler) - Claims 1–4
The Examiner finds that Prius discloses “a hybrid vehicle
incorporating advanced telematic system[s]” and that Gabler discloses an
“in-vehicle system comprising telematics appliance[s]” that “includes GPS
sensor and cellular communication system[s].” RAN 21–22. The Examiner
further finds that “it would have been obvious to one of ordinary skill in the
art to combine a telematic system and appliance for vehicle crash
notification,” as disclosed by Prius, with “back-up battery functionality,” as
disclosed by Gabler in order “to improve emergency response.” Id. We
agree with the Examiner that the combination of a known vehicle with
known telematics systems (Prius) with the use of a known back-up battery in
a vehicle system comprising a telematics appliance (Gabler) would have
entailed no more than the combination of known components to achieve a
predictable result (i.e., a known vehicle with a known telematics system and
a known back-up battery). Such a combination would have been obvious to
one of ordinary skill in the art. KSR, 550 U.S. at 416.
Patent Owner argues that “it would not be logical to a person of skill
in the art to combine the system disclosed by Gabler with the 2000 Prius
Manual” because “[t]he entire purpose of 2000 Prius Manual’s HV ECU is
to control how much energy is distributed [and] depend[s] on high- or low-
load conditions” while “Gabler discloses only one type of condition and so
there would be no need to combine it with the HV ECU of the 2000 Prius
Manual.” App. Br. 16–17. Patent Owner also argues that Prius and Gabler
“do not [have] similar purposes” such that “there would be no need to
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combine this telematics system [of Gabler] with the HV ECU of the 2000
Prius Manual.” App. Br. 16–17. Hence, Patent Owner appears to argue that
it would not have been obvious to one of ordinary skill in the art to have
combined the teachings of Prius and Gabler because the combination would
change the principle of operation of Prius in which Patent Owner
characterizes the “principle of operation” of Prius to be “to control how
much energy is distributed [depending] on high- or low-load conditions.”
Id.
We are not persuaded by Patent Owner’s argument at least because
Patent Owner does not demonstrate that the principle of operation of Prius
is, in fact, controlling energy dependent on “high- or low-load conditions.”
Even assuming that Patent Owner’s contention that the principle of
operation of Prius is to control energy dependent on high- or low-load
conditions, Patent Owner does not demonstrate sufficiently that
incorporating a back-up battery of Gabler would, in fact, destroy this alleged
principle of operation. Nor does Patent Owner demonstrate sufficiently that
operating under the alleged “one type of condition” of Gabler would destroy
the operations under other conditions allegedly disclosed by Prius.
Regarding Patent Owner’s argument that one of ordinary skill in the
art would supposedly have “no need to combine” the Prius and Gabler
references, we note that the standard is whether it would have been obvious
to one of ordinary skill in the art to have combined the references and not
whether one of ordinary skill in the art would have needed to combine the
references. Therefore, we need not address whether or not it would have
been necessary for one of ordinary skill in the art to combine the references
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(or whether one of ordinary skill in the art would have “needed to” combine
the teachings of the references).
The Examiner did not err in rejecting claims 1–4 as obvious over
Prius and Gabler.
In view of the above, we need not consider the propriety of the
Examiner’s adoption or non-adoption of the rejection of claims 1–4 based on
other grounds, such as anticipation or obviousness grounds based on any of
Honda, Tamai, Obayashi, Meyr, or Flick. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009).

DECISION
We affirm the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Prius and claims 1–4 under 35 U.S.C. § 103(a) as
unpatentable over Prius and Gabler. We reverse the Examiner’s rejection of
claims 2–4 under 35 U.S.C. § 112, first paragraph for failing the written
description requirement and for lack of enablement and under 35 U.S.C.
§ 112, second paragraph as being indefinite.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
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timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

PATENT OWNER:

FERNANDEZ & ASSOCIATES, LLP
1175 Osborn Avenue
Atherton, CA 94027

THIRD PARTY REQUESTER:

KENYON & KENYON LLP
One Broadway
New York, NY 10004