Ex Parte 7575080 et al

Patent Trial and Appeal Board

Mar 17, 2016

95002258 (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.
95/002,258 09/14/2012 7575080 1134
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 2016-002081
Reexamination Control 95/002,258
Patent 7,575,080 B2
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 2016-002081
Reexamination Control 95/002,258
Patent 7,575,080 B2

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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, 2, and 5–7 over
various grounds. App. Br. 3.1 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 7,575,080 B2, titled “Telematic Method and Apparatus
with Integrated Power Source” and issued to Dennis S. Fernandez, on
August 18, 2009 (“the ’080 patent”).
The ’080 patent describes telematic devices and a processing method
in fuel cell vehicle applications. Spec. 1:16–18.

Claim 1 reads as follows:

1. Vehicle having adaptive power and telematics
comprising:
a vehicle;
a battery or fuel cell stack for empowering the vehicle; and
a telematic system;
wherein a central controller adaptively controls power from the
battery or fuel cell stack to the vehicle or the telematic system using
one or more sensors in the vehicle to predict or measure electrical
operation or need therein.

1 Appeal Brief in Support of Appellant’s 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 October 1, 2002
Flick US 6,512,466 B2 Jan. 28, 2003
Obayashi US 6,624,529 B2 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 UC Davis
FutureTruck, SAE INT’L, March 4, 2002 (“Meyr 2002”).

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

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 claims 1 and 2
under 35 U.S.C. § 102 as anticipated by any one of Prius, Meyr 2002, Meyr
2003, Honda, Tamai, or Obayashi or under 35 U.S.C. § 103(a) as
unpatentable over Tamai and Meyr 2003; claims 1, 2, and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Meyr 2003 and any one of Prius or Honda;
claims 1, 2, and 5–7 under 35 U.S.C. § 103(a) as unpatentable over Prius and
any one of Gabler or Flick; claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Honda and any one of Gabler or Flick; claims 5–7 under 35 U.S.C.
§ 112, first paragraph as failing the written description and/or enablement
requirement; or claims 5 and 7 under 35 U.S.C. § 112, second paragraph as
being indefinite.
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ISSUE

Did the Examiner err in rejecting claims 1, 2, and 5–7?

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 5–7
Claim 6 recites a central controller that “adaptively accesses” a
telematics service. Claim 7 recites coordinated “adaptively.” Claim 5
recites similar features. The Examiner and Requester state that the
Specification fails to provide sufficient written description support for these
claim features and that the Specification fails to disclose “performing any of
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these functions “‘adaptively.’” RAN 35–36; Requester’s Respondent Brief
Pursuant to 37 C.F.R. § 41.68, filed July 2, 2014 (“Resp. Br.”) 15–16.
Patent Owner disagrees. App. Br. 14–15 (citing Spec. 8:24–45; 8:59–9:4;
14:42–54; 15:14–17; 5:6–9; 9:4–12; Fig. 6).
The Specification discloses, for example, that the “[t]elematic services
. . . may include adaptive network-accessible or electronically distributed
services such that a vehicle telematics 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 and coordinating of telematics services in a
system. 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 claims 5–7. The Examiner
therefore erred in rejecting claims 5–7 as failing the written description
requirement.

Enablement - Claims 5–7
The Examiner finds that one of ordinary skill would have had to resort
to undue experimentation in order to communicate with a remote server and
“use that remote server to detect a power failure in the vehicle” and “provide
power from a ‘portable power supply.’” RAN 37. The Examiner also finds
that one of ordinary skill in the art would have had to resort to undue
experimentation in order to “adaptively sense some other telematics system
that is remote from the vehicle itself.” RAN 38. However, the Examiner
does not provide a sufficient showing that, given the level of skill in the art,
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the predictability in the art, or the state of the prior art, for example, that one
of skill in the art, in fact, would have had to resort to undue experimentation
to practice the alleged claim features of detecting a power failure in a vehicle
with a remote server or providing power from a portable power supply.
Requester argues that claim 5, for example, recites “multiple
limitations in the disjunctive” and therefore, according to Requester, the
“enablement requirement is [not] met.” Resp. Br. 18. However, Requester
also does not explain sufficiently how, given the level of skill in the art, for
example, one of skill in the art would have had to resort to undue
experimentation to practice the claimed invention. See, e.g., Resp. Br. 17–
18.
The Examiner therefore erred in rejecting claims 5–7 as failing the
enablement requirement.

Indefiniteness - Claims 5–7
Claims 5 and 7 recite “said other one or more telematic system and
power loading or usage is correspondingly monitored, sensed, controlled or
serviced adaptively locally or remotely.” Regarding both claims 5 and 7,
Requester argues that “the term ‘correspondingly’ . . . [is] indefinite because
it is unclear what the claimed monitoring, sensing, controlling, or servicing
must correspond to.” Resp. Br. 17. Hence, Requester argues that claims 5
and 7 are indefinite because of the breadth of the claims. However, breadth
of a claim is not to be equated with indefiniteness. In re Miller, 441 F.2d
689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970)
(“Breadth is not indefiniteness”). Requester does not demonstrate
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sufficiently how or why the breadth of a claim should be equated to
indefiniteness of the claim in this case. We are consequently not persuaded
by Requester’s argument.
Claim 5 recites “power loading or usage.” The Examiner and
Requester indicate that “there is no antecedent basis for this limitation.”
RAN 37; see also Resp. Br. 16–17. Claim 5 recites “said other one or more
telematic system and power loading or usage is correspondingly monitored.”
Requester argues that “there is no indication of which particular power
loading or usage is supposed to be monitored . . . of the telematic system? Of
the battery or fuel cell stack? Something else?” Resp. Br. 17. Hence,
Requester argues that claim 5 is overly broad because the recited “power
loading or usage” may apply to any number of different recited components.
However, Requester does not demonstrate sufficiently that the breadth of the
claim indicates a lack of antecedent basis or indefiniteness of the claim. Nor
does Requester demonstrate sufficiently how or why a claim alleged to be
broadly recited must be determined to be indefinite as well (see above
discussion).
Requester also argues that claim 5 recites “said other one or more
telematic system and power loading or usage” and that “said other . . . power
loading” lacks antecedent basis. Requester does not contend that “said other
one or more telematic system” lacks antecedent basis. Based on Requester’s
contention, we are not persuaded that “power loading or usage” lacks
antecedent basis at least because one of skill in the art would have
understood that “said,” as recited, indicates the “one or more telematic
system,” which Requester does not assert lacks antecedent basis and that one
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of skill in the art would have understood that “power loading” (not preceded
by the term “said”) pertains to power loading of the “said other one or more
telematic system” that Requester does not dispute has adequate antecedent
basis.
Requester argues that claim 7 recites “the one or more telematic
services” but that “it is unclear whether, or to what extent” this limitation
“refers[] to the same services described in claim 5.” Resp. Br. 16–17.
Claim 7 is an independent claim that does not depend from claim 5.
Requester does not explain sufficiently why one of skill in the art would
understand that a recitation in claim 7 would “refer[] to the same” terms
recited in a different claim (i.e., claim 5). We are therefore not persuaded by
Requester’s argument.
The Examiner rejects claim 6 as indefinite because, according to the
Examiner, claim 6 improperly “includes apparatus and method claim
limitations which claims both a product and process in the same claim.”
RAN 34. In particular, the Examiner states that claim 6 recites an apparatus
and also recites “‘wherein the central controller adaptively accesses’” or “the
telematics system adaptively communicates or transacts,” and a “location
where the central controller is being used.” RAN 34–35. The Examiner also
rejects claims 5 and 7 for similar reasons. The Requester concurs with the
Examiner. Resp. Br. 14–15. However, a single claim which claims both an
apparatus and the method steps of using the apparatus is improper when the
recited method steps are not directed to the system but instead are directed to
actions of users of the system because such a claim may create confusion as
to when direct infringement occurs. In re Katz Interactive Call Processing
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Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011). In the present case,
neither the Examiner nor Requester demonstrate sufficiently that any of the
disputed claim limitations pertain to actions of a user of the claimed
apparatus. Therefore, we are not persuaded by Requester.
Claim 7 recites “the one or more telematic services.” The Examiner
finds that “there is no antecedent basis for this limitation.” RAN 37. Claim
7 recites “a vehicle,” “a battery,” “a telematic system,” and “one or more
sensors,” for example, then recites “the one or more telematic services”
without prior recitation of “one or more telematic services.” We therefore
agree with the Examiner.
The Examiner did not err in rejecting claim 7 as indefinite under
35 U.S.C. § 112, second paragraph but erred in rejecting claims 5 and 6 as
indefinite under 35 U.S.C. § 112, second paragraph.

Anticipation - Prius – Claims 1 and 2
Claim 1 recites a “central controller.” The Examiner finds that Prius
discloses “a central controller (HV ECU).” RAN 11. Patent Owner argues
that Prius fails to disclose a central controller because, according to Patent
Owner, the “HV ECU,” disclosed by Prius “needs an inverter – with the
inverter’s own controller [] – to effect control of the battery” and, according
to Patent Owner “describes a multi-controller approach for controlling
power from the battery, or in other words, decentralized control.” App. Br.
4. We are not persuaded by Patent Owner’s argument for at least the reasons
set forth by Requester. Resp. Br. 4–6.
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For example, claim 1 recites a central controller adaptively controls
power from the battery or fuel cell stack to the vehicle or the telematic
system using one or more sensors in the vehicle to predict or measure
electrical operation or need therein. Patent Owner does not indicate that
claim 1 also recites that the “central controller” must not include “an
inverter.” In fact, claim 1 does not appear to recite an “inverter” at all.
Therefore, we need not consider whether or not Prius discloses a controller
containing (or not containing) an inverter.
Claim 1 recites that the central controller “adaptively controls power
from the battery.” Patent Owner argues that Prius fails to disclose that “the
HV ECU needs to be actually connected to the battery,” that “the services of
the 2000 Prius battery ECU” and “the 2000 Prius inverter control[ler]” are
not needed, a “direct connection of the HV ECU to the battery,” or that “the
HV ECU connectivity [can] circumvent the need for other controllers . . . to
control power from the battery.” App. Br. 5. Patent Owner further argues
that “to be truly considered ‘a central controller’ as claimed, it would be
directly connected to the battery.” Id.
Claim 1 recites a central controller adaptively controls power from the
battery or fuel cell stack to the vehicle or the telematic system using one or
more sensors in the vehicle to predict or measure electrical operation or need
therein. Patent Owner does not indicate that claim 1 also recites that the
“central controller” “needs to be actually connected to the battery,” that “the
services of the 2000 Prius battery ECU” and “the 2000 Prius inverter
control[ler]” are not needed, a “direct connection of the [controller] to the
battery,” or that the controller “connectivity [can] circumvent the need for
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other controllers.” Therefore, we need not consider whether or not Prius
discloses these features.
Patent Owner argues that Prius discloses “an engine for ‘empowering
the vehicle’” but fails to disclose a “battery or fuel cell stack for empowering
the vehicle,” as recited in claim 1. App. Br. 5–6 (citing Prius 22, 33, 84).
The Examiner finds that Prius discloses this feature. RAN 10 (citing Prius
14). As the Examiner indicates, Prius discloses an “HV Battery” that
appears to “empower” a vehicle. Prius 14. We are not persuaded by Patent
Owner’s argument for at least the reasons set forth by Requester. Resp. Br.
6.
For example, Patent Owner argues that “claim 1 . . . does not require
the need for an engine for ‘empowering the vehicle’.” App. Br. 5. Hence,
Patent Owner appears to argue that Prius fails to disclose claim 1 because
Prius supposedly discloses that an engine is required. Claim 1 recites a
battery or fuel cell stack for empowering the vehicle. Patent Owner does not
indicate that claim 1 also recites that an engine is excluded. In fact, claim 1
does not appear to recite any requirements regarding an engine at all.
Therefore, we need not consider whether or not Prius discloses that an
engine is (or is not) required.
Regarding claim 2, Patent Owner argues that Prius fails to disclose a
gateway that “is coupled to ‘the central controller’, not the battery.” App.
Br. 6. We are not persuaded by Patent Owner’s argument for at least the
reasons set forth by Requester. Resp. Br. 6. For example, claim 2 recites a
gateway that “is coupled adaptively by the central controller to the battery.”
Patent Owner does not indicate that claim 1 also recites that the gateway is
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coupled to the central controller and is not coupled to the battery. Therefore,
we need not consider whether or not Prius discloses this hypothetical claim
limitation.
Patent Owner argues that Prius fails to disclose a “telematic system.”
App. Br. 6. We are not persuaded by Patent Owner’s argument at least for
the reasons set forth by Requester. Resp. Br. 6–7. For example, the
Specification discloses that telematics 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 sufficiently distinguish from
the audio system, GPS Voice Navigation and display screen” as Prius
discloses.
The Examiner did not err in rejecting claims 1 and 2 as anticipated by
Prius.

Obviousness (Prius and Gabler) - Claims 1, 2, and 5–7
Patent Owner argues that Prius and Gabler fail to disclose or suggest
“a telematics system,” “a central controller,” “a gateway . . . that is coupled
adaptively by the central controller,” and “a battery . . . for empowering the
vehicle.” App. Br. 11. We are not persuaded by Patent Owner’s argument
for at least the previously discussed reasons.
Patent Owner argues that claim 1, for example, requires a “telematic
system” that “encompasses more functionality, including but not limited to,
a human machine interface (HMI) as a mechanism for user I/O in response
to alerts or navigational purposes, as compared to merely the combination of
two simple transmitters.” App. Br. 11. In other words, Patent Owner argues
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that Prius and Gabler fail to disclose or suggest a telematic system that
includes a “human machine interface.” Claim 1 recites a telematic system.
Claim 2 depends from claim 1 and recites that the telematic system uses or
couples to a gateway or vehicle multimedia bus. Independent claim 5 recites
that the telematic system comprises “adaptive network-accessible or
electronically distributed services” and that “power loading or usage” of a
“telematic system” is “monitored, sensed, controlled or serviced adaptively.”
Independent claims 6 and 7 recite a “telematic system.” Patent Owner does
not indicate that any of claims 1, 2, or 5–7 also recites that the telematic
system must include a “human machine interface.” In fact, none of claims 1,
2, or 5–7 appear to recite “human machine interface” at all. Therefore, we
need not consider whether or not Prius or Gabler discloses or suggests a
“human machine interface.”
Patent Owner argues that Prius and Gabler disclose or suggest
employing “a separate, external computer and a separate, external display,
outside of the vehicle . . . to communicate a map to emergency personnel for
response to the crash.” App. Br. 11. In other words, Patent Owner argues
that Prius and Gabler fail to disclose or suggest a computer and display that
are inside of a vehicle that communicates a map to emergency personnel for
response to a crash. Claims 1, 2, and 5–7 recite a vehicle comprising a
vehicle, a battery (or fuel cell stack) and a telematic system. Patent Owner
does not demonstrate sufficiently that any of claims 1, 2, and 5–7 also recite
a “computer” and “display” that is “inside of a vehicle that communicates a
map to emergency personnel for response to a crash.” Indeed, none of the
disputed claims appear to recite a “computer” at all, much less that the
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“computer” (and “display”) be located “inside” a vehicle or any specific
function of such a computer. Therefore, we need not consider whether or
not Prius or Gabler discloses or suggests a computer and display inside a
vehicle that communicates a map to emergency personnel for response to the
crash.
The Examiner finds that it would have been obvious to one of
ordinary skill in the art to have combined the teachings of Prius (i.e.,
navigation and communication systems in a vehicle) and Gabler (i.e., a
telematic system in a vehicle) because “[s]uch a combination of prior art
elements according to known methods to yield predictable results is
obvious.” RAN 27. We agree with the Examiner. For example, one of
ordinary skill in the art would have known that vehicles may contain
functional navigations and communication systems (Prius) and telematic
systems (Prius or Gabler) and that the combination of these known elements
would have resulted in no more than the predictable result of a vehicle
containing functional navigation, communication, and telematic systems,
each performing its known function(s). We agree with the Examiner that
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 have been obvious to one of
ordinary skill in the art to have combined the teachings of Prius and Gabler
because Gabler “teaches away from an in-vehicle integrated telematics
system [of Prius].” App. Br. 11. In particular, Patent Owner argues that
Gabler discloses an “external or non-integrated telematics” system but Prius
supposedly discloses “an in-vehicle and integrated telematics system” and
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that such a combination “would not arrive at the fully functional, novel, and
insightful . . . invention with a reasonable expectation of success.” Id. We
are not persuaded by Patent Owner’s argument at least because Patent
Owner does not explain sufficiently how the inclusion of a known telematics
system in a vehicle would have resulted in anything more than the
predictable result of a telematics system in a vehicle (as disclosed by Gabler,
for example). Nor has Patent Owner provided evidence to show that
effecting such a combination was “uniquely challenging or difficult for one
of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
The Examiner did not err in rejecting claims 1, 2, and 5–7 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, 2, and 5–7
based on other grounds, such as anticipation or obviousness grounds based
on any of Honda, Tamai, Obayashi, Meyr 2002, Meyr 2003, or Flick. Cf. In
re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

DECISION
We affirm the Examiner’s rejection of claim 7 under 35 U.S.C. § 112,
second paragraph as indefinite; claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Prius; and claims 1, 2, and 5–7 under 35 U.S.C. § 103(a) as
unpatentable over Prius and Gabler. We reverse the Examiner’s rejection of
claims 5–7 under 35 U.S.C. § 112, first paragraph for failing the written
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description requirement and claims 5 and 6 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
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