Ex Parte 7,980,341 et al

Patent Trial and Appeal Board

Mar 17, 2016

95002259 (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.
95/002,259 09/14/2012 7,980,341 8441
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 2016-002100
Reexamination Control 95/002,259
Patent 7,980,341 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 2016-002100
Reexamination Control 95/002,259
Patent 7,980,341 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 1–6 over various
grounds. App. Br. 9–53.1 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 7,980,341 B2, titled “Telematic Method and Apparatus
with Integrated Power Source” and issued to Dennis S. Fernandez, on July
19, 2011 (“the ’341 patent”).
The ’341 patent describes telematics devices and a processing method
in fuel cell vehicle applications. Spec. 1:19–21.

Claim 1 reads as follows:

1. Integrated power and sensor-based gateway system
comprising:
a central controller coupled via a sensor-based gateway to an
electrical system;
wherein the sensor-based gateway comprises a programmable
signal interconnect and router, the sensor-based gateway using at least
one sensor and the central controller automatically using software-
automated sensor data adaptively to control user interaction and
enable communication through a vehicle multimedia interface via the
sensor-based gateway according to a specified data rate and telematic

1 Amended Appeal Brief in Support of Appellants’ Appeal to the Patent
Trial and Appeal Board, filed July 15, 2014 (App. Br.).
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navigational and security alert using local routing interconnect
network protocol adaptively to control vehicle rescue;
wherein the central controller using the software-automated
sensor data adaptively controls electrical power provided through the
gateway reactively in response to a measured quality of electrical
power signal, and proactively according to a predicted function in a
telematic appliance according to the specified data rate and the
telematic navigational and security alert to enable rescue service using
the software-automated sensor data and local routing interconnect
network protocol adaptively according to vehicle location and the
specified data rate.

The cited references are as follows:

Darby US 5,825,098 Oct. 20, 1998
Flick US 6,512,466 B2 Jan. 28, 2003
Seto EP 1099605 A1 May 16, 2001
Honda JP 2002-171691A June 14, 2002

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

Amiri et al., GPS and Sensors Accelerate Accident Response, GPS
World, 14–20, June 2001 (“Amiri”).

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 claims 1, 3, 5, and 6
under 35 U.S.C. § 102 as anticipated by any one of Amiri or Flick; claims 1
and 3 under 35 U.S.C. § 102 as anticipated by Darby; claims 1 and 3–6
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under 35 U.S.C. § 103(a) as unpatentable over the combination of Amiri and
Prius alone or in combination with Gabler; claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Prius and Darby; claims 1, 3 and 4 under 35 U.S.C.
§ 103(a) as unpatentable over Meyr and either Amiri or the combination of
Prius and Seto; claim 4 under 35 U.S.C. § 103(a) as unpatentable over Prius
and Flick; claims 5 and 6; claims 5–7 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Darby and any one of Flick or Gabler,
the combination of Amiri and any one of Flick or Darby, or the combination
of Flick or Gabler; claim 2 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Prius Flick and Honda or the combination of Honda and
any one of Amiri, Prius, Gabler, Seto, or the combination of Darby and
Prius; claims 5 and 6 under 35 U.S.C. § 112, first paragraph as failing the
written description and/or enablement requirement; and claims 5 and 6 under
35 U.S.C. § 112, second paragraph as being indefinite.

ISSUE

Did the Examiner err in rejecting claims 1–6?

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).
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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 and 6
Claims 5 and 6 recite a central controller that “adaptively accesses” a
telematics service, a telematic appliance that “adaptively communicates or
transacts,” and “coordinated programmably by the central controller . . .
adaptively in a user-personalized process.” The Examiner and Requester
state that the Specification fails to provide sufficient written description
support for performing functions “adaptively.” RAN 54–55; Requester’s
Re-Submitted Respondent Brief Pursuant to 37 C.F.R. § 41.68, filed August
6, 2014 (“Resp. Br.”) 11–12. Patent Owner disagrees. App. Br. 35–36
(citing Spec. 8:55–65).
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 . . . such that additional . . . supplies are accessed . . .
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responsively or dynamically in the jurisdiction . . . .” Spec. 8:55–65. 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 and 6. The Examiner therefore erred in rejecting claims 5
and 6 as failing the written description requirement.

Enablement - Claims 5 and 6
The Examiner finds that one of ordinary skill would have had to resort
to “undue experimentation” in order to perform the invention recited in
claims 5 and 6 because, according to the Examiner, the Specification fails to
enable one of skill in the art to provide a “telematics appliance [that]
adaptively communicates or transacts with [the] internet” because “there is
no description in the specification of how the telematic appliance can
‘adaptively’ communicate via a remote server to detect a power system
failure in the vehicle itself,” “how, or by what, the ‘additional vehicle or
portable power supply is accessed or delivered,’” “how the claimed
telematic appliance could provide power from a ‘portable power supply,’” or
“how the access would be performed ‘dynamically.’” RAN 56–57.
However, the Examiner does not provide a sufficient showing that,
given the level of skill in the art, 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 disputed claim features.
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Requester argues also that the Specification “provides no description,
no algorithms, and no guidance as to how certain of the claimed functions
are to be performed” (Resp. Br. 13–14, citing RAN 56–58) but provides
insufficient evidence to demonstrate persuasively that, given the level of
skill in the art, 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 disputed claim features. See, e.g.,
Resp. Br. 17–18.
The Examiner therefore erred in rejecting claims 5 and 6 as failing the
enablement requirement.

Indefiniteness - Claims 5 and 6
Claims 5 and 6 recite “said other one or more telematic system and
power loading or usage is correspondingly monitored.” The Examiner and
Requester indicate that “there is no antecedent basis for this limitation in the
claims.” RAN 55; see also Resp. Br. 13. In particular, the Examiner states
that “[t]he claims do not specify what ‘power loading or usage’ is supposed
to be monitored, sensed or controlled,” “[w]hether it is the ‘power loading
and usage’ of the telematic appliance? Of the electrical system? Of the
battery or fuel cell stack process . . . ?” RAN 55. Requester argues that
“[t]here is no intrinsic reason to think that ‘power loading or usage’ refers to
the telematics or fuel cell stack.” Resp. Br. 13. Hence, the Examiner and
Requester argue that claims 5 and 6 are overly broad because the recited
“power loading or usage” may apply to different recited components.
However, Requester does not demonstrate sufficiently that the breadth of the
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claim indicates a lack of antecedent basis or indefiniteness of the claim or,
conversely, that a claim term alleged to be broadly recited must be
determined to lack antecedent basis as well (see above discussion).
Claims 5 and 6 recite “correspondingly.” The Examiner states that the
term “correspondingly” is ambiguous because “[t]he claims do not specify
what monitoring, sensing, controlling or servicing must correspond to.”
RAN 55. Requester argues that the term “correspondingly” is ambiguous
because it is not clear “what about the ‘telematic appliance’ is being
monitored, sensed, controlled or serviced, or, for that matter, what it
‘correspond[s]’ to.” Resp. Br. 13. Hence, the Examiner and Requester
argue that claims 5 and 6 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 sufficiently how or why the breadth of a claim should be
equated to indefiniteness of the claim in this case. We are not persuaded by
Requester’s argument.
The Examiner rejects claim 5 as indefinite because, according to the
Examiner, claim 5 improperly “includes apparatus and method claim
limitations thus claiming both a product and process in the same claim.”
RAN 53. In particular, the Examiner states that claim 5 recites an apparatus
and also recites “using the central controller” and “the location in which it is
used.” RAN 53. The Requester concurs with the Examiner. Resp. Br. 11.
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
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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 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 are directed to actions of a user of the claimed
apparatus rather than the apparatus. Therefore, we are not persuaded by
Requester.
The Examiner therefore erred in rejecting claims 5 and 6 as indefinite
under 35 U.S.C. § 112, second paragraph.

Obviousness (Prius and Gabler) - Claims 1, 3, and 4
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 allegedly discloses adaptive power control “with vehicles”
that “does not constitute a ‘proactive’ operation according to a predicted
function” and Prius discloses “a multi-controller arrangement.” App. Br. 23.
We are not persuaded by Patent Owner’s argument for at least the reasons
set forth by Requester. Resp. Br. 7–8. For example, as Requester explains,
however, Gabler discloses a “power control system” that “operates
‘proactively’ because the microcontroller switches to back-up battery power
after a crash, but before an actual transmission is completed,” as allegedly
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confirmed by Patent Owner. Resp. Br. 8 (citing Gabler 21, Pisu Decl.2 ¶ 44,
Ex. 1 (App. E) at 30).
Patent Owner also argues that Prius fails to disclose a “central
controller.” App. Br. 23. We are not persuaded by Patent Owner’s
argument for at least the reasons set forth by Requester. Resp. Br. 8 (citing
Pisu Decl. ¶ 45). In any event, even assuming Patent Owner’s contention to
be correct that Prius fails to disclose a “central controller,” Patent Owner
does not assert or demonstrate sufficiently that the combination of Prius and
Gabler also fails to disclose or suggest the disputed feature.
The Examiner therefore did not err in rejecting claims 1, 3, and 4 as
obvious over the combination of Prius and Gabler.

Obviousness (Prius, Gabler, and Honda) - Claim 2
Patent Owner provides similar arguments with respect to the
combination of Prius and Gabler. App. Br. 24. We are not persuaded by
Patent Owner’s arguments for at least the previously stated reasons.
The Examiner did not err in rejecting claim 2 as obvious over the
combination of Prius, Gabler, and Honda.

Obviousness (Prius and Gabler) – Claims 5 and 6
Patent Owner argues that Gabler fails to disclose “a central controller
that adaptively accesses one or more network-accessible telematic services,
which predictively and proactively communicate[s] with a remote server to

2 Declaration of Dr. Pierluigi Pisu under 37 C.F.R. § 1.132, dated February
25, 2013.
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indicate an emergency/power failure” and “lacks the essential adaptive
(predictive and proactive) control.” App. Br. 44–45. In other words, Patent
Owner argues that Gabler fails to disclose “proactive.” We are not
persuaded by Patent Owner’s argument for at least the previously discussed
reasons.
Patent Owner also argues that Prius fails to disclose an “HV ECU
[that] is coupled to the sensor-based gateway, and calculated torque/power
demand signals are transmitted to the various controllers/actuators.” App.
Br. 46–47. Patent Owner does not demonstrate that claims 5 and 6 recite a
controller that transmits calculated data to controllers/actuators. In any
event, assuming that claims 5 and 6 recite such a requirement, we note that
Prius discloses that the “HV ECU” sends “calculated” data “to the actuators
and controllers.” Prius 25. Patent Owner does not explain a sufficient
difference between Prius and the disputed feature.
The Examiner therefore did not err in rejecting claims 5 and 6 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 Darby, Seto, Honda, Amiri, Meyr, or Flick. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009).

DECISION
We affirm the Examiner’s rejection of claims 1 and 3–6 under
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35 U.S.C. § 103(a) as unpatentable over Prius and Gabler and claim 2 under
35 U.S.C. § 103(a) as unpatentable over Prius, Gabler, and Honda. We
reverse the Examiner’s rejection of claims 5 and 6 under 35 U.S.C. § 112,
first paragraph for failing the written description requirement and
enablement requirement 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
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

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PATENT OWNER:

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

THIRD PARTY REQUESTER:

KENYON & KENYON LLP
One Broadway
New York, NY 10004