Ex Parte Breed

Patent Trial and Appeal Board

Jun 26, 2014

11936950 (P.T.A.B. Jun. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID S. BREED
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Appeal 2012-004618
Application 11/936,950
Technology Center 3600
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Before JENNIFER D. BAHR, LYNNNE H. BROWNE and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David S. Breed (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 1–20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below, emphasizing the key
disputed limitation.
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1. A system for controlling a component in a vehicle,
comprising:
an image receiving system that receives images including
an occupant of the vehicle after the occupant has been
presented with an option to control the component using
gestures, said image receiving system being arranged to
recognize gestures in the received images; and
a control system coupled to said image receiving system
and arranged to control the component based on at least one
recognized gesture and the option presented to the occupant
such that component control is different for the same gesture
when different options are presented.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review:
1. Claims 1, 6 and 17 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
2. Claims 1–20 are rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claims 1, 6,
8, 13, 22 and 23 of Breed (US 7,164,117 B2, iss. Jan. 16, 2007) in view of
Paul (US 2002/0126876 A1, pub. Sep. 12, 2002) and Obradovich (US
6,009,355, iss. Dec. 28, 1999).
3. Claims 1–20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Paul and Obradovich.
ANALYSIS
Claims 1, 6 and 17 rejected under 35 U.S.C. § 112, first paragraph
for failing to comply with the written description requirement.
We are not persuaded by Appellant’s arguments that the Examiner
erred in finding that the original patent application, filed November 8, 2007,
fails to provide the required written description support for recitation of “the
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option presented to the occupant such that component control is different for
the same gesture when different options are presented” in claims 1 and 6 and
“the question presented to the occupant such that the component control is
different for the same gesture when different questions are presented” in
claim 17.
Appellant argues that because the Specification discloses at page 37,
line 35–page 38, line 42 that “[t]he driver may indicate by a gesture that he
or she wants the temperature to change and the system can then interpret a
‘thumbs up’ gesture for higher temperature and a ‘thumbs down’ gesture for
a lower temperature,” “[o]ne skilled in the relevant art would easily
understand that the same thumbs up or thumbs down gestures can be applied
when different options are present[ed] to the occupant.” App. Br. 10. At
pages 1–3 of the Reply Brief, Appellant also alleges that page 2, lines 1–7 of
the Specification provides support for these claim terms.
We agree with the Examiner that the referenced portion of the
Specification also discloses that “[a] very large number of component
control options exist that can be entirely executed by the combination of
voice, speakers and a camera that can see gestures,” which “does not give[]
rise to the interpretation that different control options are presented to a
user.” Ans. 6. Therefore, we also agree with the Examiner that the
Appellant has not identified the required written description support in the
Specification, but is merely contending that the knowledge of one skilled in
the art makes the invention obvious. Ans. 17–20.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
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the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (citations omitted). “And while the description
requirement does not demand any particular form of disclosure, or that the
specification recite[s] the claimed invention in haec verba, a description that
merely renders the invention obvious does not satisfy the requirement.” Id.
at 1352 (internal citations omitted). Thus, we find that the disclosure of
controlling a component with hand gestures does not establish possession of
the claimed subject matter “that component control is different for the same
gesture when different options are presented.”
The Examiner also determined that the clause “different questions are
presented” in claim 17 was new matter, pointing out that “[t]he specification
is completely silen[t] as to the explicit support for multiple questions being
presented to a user.” Ans. 6, 19. Appellant offered no counterargument in
asserting only that “no formal objection or rejection to the amendment in
which this clause was introduced has been made.” Reply Br 2.
Accordingly, we sustain the Examiner’s rejection of claims 1, 6 and
17 under 35 U.S.C. § 112, first paragraph.
Obviousness of claims 1–20 over Paul and Obradovich.
Appellant argues claims 1–20 as a group. App. Br. 12–13. We select
claim 1 as the representative claim for this group such that the remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant first contends that the references do not disclose an image
receiving system that receives images after an occupant has been presented
with an option to control a vehicle component using gestures as set forth in
independent claim 1. Appellant also contends that “having the ability to
control a component using the Paul et al. system cannot inherently or
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obviously include an additional aspect that allows for such control to be
meaningful, i.e., the presentation of an option with the expectation of a
responsive gesture as in the claimed invention.” App. Br. 12.
The Examiner finds that Obradovich teaches “the occupant has been
presented with an option/question to control the component (fig. 10, fig. 16)
to allow direct and intuitive access with minimal steps (column 3 line 29-32)
and to prompt the user for action (column 18 line 22-25).” Ans. 14. We
agree and further note that Obradovich also discloses “[a] voice is then
generated by the inventive system to explain the purpose or the content of
the selected option before the user commits to it.” See Obradovich, col. 3, ll.
56–58.
Appellant also argues that Obradovich “does not disclose any use of
gestures, i.e., physical movement of a body part, that are recognized by an
image receiving and processing system in order to control a component.”
App. Br. 12. Thus, Appellant is simply attacking Obradovich in isolation,
rather than as combined with Paul. However, nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir.1986). The Examiner relies on Paul for
teaching the use of gestures and Obradovich only for teaching the
presentation of an option or question in vehicle components control. Ans.
12, 24. Therefore Appellant’s argument is not responsive to the rejection as
articulated by the Examiner, and thus, is not persuasive.”
Appellant contends that Paul does not “indicate that detection of one
particular gesture may be used to control multiple components.” App. Br.
13. However, the Examiner found that at paragraph 25, Paul “specifically
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teaches static gestures for commonly used commands such as ON/OFF” and
that because “ON/OFF is represented by static gesture, and many
“components/features/options, such as heater, air conditioning, lights,
mirror, or radio/CD player, have ON/OFF function, the ON/OFF gesture is
applicable to these multiple components/features/options.” Ans. 24.
Further, as also pointed out by the Examiner, Paul discloses tracking a
person’s hand gestures to control devices or systems in the vehicle, such as
the heater, air conditioner, lights, mirror position, or radio/CC player. Ans.
24; Paul ¶¶ 7, 8. Thus we agree with the Examiner that Paul teaches that a
gesture such as “ON/OFF” can be used to control multiple components.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–20 as being obvious over Paul and Obradovich.
Obviousness-type double patenting rejection of claims 1–20 over
claims 1, 6, 8, 13, 22 and 23 of Breed, in view of Paul and Obradovich.
Appellant relies on the arguments applied to the rejection of claims 1–
20 based on Paul and Obradovich (Br. 13), which we did not find
persuasive, for the reasons discussed above. Thus, we sustain the rejection
of claims 1–20 under the doctrine of obviousness-type double patenting as
unpatentable over claims 1, 6, 8, 13, 22 and 23 of Breed, in view of Paul and
Obradovich for the same reasons.
DECISION
Each of the Examiner’s rejections is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
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