Ex Parte Breed et al

Patent Trial and Appeal Board

Jun 4, 2014

12020684 (P.T.A.B. Jun. 4, 2014)

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.
12/020,684 01/28/2008 David S. Breed ITI-050 2469
22846 7590 06/04/2014
BRIAN ROFFE, ESQ
8170 McCormick Boulevard, Suite 223
Skokie, IL 60076-2914
EXAMINER
TISSOT, ADAM D
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
06/04/2014 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
____________________

Ex parte DAVID S. BREED, WENDELL C. JOHNSON, and
WILBUR E. DUVALL
____________

Appeal 2012-003990
Application 12/020,684
Technology Center 3600
____________

Before: MICHAEL C. ASTORINO, WILLIAM A. CAPP and
NEIL T. POWELL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 26-45. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter a new ground of rejection.
Appeal 2012-003990
Application 12/020,684
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THE INVENTION
Appellants’ invention relates to vehicle sensing and monitoring
systems. Spec. 2-3. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A driving condition monitoring system
for a vehicle on a roadway, comprising:
sensors located on or in a vicinity of the
roadway, said sensors being structured and
arranged to provide information about the
roadway, travel conditions relating to the roadway
and external objects on or in the vicinity of the
roadway; and
at least one interrogator arranged on the
vehicle that receives the information obtained by
said sensors and transmitted by said sensors using
a wireless radio frequency mechanism; and
a communications device arranged on the
vehicle and coupled to said at least one
interrogator, said communications device being
arranged to transmit the information received by
said at least one interrogator from said sensors to a
remote location separate and apart from the vehicle
and the roadway,
wherein the information received by said at
least one interrogator is provided to an operator of
the vehicle; and
whereby roadway conditions from multiple
roadways can be obtained and processed at the
remote facility via multiple vehicles travelling on
different roadways or different portions of the
same roadway and can be directed from the remote
facility to other vehicles on the roadway or
roadways from which the information is obtained.

Appeal 2012-003990
Application 12/020,684
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claim 1 is rejected under 35 U.S.C. § 112, second paragraph (now
35 U.S.C. § 112(b)), as indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
2. Claims 1, 26-34, 40-42, 44, and 45 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pietzsch and Yoshida.
3. Claims 35-39 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pietzsch, Yoshida and Lemelson.

OPINION
Indefiniteness
The Patent Act requires that a patent specification shall conclude with
one or more claims "particularly pointing out and distinctly claiming the
subject matter which the inventor . . . regards as the invention.” 35 U.S.C.
§ 112(b) (emphasis added). Careful and straightforward claim drafting by
prosecuting attorneys and agents, and rigorous application of the statutory
standard to particularly point out and distinctly claim the subject matter
regarded to be the invention by the PTO serve an important public notice
function within the patent system. See Predicate logic, Inc. v. Distributive
Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008).
Pietzsch
Yoshida
Lemelson
US 5,673,039
US 5,699,056
US 6,487,500 B2

Sep. 30, 1997
Dec. 16, 1997
Nov. 26, 2002
Appeal 2012-003990
Application 12/020,684
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Patent applicants face powerful incentives to inject ambiguity into
their claims, a temptation that needs to be mitigated by the courts. See
Nautilus, Inc. v. Biosig Instr., Inc., 2014 WL 2440536 at *7, __ U.S. __
(June 2, 2014).1 Patent drafters are in the best position to resolve
ambiguities in their claims. See Halliburton Energy Servs., Inc. v. M-I LLC,
514 F.3d 1244, 1255 (Fed. Cir. 2008). Section 112 places the burden of
precise claim drafting on the applicant. See In re Morris, 127 F.3d 1048,
1056-57 (Fed. Cir. 1997).
In the instant case, Appellants’ invention is a highway monitoring
system. The Specification discloses sensors that are located in the vehicle,
in the roadway, or in the vicinity of the vehicle or roadway. Spec. 2.
According to the Specification, information about a roadway, such as a
freezing condition, "could be" transmitted to a remote location where such
information from roadways in a selected area is accumulated and processed.
Spec. 35.

1 Some persons seem to suppose that a claim in a patent is like
a nose of wax which may be turned and twisted in any
direction, by merely referring to the specification, so as to make
it include something more than, or something different from,
what its words express. The context may, undoubtedly, be
resorted to, and often is resorted to, for the purpose of better
understanding the meaning of the claim; but not for the
purpose of changing it, and making it different from what it is.
The claim is a statutory requirement, prescribed for the very
purpose of making the patentee define precisely what his
invention is; and it is unjust to the public, as well as an evasion
of the law, to construe it in a manner different from the plain
import of its terms. This has been so often expressed in the
opinions of this court that it is unnecessary to pursue the subject
further.
White v. Dunbar, 119 U.S. 47, 51-52 (1886) (emphasis added).
Appeal 2012-003990
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Claim 1 recites that roadway conditions from multiple roadways “can
be” obtained and processed at the remote facility and "can be" directed from
the remote facility to other vehicles. Clms. App’x. The Examiner rejected
claim 1 as indefinite. Final Rej. 3. The Examiner stated that it is not clear if
Appellants intended the "can be" claim limitation to be optional or that the
phrase should be interpreted as a definite statement. Id.
After receiving the Final Rejection, Appellants sought to amend the
claim to substitute “optionally” for “can be.” Ans. 5. However, the
Examiner did not enter the amendment, stating that it would have changed
the original substantive interpretation of the claim and resulted in different
grounds of rejection. Ans. 6.2 Appellants now argue that the features
following the “can be” phrases should be interpreted as optional and, as
such, the claim is not indefinite. App. Br. 9.
The verb form of the word "can" carries multiple meanings in the
English language.3 It can be used to indicate a physical ability or some other
specified capability.4 It can also be used to indicate a possibility or
probability.5
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the
instant case, Appellants have not directed us to any language in the
Specification that supports a construction of "can be" that yields a particular

2 For purposes of the prior art rejection, the Examiner interpreted “can
be” as “are.” Ans. 5.
3 http://www.thefreedictionary.com/can
4 Id.
5 Id.
Appeal 2012-003990
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and distinct meaning in claim 1. Instead, Appellants merely urge us to adopt
one of two plausible interpretations. Appellants have not resolved the
ambiguity identified by the Examiner, namely, that it is unclear whether the
limitation is intended to be optional or whether it should be interpreted as a
required claim limitation.
We agree with the Examiner that "can be" is indefinite, because it is
susceptible to more than one plausible construction. It is unclear whether
the limitation refers to a capability that is required to be present in the
invention or whether it refers to a system capability that is a mere possibility
that is not required. In other words, it is unclear whether a vehicle
monitoring system can practice the invention of claim 1 by satisfying all of
the other limitations of claim 1, without necessarily being required to
possess the capability to obtain and process roadway conditions at a remote
facility or to direct information from a remote facility to other vehicles on a
roadway.
During prosecution, a claim is properly rejected as indefinite if it is
“amenable to two or more plausible claim constructions.” Ex parte
Miyazaki, 2008 WL 5105055 at *5 (BPAI Nov. 19, 2008) (precedential).
The Miyazaki standard for indefinite rejection is justified, at least in part,
because the applicant has the opportunity and the obligation to define his or
her invention precisely during prosecution before the PTO. Id.
Here, Appellants’ use of the phrase “can be” renders claim 1
indefinite and we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 112(b).
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Application 12/020,684
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Unpatentability of Claim 1 over Pietzsch and Yoshida
As we find claim 1 to be indefinite, we find it imprudent to speculate
as to the scope of claim 1 in order to reach a decision regarding the
Examiner's art rejection over Pietzsch and Yoshida, and we therefore reverse
pro forma the unpatentability rejection of claim 1. In re Steele, 305 F.2d
859, 862-63 (CCPA 1962).
Unpatentability of Claims 26-45
Claims 26-45 depend from claim 1 which we have determined to be
indefinite. We find it imprudent to speculate as to the scope of these
dependent claims in order to reach a decision regarding the Examiner's art
rejections, and we therefore reverse pro forma the rejections of the
remaining claims. In re Steele, supra. Pursuant to our authority under 37
C.F.R. § 41.50(b), we enter a new ground of rejection rejecting the
dependent claims as indefinite.
DECISION
We REVERSE pro forma, the Examiner’s prior art rejection of
claims 1 and 26-45
The decision of the Examiner to reject claim 1 as indefinite is
AFFIRMED.
As provided supra, claims 26-45 are rejected under 35 U.S.C.
§ 112(b), as being indefinite, as a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . 6

6 The Board enters a new ground of rejection at its discretion, and no
inference should be drawn from a failure to exercise that discretion. See 37
C.F.R. § 41.50(b); see also Manual of Patent Examining Procedure (MPEP)
§ 1213.02 (8th ed., rev. 9, August 2012). In particular, claims 26-30, 32 and
33 contain a limitation directed to a corridor of travel “assigned to the
vehicle.” Clms. App’x. In the Reply Brief, Appellants fault the Examiner
for broadly interpreting “corridor of travel” without taking into consideration
the phrase “assigned to the vehicle.” Reply Br. 2. Appellants argue that
such phrase “implies” the assignment of a corridor of travel to the vehicle in
an intelligent highway system that controls movement of the vehicle. Id.
However, apart from relying on such implication, Appellants do not support
this argument with any citation to the written description of the invention.
Id. In the event Appellants elect to reopen prosecution before the Examiner,
we suggest that the Examiner construe the phrase - “assigned to the vehicle”
– to determine whether that phrase bears the meaning argued by Appellants
in the Reply Brief and, if so, evaluate whether the claim limitation - “the
travel conditions comprise road conditions affecting the corridor of travel
assigned to the vehicle” – is definite, enabled, and adequately supported by
written description in accordance with 35 U.S.C. § 112(a) & (b).

Appeal 2012-003990
Application 12/020,684
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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