Ex Parte Stahlin

Patent Trial and Appeal Board

Jul 31, 2017

13825368 (P.T.A.B. Jul. 31, 2017)

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.
13/825,368 03/21/2013 Ulrich Stahlin 14423-083 4812
(P12541-US-PCT)
80711 7590
BGL/Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
EXAMINER
TISSOT, ADAM D
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
07/31/2017 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 ULRICH STAHLIN
Appeal 2016-008111
Application 13/825,3681
Technology Center 3600
Before KRISTEN L. DROESCH, LARRY J. HUME, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—15, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We pro forma REVERSE the rejection of claims 1—15, and enter a
new ground of rejection of claims 1—15 under 35 U.S.C. § 112, second
paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is Continental Teves AG
& Co. OHG. App. Br. 2.
Appeal 2016-008111
Application 13/825,368
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate[] to
a location determining device and to an information fusion method." Spec.
12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and formatting added to contested limitations):
1. A location determining device in a motor vehicle,
comprising
at least one reception apparatus for receiving position
and time signals from a multiplicity of satellites associated with
a global navigation system, and
a location calculation module for calculating location
information from the received position and time signals,
wherein the at least one reception apparatus is physically
integrated in the housing of an optical sensor unit, the optical
sensor unit configured to capture at least one image and output
processed image information,
wherein the housing is arranged in a region of an upper
boundary of a windshield in a passenger space of the motor
vehicle,
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Feb. 11, 2016); Reply Brief ("Reply Br.," filed Aug. 22, 2016); Examiner's
Answer ("Ans.," mailed July 28, 2016); Advisory Action ("Adv. Act.,"
mailed Oct. 13, 2015); Final Office Action ("Final Act.," mailed
June 19, 2015); and the Substitute Specification ("Spec.," filed
Mar. 21,2013).
2
Appeal 2016-008111
Application 13/825,368
wherein the housing has no more than a single first
connection to an existing vehicle data bus type and no more
than a single second connection to a vehicle power supply; and
wherein processed image information is used to
determine prevailing reception conditions for the position and
time signals, and processing and matching the position and
time signals to the prevailing reception conditions.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Turnbull US 2004/0196179 A1 Oct. 7, 2004
Broadbent US 2010/0103040 A1 Apr. 29, 2010
Rejection on AppeaP
Claims 1—15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Turnbull and Broadbent. Final
Act. 4; see also Ans. 2.
ISSUES AND ANALYSIS
Appellant argues (App. Br. 7—9; Reply Br. 2—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Turnbull and Broadbent is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] location determining device in a motor vehicle" that
includes, inter alia, "at least one reception apparatus for receiving position
3 We note the Examiner has withdrawn the indefmiteness rejection of
claim 1 under 35 U.S.C. § 112(b). See Adv. Act. 2.
3
Appeal 2016-008111
Application 13/825,368
and time signals from a multiplicity of satellites associated with a global
navigation system . . . integrated in the housing of an optical sensor unit, the
optical sensor unit configured to . . . output processed image information,"
wherein the "processed image information is used to determine prevailing
reception conditions for the position and time signals, and processing and
matching the position and time signals to the prevailing reception
conditions," as recited in independent device claim 1, and as
commensurately recited in independent method claim 9?
ANALYSIS
Although the rejection is for unpatentability under pre-AIA 35 U.S.C.
§ 103(a), the issue before us is whether the indefiniteness of claims 1—15
prevents us from reaching the issue of obviousness.
A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962); see also MPEP §§ 2143.03
and 2173.06. "[Mjeaning can be ascribed to certain terms in the claim, the
subject matter does not become obvious—the claim becomes indefinite." In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
As explained, infra, "our analysis of the claims leaves us in a
quandary as to what in fact is covered by them." Steele, 305 F.2d at 862.
Speculations and assumptions would be required to decide the meaning of
the terms employed in the claims and the scope of the claims. Therefore, we
conclude the indefiniteness of claims 1—15 prevents us from reaching the
issue of obviousness.
Consequently, we pro forma reverse the obviousness rejection of
claims 1—15. We emphasize our reversal is based on procedure rather than
4
Appeal 2016-008111
Application 13/825,368
on the merits of the obviousness rejection. The reversal does not mean that
we consider the claims to be patentable over the prior art.
NEW GROUND OF REJECTION
Indefiniteness of Claims 1—15 under Pre-AIA 35 U.S.C. § 112 f 2
It is unclear to us how a person with skill in the art would use the
recited "processed image information" (claims 1 and 9) "to determine
prevailing reception conditions for the position and time signals," and it is
further unclear how a person of ordinary skill in the art would use, process,
or match the recited "position and time signals to the prevailing reception
conditions."4
We further find, on this record, and lacking an explicit definition in
the Specification, the Examiner's broad but reasonable interpretation of
"prevailing reception conditions" in connection with the now-reversed
obviousness rejection under § 103(a) of clam 1 is not overly broad,
unreasonable, or inconsistent with Appellants' Specification. Ans. 2. (the
"'interrupted signal' is to be considered a type of the claimed 'prevailing
4 In the event of further prosecution of the application, we invite the
Examiner's attention to claims 1 and 9 to determine whether these claims
and claims 2—8 and 10—15 depending therefrom meet the enablement
requirement under pre-AIA 35 U.S.C. § 112, first paragraph, i.e., whether
any person skilled in the art can make and use the invention without undue
experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). "To
be enabling under § 112, a patent must contain a description that enables one
skilled in the art to make and use the claimed invention." Atlas Powder Co.
v. E. I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)
(citing Raytheon Co. v. Roper Corp., 724 F.2d 951, 960 (Fed. Cir. 1983)).
While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b),
no inference should be drawn when the Board elects not to do so. See
Manual of Patent Examining Procedure (MPEP) § 1213.02.
5
Appeal 2016-008111
Application 13/825,368
reception conditions' (as outlined by Appellant in paragraph 30 of [the]
Substitute Specification)."5 However, even accepting this definition of the
contested "prevailing reception conditions" limitation does not help us
understand how the claim should be interpreted.
Accordingly, we newly-reject claims 1—15 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
CONCLUSIONS6’
(1) Based upon the indefmiteness of claims 1—15, we do not sustain
the obviousness rejection of these claims under 35 U.S.C. § 103(a).
(2) Claims 1—15 stand newly rejected under pre-AIA 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention.
5 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
6 We further invite the Examiner's attention to dependent claim 15 to
determine whether this claim meets the requirements of pre-AIA 35 U.S.C.
§112, fourth paragraph. Appellant stated the subject matter of claim 15 had
been incorporated into each of independent claims 1 and 9, and that claim 15
had been canceled. See Amendment filed Apr. 27, 2015, p. 8. On this
record, however, it appears claim 15 has not been canceled, and is therefore
redundant and appears to not be in compliance with the provisions of § 112,
fourth paragraph.
6
Appeal 2016-008111
Application 13/825,368
DECISION
We pro forma reverse the Examiner's decision rejecting claims 1—15
under 35 U.S.C. § 103(a).
This decision contains a new ground of rejection of claims 1—15
pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
7
Appeal 2016-008111
Application 13/825,368
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
REVERSED
37 C.F.R. §41.500?)
8