Ex Parte Stam et al

Board of Patent Appeals and Interferences

May 24, 2012

10783131 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH S. STAM, MARK W. PIERCE, JON H. BECHTEL,
WILLIAM R. SPENCE, ROBERT R. TURNBULL and EL-SAYED EID
____________

Appeal 2009-013302
Application 10/783,131
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-59, 63, and 68. App. Br. 8.1 Claims 60-
62, 64-67, and 69-73 are objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form. App. Br. 8,
Ans. 2. The Appellants’ representative presented oral argument for this
appeal on May 8, 2012. We have jurisdiction over the appeal under 35
U.S.C. § 6(b). We AFFIRM-IN-PART.

REJECTIONS
Claims 1-39, 42-57, and 63 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.2 Ans. 3, 4, 8.
Claims 28 and 29 are rejected under 35 U.S.C. § 102(b) as anticipated
by Stam (US 6,008,486, issued Dec. 28, 1999). Ans. 5.
Claims 14, 16-18, and 20-23 are rejected under 35 U.S.C. § 102(e) as
anticipated by Jackson (US 6,806,485 B2, issued Oct. 19, 2004). Ans. 5.
Claims 28-31 are rejected under 35 U.S.C. § 102(e) as anticipated by
Sarwari (US 2003/0210334 A1, published Nov. 13, 2003). Ans. 5.
Claims 1-13, 15, 19, 24-29, 31-33, 36-49, 54-59, 63, and 68 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Jackson, Schofield
(US 5,796,094, issued Aug. 18, 1998), and Shimizu (US 6,515,271 B1,
issued Feb. 4, 2003). Ans. 6.

1 Citations to the App. Br. are directed to the Appeal Brief filed October 15,
2007.
2 The Examiner denominated new grounds of rejections for some of the
claims. Ans. 3, 8.
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CLAIMED SUBJECT MATTER
Claims 1, 14, 28, 36, 40, 42, and 58 are the independent claims on
appeal. Claim 1 is illustrative of the subject matter on appeal and recites:
1. An automatic vehicle equipment control
system, comprising:
at least one imager comprising at least one
image sensor and at least one other component
selected from the group comprising: at least one
temperature sensor, at least one control output and
at least one low voltage differential signal
transceiver;
at least one enhanced transceiver; and
at least one interconnection between said at
least one imager and said at least one enhanced
transceiver, wherein at least one vehicle equipment
control signal is generated as a function of at least
a portion of at least one image.

OPINION
Indefiniteness
First, the Examiner rejects claims 1, 14, 28, 36, and 42 as indefinite
under 35 U.S.C. § 112, second paragraph, because the claims lacks sufficient
structure for producing the vehicle equipment control signal required by
their limitation “wherein at least one vehicle equipment control signal is
generated as a function of at least a portion of at least one image.” Ans. 4.
More specifically for claims 1, 14, and 28, the Examiner determines that the
components of the imager, including the low voltage differential signal
transceiver recited by claims 1, 14, and 28, and the temperature sensor
recited by claim 1, do not produce vehicle equipment control signals. Ans.
4. The Examiner determines the recited “control output”, as recited in
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claims 1, 14, and 28, may be the only component capable of conceivably
producing a vehicle equipment control signal. Ans. 4. As such, it appears
the Examiner finds that claims 1, 14, and 28 are indefinite because it is
unclear if the “control output” is the only component capable of producing a
vehicle equipment control signal. See Ans. 4.
The Appellants contend that the claims are not indefinite because each
independent claim 1, 14, 28, 36, and 42 includes recited structural elements
whereby “any one or more than one [structural element] may generate at
least one vehicle equipment control signal as a function of at least a portion
of at least one image.” App. Br. 26.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). In the case of claims 1 and 14, the limitation “wherein at least one
vehicle equipment control signal is generated as a function of at least a
portion of at least one image”, (hereinafter “wherein clause”), is merely a
functional limitation of the “automatic vehicle control system” as recited in
the preambles of claims 1 and 14. A patent applicant is free to recite
features of an apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971). So even though claims 1 and
14 do not recite the particular component of the automatic vehicle control
system, this is a matter of breadth, not indefiniteness. Merely that a claim is
broad does not mean that it is indefinite. See In re Johnson, 558 F.2d 1008,
1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); In
re Gardner, 427 F.2d 786, 788 (CCPA 1970). The fact that the claim does
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not particularly recite the component that performs the function of the
automatic vehicle control systems of claims 1 and 14 is not dispositive of
indefiniteness.
Claim 28 recites “[a]n imager” including the “wherein clause” and is
not directed to an automatic vehicle control system. In this case, the
“wherein clause” recites a function of the imager to generate at least one
vehicle equipment control signal. Hence, claim 28 is merely broad not
indefinite.
Claim 36 recites “[a]n enhanced transceiver” including “at least one
memory . . . configured to communicate with an imager,” the “wherein
clause,” and is not directed to an automatic vehicle control system. In this
case, the “wherein clause” recites a function of the imager to generate at
least one vehicle equipment control signal. Since the wherein clause recites
“at least one vehicle equipment control signal is generated as a function of at
least a portion of at least one image,” the signal is generated as a function of
at least one image. The enhanced transceiver includes at least one memory
“configured to communicate with an imager” and as such, one of ordinary
skill in the art would understand that an image required by the wherein
clause is a functional recitation of the imager that the at least one memory is
configured to communicate with. Hence, claim 36 is merely broad not
indefinite.
Claim 42, is similar to claims 1 and 14, in that it recites “[a]n
automatic vehicle equipment control system” including an imager and the
“wherein clause.” As discussed supra, such is a matter of breadth, not
indefiniteness. Hence, claim 42 is merely broad not indefinite.
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Second, the Examiner rejects claims 1-35, 37, 44, 46-48, 50-53, and
63 as indefinite under 35 U.S.C. § 112, second paragraph, because each of
claims 1, 3, 10, 14, 16-18, 20, 21, 28, 29, 37, 44, 46-48, 50-53 and 63
includes the phrase “selected from the group comprising” setting forth an
improper open-ended Markush group. 3, 4 Ans. 8. The Appellants do not
present an argument against this ground of rejection. See also Abbott Labs.
v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280-81 (Fed. Cir. 2003) (“a
Markush group . . . must be characterized with the transition phrase
‘consisting of,’ rather than ‘comprising’ or ‘including’.” (internal citations
omitted); MPEP 2173.05(h) (8th ed., Rev. 7, July 2008) (“It is improper to
use the term ‘comprising’ instead of ‘consisting of.’ Ex parte Dotter, 12
USPQ 382 (Bd. App. 1931)”). Thus, the Examiner’s rejection of claims 1,
3, 10, 14, 16-18, 20, 21, 28, 29, 37, 44, 46-48, 50-53 and 63, as well as
claims 2, 4-9, 11-13, 15, 19, 22-27, and 30-35, which depend from these
claims5, is summarily sustained. See In re Berger, 279 F.3d 975 (Fed. Cir.
2002) (holding that Board did not err in sustaining a rejection under 35
U.S.C. § 112, second paragraph, when the Appellant failed to contest the
rejection on appeal.)
Third, the Examiner rejects claims 1-27 and 42-57, as indefinite under
35 U.S.C. § 112, second paragraph, because the preambles of independent
claims 1, 14, and 42 recite “[a]n automatic vehicle equipment control

3 Denominated as a new ground of rejection. Ans. 3, 8.
4 Claims 22 and 23 also include the phrase “selected from the group
comprising,” but have not been specifically identified as indefinite in the
Examiner’s rejection. Ans. 8, App. Br., Claims. Appendix.
5 Claims 45, 49, and 54-57 depend either directly or indirectly on claim 44,
but have not been rejected by the Examiner under this new ground of
rejection. See Ans. 8, App. Br., Claims. Appendix.
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system,” and there are no structures claimed that are capable of
automatically controlling the vehicle.6, 7 Ans. 8. The Appellants do not
present an argument against this ground of rejection. Thus, the Examiner’s
rejection of claims 1, 14, and 42, and as well as claims 2-13, 15-27, and 43-
57, which depend from claims 1, 14, and 42, is summarily sustained. See In
re Berger.

Anticipation
Stam
Claim 28 recites an imager including “at least one other component
selected from the group comprising: at least one control output and at least
one low voltage differential signal transceiver.” App. Br., Claims Appendix.
The Appellants contend that Stam’s image sensor “does not have
either a control output or a low voltage differential signal transceiver.” App.
Br. 35. The Examiner finds Stam discloses at least a control output. Ans.
10, citing to Stam, col. 5, ll. 52-56 (“[o]utput circuit 84 produces, in each
frame period and for each pixel sensor 20 in the corresponding column, a
value representing the light incident on pixel sensor 20 over two frame
periods, effectively doubling the dynamic range of pixel sensor 20.”) The
Examiner, at page 5 of the Answer, also cites to column 5, lines 66-column
6, line 1 of Stam, which states “for example, vehicle rear viewing systems

6 Denominated as a new ground of rejection. Ans. 3, 8.
7 Although the ground of rejection under 35 U.S.C. § 112, second
paragraph, does not list claims 55-57, which are directly or indirectly
dependent on claim 44, this appears to be a typographical error because the
Examiner determines that “[a]ll claims depending from a rejected base claim
are also rejected as containing the same deficiencies.” Ans. 8.
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where a well lit street may wash out details from an adjacent sidewalk.” The
Appellants do not cogently explain how the Examiner’s finding(s) is
incorrect. The Appellants merely reiterate the claim limitations and do not
present separate arguments for patentability of these claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”)
Thus, the rejection of claim 28 as anticipated by Stam is sustained.
The Appellants do not offer additional arguments regarding the anticipation
rejection of claim 29, but merely rely on its dependency from independent
claim 28. App. Br. 35. As we sustain the rejection of claim 28, we also
sustain the rejection of claim 29.
Jackson
Claim 14 recites an automatic vehicle equipment control system
including “an imager comprising . . . at least one other component selected
from the group comprising: at least one control output and at least one low
voltage differential signal transceiver.” App. Br., Claims Appendix.
The Appellants contend that Jackson “does not have either a control
output or a low voltage differential signal transceiver.” App. Br. 36. The
Examiner finds Jackson “discloses an automatic vehicle control equipment
system which comprises an image sensor (Fig. 1; col. 3, lines 18-23) and at
least one control output (col. 3, lines 37-40).” Ans. 5. The Examiner, at
page 5 of the Answer, also cites to column 2, lines 8 and 9 of Jackson, which
states “[f]or example, the present invention can include a controller for
vehicle headlights, the controller operable to receive the 10 control signal
from the processor and engage the headlights of a vehicle.” See Ans. 5. The
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Appellants merely reiterate the claim limitations and do not cogently explain
how the Examiner’s finding(s) is incorrect.
Thus, the rejection of claim 14 as anticipated by Jackson is sustained.
The Appellants do not offer additional arguments regarding the anticipation
rejection of claims 16-18 and 20-23, but merely rely on their dependency
from independent claim 14. App. Br. 36-37. As such, we sustain the
rejection of claim 14, and we also sustain the rejection of claims 16-18 and
20-23.
Sarwari
Claim 28 recites an imager including “at least one other component
selected from the group comprising: at least one control output and at least
one low voltage differential signal transceiver.” App. Br., Claims Appendix.
The Appellants contend “Sarwari does not have either a control output
or a low voltage differential signal transceiver.” App. Br. 38. The Examiner
finds “image sensor (216) [0015] with at least one control output and
processing circuitry on a common substrate (200) [0023].” Ans. 10. The
Examiner further finds that the limitation “wherein at least one vehicle
equipment control signal is generated as a function of at least a portion of at
least one image” does not distinguish claim 28 from being read on the
structure of Sarwari. See Ans. 6.
Thus, the rejection of claims 28-31 as anticipated by Sarwari is
sustained. The Appellants do not offer additional arguments regarding the
anticipation rejection of claims 29-31, but merely rely on their dependency
from independent claim 28. App. Br. 38-39. As we sustain the rejection of
claim 28, we also sustain the rejection of claims 29-31.

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Obviousness
The Examiner rejects independent claims 1, 28, 36, 40, 42 and 58
under 35 U.S.C. § 103(a) as unpatentable over Jackson in view of Schofield
and Shimizu. Ans. 6. More specifically, the Examiner makes the following
findings with respect to independent claims 1, 28, 36, 40, 42 and 58:
Jackson, Jr. discloses an automatic vehicle control
equipment system as noted above in paragraph 9.3
whereby image information is used for controlling
vehicle equipment (i.e., headlights). Additional
details of a typical headlight control system which
utilizes images from an imaging sensor is
exemplified by Schofield et al. (see Abstract;
Figure 3; column 11, 58-64).
Ans. 6.
The Examiner also finds that Shimizu discloses an imaging sensor
unit, including a low voltage differential signal (LVDS) transceiver that
permits high transmission rates with reduced electromagnetic interference,
and provides a small size, low cost means of providing imaging data that is
less susceptible to noise, consumes less power. Ans. 6-7. The Examiner
concludes that “[o]ne of ordinary skill in the art would have found all these
characteristics beneficial in control systems which utilize image information
to carry out control processes, such as the vehicle-based systems of the type
exemplified by Jackson, Jr. and Schofield et al.” Ans. 7; see also Ans. 11-
12.
The Appellants contend that the Examiner has not provided a rationale
why the modification of Jackson in view of Schofield and Shimizu would
have been desirable. See App. Br. 41. We agree. Although the Examiner
provided reasoning to modify the combination of Jackson and Schofield
with the teachings of Shimizu, the Examiner does not articulate any reason
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to combine the disclosure of Jackson with the disclosure of Schofield. With
respect to Schofield, the Examiner merely states that, “[a]dditional details of
a typical headlight control system which utilizes images from an imaging
sensor is exemplified by Schofield et al.” Ans. 6. As such, the Examiner
has not articulated adequate reasoning with rational underpinning as to why
one of ordinary skill in the art would have combined the teachings of
Jackson with Schofield and Shimizu. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Thus, the Appellants’ contention is persuasive, and the rejection of
claims 1-13, 15, 19, 24-29, 31-33, 36-49, 54-59, 63 and 68 as unpatentable
over Jackson, Schofield, and Shimizu is not sustained.

DECISION
We AFFIRM the rejection of: claims 1-35, 37, 42-57 and 63 under 35
U.S.C. § 112, second paragraph, as being indefinite; claims 28 and 29 under
35 U.S.C. § 102(b) as anticipated by Stam; claims 14, 16-18, and 20-23
under 35 U.S.C. § 102(e) as anticipated by Jackson; and, claims 28-31 under
35 U.S.C. § 102(e) as anticipated by Sarwari.
We REVERSE the rejections of: claims 36, 38, and 39 under 35
U.S.C. § 112, second paragraph, as being indefinite; and, claims 1-13, 15,
19, 24-29, 31-33, 36-49, 54-59, 63, and 68 under 35 U.S.C. § 103(a) as
unpatentable over Jackson, Schofield, and Shimizu.
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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-IN-PART

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