Ex Parte TAVA

Patent Trial and Appeal Board

Sep 4, 2018

14141521 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/141,521 12/27/2013
23911 7590 09/06/2018
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Marcello TA VA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
080437.66074US 9168
EXAMINER
WILTEY, NICHOLAS K
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
09/06/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edocket@crowell.com
tche@crowell.com
apomeroy@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCELLO TA VA
Appeal2018-000978
Application 14/141,521 1
Technology Center 3600
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1---6. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to the Appellant, "Bayerische Motoren W erke
Aktiengesellschaft ... is the real party in interest." Appeal Br. 1.
Appeal2018-000978
Application 14/141,521
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 4 are the independent claims on appeal. Claim 1,
reproduced below with minor formatting changes, is illustrative of the
subject matter on appeal.
1. An information device for a vehicle, comprising:
a route determination unit operatively configured to:
determine, as a function of a provided starting point and a
destination point, a vehicle route from the starting point to
the destination point for the vehicle, and
generate a signal for displaying at least a portion of the
vehicle route on a display unit;
a determination unit operatively configured to:
determine, as a function of the vehicle route, at least one
public transportation vehicle route having at least one stop
within a predefined maximal distance to the vehicle route,
and
generate a signal to display at least a portion of the at least
one public transportation vehicle route, said portion
comprised of a plurality of determined stops of the public
transport vehicle, on the display unit; and
a selection unit operatively configured to:
cause the display unit to visibly signal, as a function of, in
each case, one predefined detected angle-of-rotation
change of a rotationally movable input element of a
rotating actuator, the plurality of determined stops
corresponding to a predefined sequence, each individually
as having been selected, and
generate, as a function of a predefined user input, a signal
for displaying on the display unit a stopping point along
the at least one public transportation vehicle route at a
correspondingly selected stop,
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Application 14/141,521
wherein the at least one public transportation vehicle route
is displayed in a superimposed manner with respect to the at least
portion of the vehicle route being displayed on the display unit,
and
wherein the at least one public transportation vehicle route
is different from the vehicle route.
Rejections
I. Claims 1---6 stand rejected under 35 U.S.C. § 101 as patent
ineligible.
II. Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Gutman (US 2012/0173135 Al, pub. July 5, 2012),
Evanitsky (US 2010/0268450 Al, pub. Oct. 21, 2010), and Bonne
(US 2011/0025652 Al, Feb. 3, 2011).
III. Claims 3 and 6 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Gutman, Evanitsky, Bonne, and He et al.
(US 2005/0137758 Al, pub. June 23, 2005) ("He").
ANALYSIS
Rejections 1-111
The issues presented in this appeal necessarily concern the metes and
bounds of the term "determination unit," as recited in independent claims 1
and 4. See, e.g., Appeal Br. 6, 9. In view of our determination that
independent claims 1 and 4 are indefinite because of the term "determination
unit," infra, it follows that the rejections of these claims under 35 U.S.C.
§§ 101 and I03(a) must fall because they are necessarily based on a
speculative assumption as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962). It should be understood, however, that
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Application 14/141,521
our decision in this regard is proforma and based solely on the
indefiniteness of the claimed subject matter set forth below, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
New Ground of Re} ection
Claims 1---6 are newly rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Independent claim 1 is directed to "an information device for a vehicle,"
which includes:
a determination unit operatively configured to:
determine, as a function of the vehicle route, at least one
public transportation vehicle route having at least one stop
within a predefined maximal distance to the vehicle route,
and
generate a signal to display at least a portion of the at least
one public transportation vehicle route, said portion
comprised of a plurality of determined stops of the public
transport vehicle, on the display unit.
Appeal Br. 11. Independent claim 4, is directed to "[a]n information system
for a vehicle," which includes an "information device" having the identical
"determination unit," as recited in claim 1. Id. at 12-13.
We determine that the claim term "determination unit" is indefinite
because the term is a means-plus-function term subject to 35 U.S.C. § 112,
sixth paragraph, and lacks corresponding structure in the Specification. See
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015)
("Under 35 U.S.C. § 112, paras. 2 and 6 ... if a person of ordinary skill in
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Application 14/141,521
the art would be unable to recognize the structure in the specification and
associate it with the corresponding function in the claim, a means-plus-
function clause is indefinite.").
The Appellant's failure to use the word "means" in the "determination
unit" limitation creates a rebuttable presumption that the inventor did not
intend this claim limitation to be governed by§ 112, sixth paragraph. See
Personalized Media Commc 'ns, LLC v. Int 'l Trade Comm 'n, 161 F .3d 696,
703-704 (Fed. Cir. 1998). However, this presumption may be overcome if
the "determination unit" limitation "recites 'function without reciting
sufficient structure for performing that function."' Williamson, 792 F.3d at
1348--49 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
2000)).
First, the term "unit" in "determination unit" is a generic placeholder
for either software and/or hardware that performs the claimed functions, and
as such, tantamount to the term "means" because it fails to connote
sufficiently definite structure and, in the context of claim 1, invokes § 112,
sixth paragraph. The use of the term "determination" before "unit" does not
modify the term "unit" to add sufficient structure to preclude the invocation
of§ 112, sixth paragraph; rather the term "determination," generally,
identifies the claimed unit's function. See also Manual of Patent Examining
Procedure (MPEP) § 2181(I)(A) (9th ed., rev. 8, Jan. 2018)). Second, the
term "determination unit" is linked to the phrase "operatively configured to,"
i.e., a function. See id. § 2181 (I)(B). Third, the term "determination unit" is
not modified by sufficient structure for achieving the claimed function. See
id. § 2181 (I)(C).
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The Specification supports the foregoing analysis of the claimed term
"determination unit." The Specification describes that "determination unit
5" is included as part of "information device 1." Spec. ,r 19. With regard to
the "information device," the Specification describes that information device
1 "comprises, in particular, a computing unit having a data and program
memory and at least one correspondingly predefined processor." Id. Figure
1 depicts this relationship and is shown below:
---··-·-·'"'·······-............... "'
' '
"Figure 1 is a block diagram view of an information system for a vehicle."
Spec. ,r 17.2 With regard to "determination unit 5," the Specification
describes:
2 Figure 1 includes a "route determination unit" and a "selection unit,"
which are depicted in the same manner as the "determination unit." Claims
1 and 4 recite a "route determination unit" and a "selection unit" along with
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The determination unit 5 is designed for determining, as a
function of the determined route RT, at least one stop 15, 17, 19,
21, 23, 25, 27 of a public transport vehicle within a predefined
maximal distance from the route RT. It is further designed for
generating a signal for the visual signaling of at least a partial
number of determined stops 15 to 27 on the display unit 9. The
stops 15 to 27 are, for example, signaled by means of a small
circle or a circular ring and, if required, by means of an additional
symbol, such as a "U", which may, for example, indicate a U-
Bahn (subway).
Id. ,r 23; see id. ,r,r 7, 24, Abstract, original claim 1. The Specification also
describes that "determination 5 may form a client of a server/client
structure," where "the determination unit 5 is designed for transmitting the
determined route RT by way of the communication interface to the server."
Id. ,r 25 ("An interpreter for KML elements will then be developed in the
determination unit."); see Spec. ,r 7. In view of the foregoing, we determine
the term "determination unit" is not modified by sufficient structure for
achieving the claimed functions.
In view of the foregoing, we determine that the presumption against
invoking§ 112, sixth paragraph has been overcome, and, thus, § 112, sixth
paragraph, does apply to the claim term "determination unit," as recited in
independent claims 1 and 4.
For a computer-implemented claim limitation interpreted under § 112,
sixth paragraph, the corresponding structure must include the algorithm
needed to transform the general purpose computer or processor disclosed in
the specification into the special purpose computer programmed to perform
functional language. Appeal Br. 11, 12-13. We leave it to the Examiner to
determine whether the terms "route determination unit" and "selection unit"
are subject to 35 U.S.C. § 112, sixth paragraph.
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the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int 'l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the specification must
sufficiently disclose an algorithm to transform the general purpose computer
or processor to a special purpose processor programmed to perform the
disclosed algorithm. Id. at 1338. An applicant may express the algorithm in
any understandable terms including as a mathematical formula, in prose, in a
flow chart, or "in any other manner that provides sufficient structure."
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
In this case, the Specification fails to provide instructions on how the
determination unit performs its claimed function. The Specification is silent
regarding any algorithm, or sequence of steps, specifying how to "determine,
as a function of the vehicle route, at least one public transportation vehicle
route having at least one stop within a predefined maximal distance to the
vehicle route" and "generate a signal to display at least a portion of the at
least one public transportation vehicle route, said portion comprised of a
plurality of determined stops of the public transport vehicle, on the display
unit," as claimed. As such, we determine that the term "determination unit,"
as recited in claim 1, is a means-plus-function term subject to 35 U.S.C.
§ 112, sixth paragraph, and lacks corresponding structure in the
Specification.
Thus, we newly reject claim 1 under 35 U.S.C. § 112, second
paragraph, as indefinite. Independent claim 4 includes a substantially
similar limitation as claim 1 and claims 2, 3, 5, and 6 depend from one of
claims 1 and 4. Appeal Br. 11-13. For the same reasons, we newly reject
claims 2-6 under 35 U.S.C. § 112, second paragraph, as indefinite.
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DECISION
We REVERSE proforma the Examiner's rejections of claims 1---6
under 35 U.S.C. §§ 101 and 103.
We enter a NEW GROUND OF REJECTION of claims 1---6 under
35 U.S.C. § 112, second paragraph, as indefinite pursuant to our authority
under 37 C.F.R. § 4I.50(b).
37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.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 prosecution will be
remanded to the examiner. . . .
(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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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