Ex Parte Toledo et al

Patent Trial and Appeal Board

Dec 17, 2015

12554114 (P.T.A.B. Dec. 17, 2015)

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.
12/554,114 09/04/2009 Salvador Toledo 81196104 7870
28866 7590 12/17/2015
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
LU, SHIRLEY
ART UNIT PAPER NUMBER
2686
MAIL DATE DELIVERY MODE
12/17/2015 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 SALVADOR TOLEDO, JANET MEISE, DIRK
GUNIA, and TORSTEN WEY
____________________

Appeal 2014-000488
Application 12/554,114
Technology Center 2600
____________________

Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a vehicle park assist system. Spec., Title.
Claim 7, reproduced below, is illustrative of the claimed subject matter:
7. A method for parking a vehicle in a target parking spot
comprising the steps of:
(a) providing a vehicle having a sensing system and a
park assist system operatively connected thereto, the sensing
system including at least one ultrasonic sensor which provides
an input signal to the park assist system;
(b) scanning neighboring objects using the ultrasonic
sensor to determine if a feasible target parking space is
available for parking the vehicle, the neighboring objects
including at least one object either in front of or behind the
vehicle when parked in the target parking space and at least one
object alongside the vehicle when parked in the target parking
space;
(c) using the park assist system to determine whether
there is a sufficient slot length in which to park the vehicle and
to determine a height of the object alongside which the vehicle
is to be parked in the target parking space in order to park the
vehicle at a predetermined lateral distance from the object
alongside the vehicle dependent upon the particular detected
height of such object relative to a predetermined height of a
bottom of an associated door of the vehicle; and
(d) parking the vehicle in the target parking space using
the park assist system wherein the vehicle is parked at the
predetermined lateral distance from the object alongside the
vehicle based upon the detected height of such object relative to
the predetermined height of the bottom of the associated vehicle
door.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Maier
Bolourchi
Boss
Herbert
US 2005/0203686 A1
US 2006/0235590 A1
US 2009/0043430 A1
US 2009/0271114 A1
Sept. 15, 2005
Oct. 19, 2006
Feb. 12, 2009
Oct. 29, 2009

REJECTIONS
The Examiner made the following rejections:
Claims 1, 7, and 14 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 11 and
20 of U.S. Application No. 12/557,604. Final Act. 2–3.
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boss, Herbert, Maier, and Bolourchi. Final Act. 3–8.

APPELLANTS’ CONTENTIONS1
1. Appellants contend, because “[t]here are limitations in the claims of each
patent/application that are distinct from and not specifically claimed in
the other,” the double patenting rejection is improper. App. Br. 10.
2. Appellants contend, because “none of the cited references teaches or
suggests a park assist system that determines . . . a height of an object
alongside which the vehicle is to be parked within a slot length for
parking a vehicle,” the rejection under 35 U.S.C. § 103(a) is improper.
App. Br. 12.

1 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of the contentions discussed below is
dispositive of the appealed rejections.
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ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 27–36)
and Reply Brief (Reply Br. 2–5), the dispositive issues presented on appeal
are whether the Examiner erred by failing to provide prima facie cases of
double patenting and obviousness.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting independent claims 1, 7,
and 14 on the ground of nonstatutory obviousness-type double patenting
and in rejecting claims 1–20 under 35 U.S.C. § 103(a). We agree with
Appellants’ conclusions as to the rejections of the claims.

Obviousness-Type Double Patenting Rejection
In connection with the nonstatutory obviousness-type double
patenting rejection, Appellants argue, in contrast to claims 11 and 20 of the
‘604 application,
[T]he present application and independent claims 1, 7 and 14 relate to
a vehicle (V) and method of operation where the height (H) of an
object (32 or 328) alongside which a vehicle (V) is to be parked is
detected and a lateral distance (LO) is determined based on this height
(H) relative to a height of a bottom of an associated door that is
alongside the object (32 or 328).
App. Br. 9. In contrast, the Examiner provides little or no reasoning in
support of the conclusion the claims of the subject application are not
patentably distinct from claims 11 and 20 of U.S. Application No.
12/557,604 (now issued as claims 1 and 10 of U.S. Patent 8,378,850.)
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Instead, the Examiner merely concludes “the instant claim(s) is/are broader
than the corresponding claim(s) [of the ‘604 application.]” Final Act. 3. In
response to Appellants’ argument, the Examiner again provides a conclusory
assertion that “both patents/applications are directed towards determining
whether there is sufficient slot length in which to park a vehicle.” Ans. 3.
We find Appellants’ arguments are persuasive of Examiner error.
Absent sufficient evidence or explanation by the Examiner, we agree with
Appellants that the pending claims’ requirement of determining a height of
an object alongside which the vehicle is to be parked in the target parking
space in order to park the vehicle a predetermined lateral distance from the
object is not found in claims 1 and 10 of the ‘604 application as issued.
Accordingly, because the Examiner did not establish a proper case of prima
facie obviousness-type double patenting rejection, we do not sustain the
rejection.

Rejection of claims 1–20 under 35 U.S.C. § 103(a)
In connection with the rejection of claims 1–20 under 35 U.S.C.
§ 103(a), the Examiner finds Boss’s method of parking a vehicle discloses
all of limitations (a) and (b) and a portion of limitation (c) of claim 7, citing
in general to substantially the entirety of the Boss publication (i.e., all except
the cross-reference to related applications and statement of the field of the
invention.) Final Act. 4. The Examiner finds the remaining limitations of
claim 7 are disclosed by Boss, Herbert, Maier, and/or Bolourchi, supporting
the rejection by summarizing the references in general but without citing to
specific portions of the references or indicating which elements of the claim
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are disclosed by the respective references. Final Act. 4–6. Appellants
argue:
None of the cited references . . . has a park assist system that
determines . . . a height of an object alongside which the vehicle is to
be parked within a slot length for parking a vehicle. Moreover, none
of the cited references have a park assist system that determines a
lateral distance from the object to park the vehicle alongside this
object based upon the height of the object relative to a bottom of an
associated door. These elements are completely missing from the
cited references.
App. Br. 10–11.
We find Examiner has not articulated an analysis or mapping of
independent claims 1, 7, and 14 on appeal, other than a repeated citation to
the entirety of four references for each one of these claims. Final Act. 3–8.
We also find the Examiner has not adequately responded to Appellants’
contentions in the Appeal Brief regarding these claims. Ans. 3–5.
The Federal Circuit has held, “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The
Federal Circuit has found this burden is met by “adequately explain[ing] the
shortcomings it perceives so that the applicant is properly notified and able
to respond.” Id. at 1370. It is only “when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection” that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). We find the Examiner has not
met this burden in establishing a prima facie case of obviousness of
independent claims 1, 7, and 14.
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To support the rejection we would have to resort to conjecture
regarding the Examiner’s basis for mapping the various limitations of the
independent claims to the Boss, Herbert, Maier, and/or Bolourchi references.
Such conjecture on our part concerning which references and which
teachings apply to which claims would impermissibly require us to resort to
speculation and/or unfounded assumptions. See, e.g., Ex parte Braeken, 54
USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance.”) We decline to engage in such speculation and assumptions to
make up for the deficiency in the Examiner's rejection which fails to set
forth a prima facie case of obviousness for claims 1, 7, and 14 pursuant to
the requirements of § 132.
Accordingly, on the record before us, we cannot sustain the
Examiner's rejection of independent claims 1, 7, and 14 or, for the same
reasons, the rejection of dependent claims 2–6, 8–13, and 15–20 under 35
U.S.C. § 103(a) as being unpatentable over Boss, Herbert, Maier, and
Bolourchi.

CONCLUSIONS
The Examiner erred in rejecting independent claims 1, 7, and 14 on
the ground of nonstatutory obviousness-type double patenting.
The Examiner erred in rejecting claims 1–20 under 35 U.S.C.
§ 103(a).

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DECISION
The Examiner’s decision to reject claims 1–20 is reversed.

REVERSED

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