FORD GLOBAL TECHNOLOGIES, LLCDownload PDFPatent Trials and Appeals BoardDec 30, 20202020003081 (P.T.A.B. Dec. 30, 2020) Copy Citation 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. 15/437,596 02/21/2017 Pankaj KUMAR 83759801 1129 28395 7590 12/30/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER KAN, YURI ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 12/30/2020 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PANKAJ KUMAR, IMAD HASSAN MAKKI, FAKHREDDINE LANDOLSI, and HASSENE JAMMOUSSI ____________ Appeal 2020-003081 Application 15/437,596 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL L. WOODS, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Aug. 23, 2019, hereinafter “Final Act.”) rejecting claims 1–16.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Ford Global Technologies, LLC, is identified as the real party in interest in Appellant’s Appeal Brief (filed Jan. 9, 2020, hereinafter “Appeal Br.”). Appeal Br. 1. 2 Claims 17–20 are withdrawn. Appeal Br., Claims App. 3. Appeal 2020-003081 Application 15/437,596 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention relates to a system “for statistical vehicle element failure analysis.” Spec. para. 1. Claims 1 and 9 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A system comprising: a processor configured to: receive report of a vehicle part malfunction, along with vehicle travel history covering at least a predefined time period, prior to the malfunction; obtain condition data relating to environmental conditions encountered by the vehicle during the travel history based on vehicle locations indicated in the travel history compared to identifiable environmental conditions associated with the locations at the time the vehicle was at those locations, the time also indicated in the travel history; compare the obtained condition data to other condition data obtained from other vehicles reporting the same part malfunction; and create a malfunction likelihood record for the vehicle part, including an association with a condition occurring over a threshold percentage of times with regards to all obtained condition data relating to the part malfunction and an indicator of a likely failure when a vehicle encounters the condition. Appeal 2020-003081 Application 15/437,596 3 REJECTIONS I. The Examiner rejects claim 11 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement.3 II. The Examiner rejects claims 1–11 and 13–16 under 35 U.S.C. § 103 as being unpatentable over Breed,4 Yu,5 and Yamada.6 III. The Examiner rejects claim 12 under 35 U.S.C. § 103 as being unpatentable over Breed, Yu, Yamada, and Tatourian.7 ANALYSIS Rejection I The Examiner finds that the limitation of “a government-defined border” is not adequately supported by Appellant’s original disclosure. Final Act. 3. Appellant argues that “a government-defined border includes, for example, a city, a municipality, a township, a state, etc.” Appeal Br. 6. As support, Appellant cites to paragraph 64 of the Specification, which describes “a failure rate [that] correlates to a region,” and to paragraph 48, which “discusses reporting city-wide coordinates and correlating results to a city, as well as correlating results to a bounded region.” Id. Thus, according to Appellant, “a skilled artisan would understand that a city is a bounded 3 The rejection of claim 1 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement was withdrawn by the Examiner. See Examiner’s Answer (dated Jan. 30, 2020, hereinafter “Ans.”) 3. 4 Breed, US 2012/0296567 Al, published Nov. 22, 2012. 5 Yu et al., US 8,711,003 B2, issued Apr. 29, 2014. 6 Yamada et al., US 2018/0068320 Al, published Mar. 8, 2018. 7 Tatourian et al., US 2016/0284212 Al, published Sept. 29, 2016. Appeal 2020-003081 Application 15/437,596 4 region, and that a reasonable way to describe multiple bounded regions such as cities, but which are not all specifically cities, is to describe them as regions having a government-defined border.” Id. In response, the Examiner takes the position that “the scope of ‘government-defined border’ . . . is much broader than what was originally disclosed.” Ans. 4 (emphasis added). According to the Examiner, because “[t]he [S]pecification only explicitly recites ‘boundaries of a city’” (see Spec. para. 48), Appellant’s original disclosure “does not provide possession of all ‘government defined borders’ such as ‘municipalities, townships ...’ and certainly does not encompass military zones, school zones and other government-defined borders . . . which this phrase encompasses.” Id. We appreciate the Examiner’s position that a Specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. § 112 “merely by clearly describing one embodiment of the thing claimed.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005). However, broad claims may be adequately supported by a single description of an apparatus or structure, but the inquiry into whether the description requirement is met must be determined on a case-by- case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). In this case, the Specification describes a “locality” as “bounded by defined boundaries” and refers to the “boundaries of a city.” Spec. para. 48. We agree with Appellant that a person of ordinary skill in the art “would understand that a city is a . . . locality having a government defined border.” Reply Brief (filed Mar. 17, 2020, hereinafter “Reply Br.”) 2 (citing Spec. para. 48). As such, Appellant’s Specification describes a “locality,” such as a city, “bounded by defined boundaries,” such as “a Appeal 2020-003081 Application 15/437,596 5 government defined border.” Accordingly, the Specification supports the limitation of a “locality having a government-defined border,” as recited by claim 11. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 112(a) of claim 11 as failing to comply with the written description requirement. Rejection II The Examiner finds Breed inherently discloses a processor configured to “receive report of a vehicle part malfunction, along with vehicle travel history covering at least a predefined time period, prior to the malfunction,” as recited by each of independent claims 1 and 9. Final Act. 4–5 (citing Breed, paras. 197, 420, 490, 497, 538); see also Appeal Br., Claims App. 1– 2. In particular, the Examiner finds that making provisions “to record the output of some or all of the vehicle data and later make it available to the vehicle manufacturer,” as per Breed’s paragraph 197, inherently includes “vehicle travel history” data “covering at least a predefined time period.” Final Act. 5 (emphasis added). The Examiner further finds that “stor[ing] the data from the analog-to-digital converters that digitize the data from the receiving transducers” and “stor[ing] the network specific values associated with each task,” as per Breed’s paragraph 420, likewise inherently includes “vehicle travel history” data“ covering at least a predefined time period.” Id. The Examiner further finds that Breed’s disclosure in paragraph 538, reproduced below, also inherently includes “vehicle travel history” data “covering at least a predefined time period.” Id. at 6. Appeal 2020-003081 Application 15/437,596 6 The main diagnostics for a module that can also reside within the module which transmits either a ready or a fault signal to the main monitoring circuit which now needs only to turn on a warning light, and perhaps record the fault, if any of the modules either fails to transmit a ready signal or sends a fault signal. Furthermore, the Examiner finds that Breed’s disclosure in paragraph 490 of a “diagnostic and prognostic system [that] is designed to enable one or more selected parties to initiate a request for and receive a report on the diagnostic condition of the vehicle or components thereof, or a report on the predicted failure of one or more components,” likewise inherently includes “vehicle travel history” data “covering at least a predefined time period.” Id. Finally, the Examiner finds that Breed’s disclosure of storing data from vehicle environment sensors, which is periodically updated, in order to transmit the data at set time intervals, as per Breed’s paragraph 497, inherently includes “vehicle travel history” data “covering at least a predefined time period.” Id. at 7. Appellant argues that “[n]othing in the prior art suggests that ‘vehicle data’ necessarily even includes travel history and time at certain locations.” Appeal Br. 8. According to Appellant, “travel history” includes “vehicle locations and times at those locations.” Id. at 9. In contrast, Appellant explains that “the data [in Breed] could be simply vehicle system state data, or speed, or engine temp, or a thousand other things that have nothing to do with vehicle travel history.” Id. at 8. In response, “the Examiner finds that . . . [the term] inherency/inherent/inherence, by definition, is ‘the relation of an attribute to its subject;’ ‘relation of attributes, elements, etc., to the subject of which Appeal 2020-003081 Application 15/437,596 7 they are predicated, especially if they are its essential constituents’.” Ans. 9 (citing https://www.dictionary.com/browse/inherece). Thus, according to the Examiner, Breed’s disclosures in paragraphs 197, 420, 490, 497, 538, noted supra, “are straight examples of a vehicle diagnostic that was being developed in the past during or based on a vehicle travel history” because a skilled artisan is not limited to interpreting terms as Appellant, and, thus, [A]re examples of relation of an attributes or elements (event or action that happened before or in the past or prior to something) to their subjects, which they are predicated, especially if they are its essential constituents (history of events, such as a driving history, which is a past; records of event or action, the records that were made or happened before or in the past or prior to something; storing information about event or action, the storing that was made or happened before or in the past or prior to something, in the past. Id. at 9–10. We do not agree with the Examiner’s “attempt[] to define ‘inherency’ by reference to a dictionary,” because Appellant is correct that the term “‘inherency’ is a term of art.” Reply Br. 4 (citing MPEP § 2112 (IV)). It is well established that “[u]nder the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). Here, the Examiner has not adequately provided a basis in fact Appeal 2020-003081 Application 15/437,596 8 and/or technical reasoning to reasonably support the determination that the recorded and stored data in Breed necessarily constitutes “vehicle travel history” data, as called for by each of independent claims 1 and 9. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). At the outset, we agree with Appellant that an ordinary and customary meaning of the term “vehicle travel history” means “vehicle locations and times at those locations.” Appeal Br. 9; see also In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (“[C]laims under examination before the PTO are given their broadest reasonable interpretation consistent with the specification.”). Such a construction is consistent with Appellant’s Specification describing “tracking travel (at least coordinates) data” (see para. 41), “travel data (such as GPS coordinates)” (see para. 46), and “travel data . . . is detected (and/or over a period of time)” (see para. 47). As such, in light of our construction of the term “vehicle travel history,” we agree with Appellant that Breed discloses storage of data, which even if recorded at a certain time, i.e., a snapshot, does not necessarily constitute “vehicle travel history” data, as called for by independent claims 1 and 9. Reply Br. 3. For example, Breed’s disclosure of “vehicle data” in paragraph 197 does not necessarily describe “vehicle travel history” data where the locations of the vehicle and time at those locations are determined, but rather discloses recording and storing sensor data regarding failure of a vehicle component. See also Breed, para. 194 (“[T]he association of data with time to create a temporal pattern for use in diagnosing component failures in automobile.”), para. 195 (“[F]rom the foregoing depiction of different sensors which receive signals from a plurality of components.”), para. 197 Appeal 2020-003081 Application 15/437,596 9 (“[D]etermine based on one set of signals from the sensors during use that either a single component or multiple components are operating abnormally” and “if a failure occurs . . . provision can be made to record the output of some or all of the vehicle data.”). Similarly, Breed’s disclosure of storing data from sensors/transducers (as per para. 420), such as environmental sensors (as per para. 497), or reporting a failure/predicted failure of a component (as per paras. 490, 538) likewise does not necessarily describe “vehicle travel history” data where the locations of the vehicle and time at those locations are determined. Recording environmental conditions and component failure does not necessarily require a travel history, but rather represents an instantaneous recording of the moment when the environmental condition occurred or the component failed, that is, the instantaneous location and time. See, e.g., Appeal Br. 9–11. In other words, Breed’s instantaneous recording of when something happens to a given component while the vehicle is travelling does not necessarily constitute a “vehicle travel history” in which the locations of the vehicle and times at those locations are recorded. Accordingly, for the foregoing reasons, and because the Examiner’s use of the Yu and Yamada disclosures does not remedy the deficiency of Breed, we do not sustain the rejection under 35 U.S.C. § 103 of independent claims 1 and 9, and their respective dependent claims 2–8, 10, 11, and 13–16 as unpatentable over Breed, Yu, and Yamada. See Final Act. 7–11, 17–20. Rejection III The Examiner’s use of the Tatourian disclosure does not remedy the deficiency of Breed discussed supra. See Final Act. 23–24. Accordingly, Appeal 2020-003081 Application 15/437,596 10 for the same reasons discussed above, we also do not sustain the rejection under 35 U.S.C. § 103 of claim 12 as unpatentable over Breed, Yu, Yamada, and Tatourian. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 11 112(a) Written Description 11 1–11, 13–16 103 Breed, Yu, Yamada 1–11, 13–16 12 103 Breed, Yu, Yamada, Tatourian 12 Overall Outcome 1–16 REVERSED Copy with citationCopy as parenthetical citation