2019003647 (P.T.A.B. Aug. 10, 2021)

Kyllmann, Alexander Leopold.

Patent Trials and Appeals BoardAug 10, 2021

2019003647 (P.T.A.B. Aug. 10, 2021)

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. 14/234,369 01/22/2014 Alexander Leopold Kyllmann 400371-20000 9556 25570 7590 08/10/2021 Roberts Calderon Safran & Cole, P.C. 7918 Jones Branch Drive Suite 500 McLean, VA 22102 EXAMINER BOOMER, JEFFREY C ART UNIT PAPER NUMBER 3619 NOTIFICATION DATE DELIVERY MODE 08/10/2021 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@rcsc-ip.com lgallaugher@rcsc-ip.com secretaries@rcsc-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER LEOPOLD KYLLMANN ____________ Appeal 2019-003647 Application 14/234,369 Technology Center 3600 ____________ Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and BRANDON J. WARNER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WARNER. Opinion concurring filed by Administrative Patent Judge FITZPATRICK. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 30–44 and 46–56, which are all the pending claims. See Appeal Br. 1; Final Act. 1 (Office Action Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MODUTRAM MEXICO, S.A. DE C.V. Appeal Br. 1. Appeal 2019-003647 Application 14/234,369 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention relates to an intelligent control system and method for a fleet of automated vehicles moving on a road network. See Spec., Abstract. Claims 30 and 47 are independent. Claim 30, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 30. A control system for automated vehicles, comprising: one or more zones, each zone comprising a pathway network, said pathway network comprising at least two sections, each section having one or more junctions; multiple stationary control devices, including one or more zone control devices (DZ) and one or more section control devices (DS), installed on at least one of a side of said pathway network or in central facilities; multiple mobile control devices installed in each automated vehicle, including a vehicle task control device (DT) and one or more vehicle mechanism control devices (DM); a communication interface between said stationary control devices and each task control device (DT); and a separate communication interface between said DT device and DM devices, and vice versa, but with no direct communication interface or channel between DM devices and the stationary control devices, said control system structured and arranged to control at least a speed, a steering, a braking or a door operation of the multiple automated vehicles on said pathway network, wherein at least two of said multiple automated vehicles have at least one of a different propulsion technology, a different steering technology, a different braking technology, or a different door operation technology, and wherein input and output instruction signals to and from each DT device are the same regardless of the propulsion, steering, braking, or door operation technologies and/or mechanisms implemented in the vehicle. Appeal 2019-003647 Application 14/234,369 3 EVIDENCE The Examiner relies on the following evidence in rejecting the claims on appeal: Pardes US 6,263,799 B1 July 24, 2001 Jones US 6,430,164 B1 Aug. 6, 2002 Andreasson US 2011/0184596 A1 July 28, 2011 Kadowaki2 JP 2011031768 A Feb. 17, 2011 Morgantown Personal Rapid Transit System, “System Operation Description Manual,” M-PRT-1-1 (March 7, 2009), available at https://web.archive.org/web/20090307132758/http:// transportation.wvu.edu/r/download/18440 (“Morgantown”). REJECTIONS The following rejections are before us for review: I. Claims 30–44 and 46–56 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2–4. II. Claims 30–44 and 46–56 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 4–5. III. Claims 30–35, 37–39, 41–44, 46, 53, and 55 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgantown and Pardes. Id. at 8–12. IV. Claim 36 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgantown, Pardes, and Kadowaki. Id. at 12–13. 2 The Examiner relies on an English language translation of the abstract of the Japanese published application. Appeal 2019-003647 Application 14/234,369 4 V. Claim 40 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgantown, Pardes, and Jones. Id. at 13–14. VI. Claims 47–50, 52, 54, and 56 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgantown, Jones, and Pardes. Id. at 14–17. VII. Claim 51 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Morgantown, Jones, Pardes, and Andreasson. Id. at 17–18. ANALYSIS Rejection I – Claims 30–44 and 46–56 as failing to comply with the written description requirement The Examiner finds that the claims do not have sufficient written description support to demonstrate possession of the invention that is claimed. Final Act. 2–3. More specifically, the Examiner finds that the limitations regarding the system controlling at least one vehicle operation (speed, steering, braking, or door operation) via the DM devices, where at least two of the vehicles have a difference in at least one operative technology (propulsion, steering, braking, or door operation), while the governing input and output instructions of the DT devices remain “the same” regardless of the different operative technologies of the vehicles, requires some linking, manipulating, or translating (between the DT devices and the DM devices) that is not adequately described. Id. at 3–4; see Ans. 4–5. In other words, the Examiner questions (1) how the DM devices would translate “the same” instruction signals from the DT devices, in view Appeal 2019-003647 Application 14/234,369 5 of the DM devices also needing to control different operative technologies for different vehicles, and (2) whether the disclosure adequately describes any such translation given that the Specification “is silent as to how” the “black box” DM devices and DT devices would accomplish the claimed functional results. Final Act. 3–4 (emphasis added). Appellant does not satisfactorily answer these questions as to how the claimed functional results are achieved, or where written description support for such operation would be found in Appellant’s disclosure. The fundamental factual inquiry for sufficient written description is whether Appellant’s Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellant was in possession of the invention as presently claimed. See Ariad Pharms., Inc., v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–64 (Fed. Cir. 1991). Appellant reiterates the functional result of the claims—namely that the DM devices “all receive the same input signals from the DT devices, but translate these into differing control signals tailored to the specific vehicle type in which they are installed” (Appeal Br. 7)—but does not identify any portion of the disclosure that would describe how such translating would be accomplished (see id. at 7–8). In fact, the Examiner notes in the Answer that this functional result quoted by Appellant is precisely the “aspect of the claimed invention which is not fully explained in the [S]pecification.” Ans. 4; see id. at 4–5. Appellant’s only offer to explain the lack of disclosure is a contention that “writing the software code to accomplish the claimed functions described would be routine.” Appeal Br. 8; see also Reply Br. 3–4. But the Appeal 2019-003647 Application 14/234,369 6 test for sufficient written description is not what might have been obvious in light of the original disclosure, but what was actually disclosed. See Ariad, 598 F.3d at 1352 (“a description that merely renders the invention obvious does not satisfy the requirement”); see also MPEP § 2163 (“The Federal Circuit has pointed out that, under United States law, a description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. [§] 112.”) (citing Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997)). As the Examiner correctly explains, the notion “[t]hat one of ordinary skill may envision a means for programming the devices to achieve the claimed result is separate from the issue of showing possession of the claimed invention,” and that requisite possession is not shown here where the Specification “is silent as to how the ‘black boxes’ of the DT [devices] and DM devices achieve the claimed result.” Ans. 5 (emphasis added). In short, because we are not apprised of error in the Examiner’s finding that Appellant’s Specification does not disclose the identified features recited in the claims, we sustain the rejection based on lack of written description. Rejection II – Claims 30–44 and 46–56 as being indefinite The Examiner also determines that the unsupported claim limitations (discussed in detail above in the context of Rejection I) similarly render the claims indefinite because it is unclear how “the same” governing input and output instructions of the DT devices would be understood by different DM devices to control different operative technologies of the vehicles, as the Appeal 2019-003647 Application 14/234,369 7 claims require. Final Act. 4–5. Stated another way, the Examiner notes that many of the same concerns regarding the purely functional recitations of the claims—such as the undisclosed linking, manipulating, or translating element/step to define how the DM devices and DT devices would accomplish the recited functional results—render the claims indefinite because the purely functional recitations result in claims with indeterminate scope. Id.; see Ans. 6. The essence of the requirement under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is that the language of the claims must provide clarity to those skilled in the art regarding the scope of the subject matter which the claims encompass. See In re Hammack, 427 F.2d 1378 (CCPA 1970). 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). Of course, it is not categorically indefinite to include functional limitations in apparatus claims, but the reliance on functional language in a claim may fail “to provide a clear-cut indication of the scope of [the] subject matter embraced by the claim,” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Such is the case here. When a claim merely recites a functional result to be achieved by generic “black box” devices, the precise boundaries of the claim scope are unclear. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that the Supreme Court has explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been Appeal 2019-003647 Application 14/234,369 8 seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). In response to the Examiner’s concerns for determining the scope of the functional recitations of the claims, Appellant submits that a skilled artisan “would understand that the DM device can be configured to work with differing control systems and subsystems for each specific vehicle for which it is supplied,” and “would be prepared to write the software code to carry out the disclosed functions.” Appeal Br. 10–11 (emphasis added); see id. at 9–11; Reply Br. 4. This response does not clarify the scope of the claims. As discussed above, Appellant does not identify any disclosure of how the “black box” DM devices and DT devices would need to be structured or configured (for example, by specific programming) in order to accomplish the claimed functional results. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (to claim a device for performing a specific computer-implemented function and then to disclose only a generic device as the structure designed to perform that function amounts to improper pure functional claiming). We share the Examiner’s concerns for determining requisite boundaries on the scope of the functional recitations of the claims. See Swinehart, 439 F.2d at 213; Halliburton, 514 F.3d at 1255. As discussed above, Appellant’s contention that a skilled artisan could write software code for the DM devices and DT devices to accomplish the recited functional results is insufficient to identify any specific algorithm or programming that may transform these generic “black box” devices into Appeal 2019-003647 Application 14/234,369 9 suitable structures for accomplishing the recited functions. See Aristocrat, 521 F.3d at 1333. To the extent that Appellant may endeavor to rely on some structural distinction implied by these purely functional recitations (for example, to differentiate over the cited art), it is only fair—both to the Examiner and to the public—that Appellant clearly delineate, either by express language in the claims themselves or by citation to evidence in the record, the scope encompassed by the claims. Appellant has not directed us to any such delineation. Unless and until one reading the claims is able to ascertain with reasonable certainty what the limits of the recited functional results may be, the scope of the claims is unclear because it lacks sufficient precision to permit one endeavoring to practice the invention to adequately determine the metes and bounds thereof. In light of the above, as we are not apprised of error in the Examiner’s determination that the claims are indefinite under 35 U.S.C. § 112, second paragraph, we sustain the rejection. Rejections III–VII – Obviousness over the Cited Art We do not sustain the Examiner’s rejections of claims 30–44 and 46–56 under 35 U.S.C. § 103(a). For the reasons explained by the Examiner (see Final Act. 4–5; Ans. 6) and reiterated above, the claims are indefinite. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Therefore, since the claims fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the prior art rejections because they necessarily are Appeal 2019-003647 Application 14/234,369 10 based on speculative assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims). We emphasize, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. DECISION We AFFIRM the Examiner’s decision rejecting claims 30–44 and 46–56 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We AFFIRM the Examiner’s decision rejecting claims 30–44 and 46–56 under 35 U.S.C. § 112, second paragraph, as being indefinite. We REVERSE, pro forma, the Examiner’s prior art rejections of claims 30–44 and 46–56 as discussed above. 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). Appeal 2019-003647 Application 14/234,369 11 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 30–44, 46–56 112 ¶ 1 Written Description 30–44, 46–56 30–44, 46–56 112 ¶ 2 Indefiniteness 30–44, 46–56 30–35, 37–39, 41–44, 46, 53, 55 103(a) Morgantown, Pardes 30–35, 37–39, 41–44, 46, 53, 55 36 103(a) Morgantown, Pardes, Kadowaki 36 40 103(a) Morgantown, Pardes, Jones 40 47–50, 52, 54, 56 103(a) Morgantown, Jones, Pardes 47–50, 52, 54, 56 51 103(a) Morgantown, Jones, Pardes, Andreasson 51 Overall Outcome 30–44, 46–56 AFFIRMED Appeal 2019-003647 Application 14/234,369 12 FITZPATRICK, Administrative Patent Judge, concurring. I join the Board’s decision to affirm the indefinites rejection of all claims and, consequently, the decision to reverse, pro forma, the art rejections of all claims. I also concur in the Board’s decision to affirm the lack of written description rejection. However, I would consider the indefiniteness rejection prior to the lack of written description rejection. See Ex parte Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“For the sake of completeness we will treat the claims on appeal as if they were rejected under both the first and second paragraphs of § 112. Any analysis in this regard should begin with the determination of whether the claims satisfy the requirements of the second paragraph.”). And, upon having determined the claims were indefinite for the very reasons detailed in the Board’s decision, I would have affirmed the lack of written description rejection of the claims for the same reasons.