Yusuke KASABA et al.

Patent Trials and Appeals Board

Jul 28, 2021

2021003727 (P.T.A.B. Jul. 28, 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.
15/265,286 09/14/2016 Yusuke KASABA Q227716 1943
65565 7590 07/28/2021
SUGHRUE-265550
2000 PENNSYLVANIA AVE. NW
SUITE 9000
WASHINGTON, DC 20006
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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):
PPROCESSING@SUGHRUE.COM
SUGHRUE265550@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUSUKE KASABA, MASASHI YAMAZAKI,
and ATSUSHI TODA
____________________

Appeal 2021-003727
Application 15/265,2861
Patent 8,838,343 B2
Technology Center 3900
___________________

Before ALLEN R. MacDONALD, ERIC B. CHEN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from a Final
Rejection of claims 1–16 (all pending claims). Reissue claims 17–19 have
been cancelled. December 19, 2018 Amendment 13. Appeal heard on July

1 Filed September 14, 2016, seeking to reissue U.S. Patent 8,838,343 B2,
issued September 16, 2014, based on Application 13/281,075, filed
October 25, 2011.
2 Appellant identifies the real party in interest is Koito Manufacturing Co.,
LTD. Appeal Br. 3.
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15, 2021 (a transcript will be made of record). We have jurisdiction under
35 U.S.C. § 6(b). We affirm in part.
CLAIMED SUBJECT MATTER
Reissue claim 1 on appeal is illustrative of the claimed subject matter
(emphasis and bracketed material added):
Claim 1. A vehicle lamp controller comprising:
[A.] a receiver configured to receive acceleration
information detected by an acceleration sensor;
[B.] a control unit configured to derive a vehicle
longitudinal direction acceleration and a vehicle vertical
direction acceleration from the acceleration information and to
generate a control signal for instructing an adjustment of an
optical axis of a vehicle lamp, based on a variation in a ratio
between a temporal change amount of the vehicle longitudinal
direction acceleration and a temporal change amount of the
vehicle vertical direction acceleration during at least one of an
acceleration and a deceleration of a vehicle; and
[C.] a transmitter configured to transmit the control signal
to an optical axis adjusting portion of the vehicle lamp.

REFERENCES3
The Examiner relies on the following references:
Name Reference Date
Falge US 2,733,335 Jan. 31, 1956
Lu US 2006/0129291 A1 June 15, 2006
Bosch EP 1 147 929 A1 Oct. 24, 2001

3 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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Weisstein, Erie W. “Trigonometry Angles,” from MathWorld--A Wolfram
Web Resource, https://mathworld.wolfram.com/TrigonometryAngles.html
(last visited July 19, 2021).
REJECTIONS
A. Section 112, First Paragraph
The Examiner rejects claims 1–16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Final
Act. 12–14.
We select claim 1 as representative. The contentions discussed herein
as to claim 1 are dispositive as to this rejection. Therefore, except for our
ultimate decision, we do not address the merits of the § 103 rejection of
claims 2–16 further herein.
B. Section 112, Second Paragraph
The Examiner rejects claims 6 and 7 (which depends from claim 6)
under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 12.
Appellant acknowledges “[i]n the amendment filed August 24, 2020,
the undersigned inadvertently did not maintain the correction of claim 6,”
and “Appellant will modify dependent claim 6.” Appeal Br. 5. Therefore,
we affirm pro forma the Examiner’s § 112, second paragraph, rejection of
claims 6 and 7.
C. Section 103(a)
The Examiner rejects claims 1 and 9–13 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bosch, Lu, Falge, and
Trigonometry Angles. Final Act. 16–21.
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The Examiner rejects claims 14–16 under 35 U.S.C. § 103(a) as being
unpatentable over the combinations of Bosch, Falge, and Trigonometry
Angles. Final Act. 11–26.
We select claim 1 as the representative claim for these rejections. The
contentions discussed herein as to claim 1 are dispositive as to these
rejections. Therefore, except for our ultimate decision, we do not address
the merits of the § 103(a) rejection of claims 9–16 further herein.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Section 112, First Paragraph
Appellant argues:
Per MPEP § 2164, to support a determination that the
specification does not satisfy the enablement requirement and
whether any necessary experimentation is “undue,” the
Examiner must consider the following factors from In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988):
(A) The breadth of the claims;
. . .
(H) The quantity of experimentation needed to make or
use the invention based on the content of the disclosure.
Consistent with controlling precedent in Wands, discussed
at MPEP § 2164, it “is improper to conclude that a disclosure is
not enabling based on an analysis of only one of the above factors
while ignoring one or more of the others. The examiner’s
analysis must consider all the evidence related to each of these
factors, and any conclusion of nonenablement must be based on
the evidence as a whole.”
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Referring to Wands factor (H), the Examiner also has not
provided any explanation or evidence that undue
experimentation would have been required for a person having
ordinary skill to practice these features.
Appeal Br. 9 (emphasis added).
The essence of Appellant’s argument is that the Examiner’s analysis
fails to meet the requirements mandated by the MPEP to show that an
application lacks enablement support. We agree. The same MPEP section
quoted above goes on to say:
The explanation of the rejection should focus on those factors,
reasons, and evidence that lead the Examiner to conclude[,] e.g.,
that the specification fails to teach how to make and use the
claimed invention without undue experimentation, or that the
scope of any enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the claims.
This can be done by making specific findings of fact, supported
by the evidence, and then drawing conclusions based on these
findings of fact.
MPEP § 2164.04 (underlining omitted, italics added). We do not find any
such findings of fact in the Examiner’s analysis. Therefore, based on our
review, we determine the Examiner’s analysis fails to demonstrate that
claim 1 lacks enablement support.
B. Section 103(a)
B.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
By the features of claim 1, a control signal for instructing
an adjustment of the optical axis of the vehicle lamp is generated
based on a variation in the specially recited ratio between
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temporal change amounts during acceleration and/or
deceleration.
In the remarks at page 26 of the Office Action, the
Examiner asserts that:
As illustrated in, e.g., Equation 1, the longitudinal
acceleration and vertical acceleration are multiplied
by the cosine and sine of the pitch angle, see Figure
2. As evidenced by the “Trigonometry Functions”
publication the ratio between sine and cosine varies
according to angle variation and thereby, varies the
ratio between the dynamic longitudinal and vertical
accelerations values upon which the control signals
is based.
However, Equation 1 of Bosch at para. [0028] merely
discloses that the longitudinal acceleration sensor depends on the
pitch angle and the road angle. . . . Therefore, there is no
disclosure of the claimed specific “ratio between a temporal
change amount of the vehicle longitudinal direction acceleration
and a temporal change amount of the vehicle vertical direction
acceleration” being used in Equation (1).
Equation 3 of Bosch merely discloses the vertical
acceleration sensor depends on the angle of the vehicle’s vertical
axis to a normal line of the driving plane and an angle of the
vertical axis to the direction in which the gravitational
acceleration “g” acts.
Fig. 2 of Bosch merely discloses a graph of wheel
deceleration control.
There is no disclosure of the recited ratio between
temporal change in longitudinal and vertical direction
accelerations, let alone calculating a variation in the ratio.
Bosch doe[s] disclose controlling the lamp adjustment, but
Bosch does not disclose controlling the lamp in the recited
manner based in a variation in the specifically recited ratio.
Appeal Br. 13.
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B.2.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
B.3.
We agree with Appellant. The argument regarding the absence from
the combination of references of an adjustment “based on a variation in a
ratio between a temporal change amount of the vehicle longitudinal direction
acceleration and a temporal change amount of the vehicle vertical direction
acceleration” is persuasive. Our review of the rejection on appeal does not
find sufficient explanation so as to establish the “Trigonometry Functions”
publication discloses a ratio between sine and cosine that corresponds to the
claimed “variation in a ratio between a temporal change amount[s].”
Therefore, this argument by Appellant is sufficient to overcome the
rejections.
We conclude, consistent with Appellant’s argument, that there is
currently insufficient articulated reasoning to support the Examiner’s finding
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that Bosch, Lu, Falge, and Trigonometry Angles, alone or in combination,
teach, suggest, or otherwise render obvious the argued limitations of claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.
CONCLUSIONS
Appellant has demonstrated the Examiner erred in rejecting claims 1–
16 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
Appellant has demonstrated the Examiner erred in rejecting claims 1
and 9–16 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner has not erred in rejecting claims 6 and 7 under
35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner’s rejection of claims 1–16 under 35 U.S.C. § 112, first
paragraph, as lacking enablement is reversed.
The Examiner’s rejections of claims 1 and 9–16 as being unpatentable
under 35 U.S.C. § 103(a) are reversed.
The Examiner’s rejection of claims 6 and 7 under 35 U.S.C. § 112,
second paragraph, as being indefinite is affirmed.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 112, 1st ¶ Enablement 1–16
6, 7 112, 2nd ¶ Indefiniteness 6, 7
1, 9–13 103(a) Bosch, Lu, Falge,
Trigonometry
Angles
1, 9–13
14–16 103(a) Bosch, Falge,
Trigonometry
Angles
14–16
Overall
Outcome

6, 7 1–5, 8–16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART