DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 06/08/2026 has been entered.
Regarding Claims 1-22, 33 and 37 (Canceled)
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-32, 34-36 and 38-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Claim 23 (and similarly for Claims 38 and 50) recite “a data generator, said data generator transmitting the synthetic sensor data”, “transmitting synthetic data,” and “synthetic sensor data transmitted from a data generator”, and dependent claims 30, 31, 39, 45, 47 reciting “generating the synthetic sensor data,” but there is no description of any electronic/structural/software information on the data generator and how the synthetic sensor data even exists or is being generated by the data generator to be even transmitted in the original disclosure (other than describing it as a simple block), the synthetic data that represents even more realistic traffic circumstances (Note that synthetic data as disclosed by the Applicant is not just a realistic traffic circumstances, but “even more” realistic traffic circumstances). Looking at the original disclosure, the pertinent paragraphs are reproduced below.
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As shown above, the paragraph discusses the alleged advantage of using a synthetic sensor data generator to generate the synthetic sensor data, instead of a display.
Following are other pertinent paragraphs in the original disclosure that mentions synthetic sensor data generator and generating the synthetic data.
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As shown above, the original disclosure merely mentions synthetic sensor data generator and generating a synthetic sensor data, but there is no detail as to what this synthetic sensor data generator electronically/structurally even looks like, how the synthetic sensor data is even being generated or exist to be transmitted, etc., despite being the core of the invention, with alleged advantage that does not rely on a display that is conventionally used in automotive testing system. In other words, the data generator that transmits synthetic sensor data, is merely a “black box”.
Furthermore, the dependent claim 36 (reproduced below for convenience), also recites the type of synthetic sensor data that are generated, including laser signals, infrared signals, etc., but the original disclosure simply do not disclose how the data generator or “black box” is even able to generate all these different types of signals, that leads to even more realistic traffic circumstances.
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Furthermore, generating a synthetic data using a synthetic data generator is an essential or critical feature of the invention, but the claimed invention does not recite such features. As such, the claim does not satisfy the written description.
4. Claims 23-32, 34-36 and 38-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
,As had been discussed above, the Claims 23 (and similarly for Claims 38 and 50) recite “a data generator, said data generator transmitting the synthetic sensor data”, “transmitting synthetic data,” and “synthetic sensor data transmitted from a data generator,” and dependent claims 30, 31, 39, 45, 47 reciting “generating the synthetic sensor data,” but as had been discussed above, there is no description of any electronic/structural/software information on the data generator for any synthetic data to even exist or be generated to be transmitted in the original disclosure to replace the display that is conventionally used, the synthetic data that represents even more realistic traffic circumstances. With lack of any working examples, lack of direction as to how to solve the problem without using the display, unpredictability, undue experimentation would be required by one of ordinary skill in the art to practice the claimed invention. Specifically, we discuss some of the most relevant Wands factors:
A) Breadth of the claim: The claim broadly recites a “data generator” performing the function of the synthetic generator mentioned in the Specification. However, such broad claim is claiming any and all ways to generate the synthetic sensor data, whereas the Specification does not even disclose any details at all. There is simply no limitation placed on what kind of traffic data are being used, where they were acquired from, how they are processed, and most importantly, how they are used to generate the synthetic sensor data that are even more realistic traffic circumstances than using a camera and the display.
b) State of the prior art. The limitation of using a synthetic sensor data generator to generate, in particular, the synthetic sensor data that are even more realistic traffic circumstances than using the conventional camera + display is simply not known at all. In fact, it is the novel feature of the invention, and it is the specification itself that must supply the novel aspect, and not the knowledge of one skilled in the art (see Automotive Tech vs BMW, 84 USPQ2d 1108 501 F3d 1274, Id. at 1114 (CAFC, 2007), “ATI argues that despite this limited disclosure, the knowledge of one skilled in the art was sufficient to supply the missing information. We do not agree. In Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (42 USPQ2d 1001) (Fed. Cir. 1997), we stated: “It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.).
C) Amount of direction provided by the inventor and Lack of specific example. As had been discussed above, the Appellant merely discussed the advantages of the usage of the synthetic sensor data generator in the Specification in the most general sense without providing any details in regard to the synthetic sensor generator, providing merely an illustration of overall plan and wish using basic functional “black box” block, as represented in the Figure 1.
Conclusion
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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