FINAL OFFICE ACTION
ACKNOWLEDGEMENTS
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is responsive to reissue application 17/852,822 filed June 6, 2022 of US Patent Number US 10,696,249 B2 (“‘249 Patent”) issued to Heinrich et al on June 30, 2020. The ‘249 Patent was based upon U.S. patent application 15/893,085 (“’085 Application”).
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. § 251 and 37 C.F.R. §§ 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 C.F.R. § 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,696,249 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
B. Terminology Used by the Examiner
Unless expressly noted otherwise, the following terminology is used by the Examiner is this Office action (and any future Office action(s)).
“Original Disclosure”
“Original Disclosure” refers to the substantive sections of the ‘085 Application (i.e., the specification, drawings, claims, and abstract) there were present (or deemed to be present by e.g., by a Federal Circuit decision) on the effective filing date of the ‘085 Application.
“Applicant”
“Applicant” refers to the Applicant in this reissue application.
“applicant” or “applicants” (lower case)
“applicant” or “applicants” (lower case) refers not to the Applicant in this reissue application but to applicants generally.
“POSITA:” “Person having Ordinary Skill In The Art”
PROSCUTION HISTORY OF THE INSTANT REISSUE APPLIACTION
A non-final Office action was mailed on July 28, 2023 (“July 2023 Non-Final Action”). In response to the July 2023 Non-Final Action, Applicant filed a response on January 26, 2024 (“Jan 2024 Response”). In response to the Jan 2024 Response the Examiner mailed a final Office action on May 24, 2024 (“May 2024 Final Office Action”). An interview was held on October 7, 2024 (“Oct 2024 Interview”). In the Oct 2024 Interview, Applicant noted the incompleteness of the May 2024 Final Office Action. In response, the Examiner agreed to withdraw the finality and make the May 2024 Final Office Action a non-final Office action. Thus the May 2024 Final Office Action is hereby renamed the May 2024 Non-Final Office Action.
In response to the May 2024 Non-Final Office Action, Applicant filed a response on November 6, 2024 (“Nov 2024 Response”). The Nov 2024 Response contained, among other things, “Amendments to the Claims” (“Nov 2024 Claim Amendments”); “STATEMENT OF STATUS AND SUPPORT FOR ALL CHANGES TO THE CLAIMS;” and “REMARKS/DISCUSSION OF ISSUES” (“Nov 2024 Remarks”). This final Office action is in response to the Nov 2024 Response.
STAUS OF CLAIMS
Claims 1-21, 25-27, and 31-54 are pending.
Claims 49-54 are additional new claims.
Claims 22-24 and 28-30 are cancelled.
Claims 1-2, 5-6, 8-9, 11-14, 16, 19, ,25, 31, 34, 37, 40, 43, and 46 are amended.
As a result of this Office action, claims 1-21, 25-27, and 31-54 are rejected.
IV. CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
A. Lexicographic Definitions
After careful review of the Original Disclosure, the prosecution history, and unless expressly noted otherwise by the Examiner below, the Examiner finds that he is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Applicant is not their own lexicographer. See MPEP § 2111.01 IV.
B. ‘Sources’ for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Applicant, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how he is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
“Processor” #1
“1: one that processes 2. a: (1) a computer (2) The part of a computer system that operates on data – called also a central processing unit.” Microsoft Press Computer Dictionary, 2nd Edition, Microsoft Press, Redmond, WA, 1994. 2
Device
“(7) A hardware unit that is capable of performing some specific function.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
Configuration
“(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
Instruction
“(4) a statement or expression consisting of an operations and its operands (if any) , which can be interpreted by a computer in order to perform some function or operation.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
Operable
“: PRACTICABLE” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997. Practicable “1 : capable of being put into practice or of being done or accomplished : feasible” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997.
“Software”
“n. Computer programs; instructions that make hardware work....” Microsoft Press Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
“Special programming”
“Includes any functionality that is not 'coextensive' with a microprocessor or general purpose computer. [Emphasis added.]” Apr 2023 Remarks (quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012)).
“arrange”
“2: to put into a proper order or into a correct or suitable sequence, relationship, or adjustment < ~flowers in a vase> < ~ cards alphabetically>” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997.
“circuit”
“1. Any path that can carry electrical current. 2. A combination of electrical components interconnected to perform a particular task.” Microsoft Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
“Algorithm”
“a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. See also Ergo Licensing:
An algorithm may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon Touch [Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011)] (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Even described “in prose,” an algorithm is still “a step-by-step procedure for accomplishing a given result.” Id. at 1385.
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
“to”
“a — used as a function word to indicate purpose, intention, tendency, result or end” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997.
C. 35 U.S.C. § 112(f)
The following is a quotation of pre AIA § 35 U.S.C. § 112(f):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
A second exception to the broadest reasonable interpretation standard occurs when a claimed phrase is interpreted in accordance with 35 U.S.C § 112(f) (“§ 112(f)”). See MPEP § 2181 et seq. To invoke § 112(f), a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 I.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation should be interpreted in accordance with § 112(f). The presumption that the claim limitation is interpreted under § 112(f) is rebutted when the claim limitation recites sufficient structure to perform the entire claimed function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be interpreted in accordance with § 112(f). The presumption that the claim limitation is not interpreted under § 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure to perform the entire claimed function.
Claim limitations that use the word “means” are therefore being interpreted under § 112(f), except as otherwise indicated below. Conversely, claim limitations that do not use the word “means” are not being interpreted under § 112(f), except as otherwise indicated below.
The following phrases will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrase invoke § 112(f). If a phrase invokes § 112(f), the corresponding structure for the phrase will also be determined.
Functional Phrase #1 Claim 1
Functional Phrase #1 states:
at least one first sensor, wherein the at least one first sensor is arranged to produce first sensor data associated with a user ….
Functional Phrase #1 (“FP#1”) as recited in Claim 1.
a. Prong (C)
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Invocation Prong (A) then becomes whether or not FP#1 is a generic placeholder for “means.”
First the Examiner has reviewed the Original Disclosure and has determined that an off the shelf sensor is arranged to produce sensor data and that a POSITA would understand the function of producing a first sensor data which is associated with a user. In other words, the Examiner finds that a person having ordinary skill in this particular art understands that an ordinary, off-the-shelf sensor can produces sensor data and all the functions within FP#1 without special programming. Thus, the FP#1 fails Prong C. Because the FP#1 fails Prong C, FP#1 does not invoke § 112(f).
Functional Phrase #2 Claim 1
Functional Phrase #2 states:
wherein the first processor circuit is arranged to:
…
determine an identification of the user based on the first sensor data; [and]
cause the mobile device to send the identification of the user to a second processor circuit,
Functional Phrase #2 (“FP#2”) as recited in Claim 1.
a. Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore, the issue arising under Invocation Prong (A) then becomes whether or not FP#1 is a generic placeholder for “means.”
First, the Examiner has reviewed the Original Disclosure and concludes that the Original Disclosure does not provide a description sufficient to inform a POSITA that the claimed “the first processor circuit” denotes sufficient structure (as defined by the Federal Circuit) to perform the all the functions within FP#2 without ‘special programming.’ In other words, the Examiner finds that a person having ordinary skill in this particular art understands that an ordinary, off-the-shelf processor (or general purpose computer with instructions, memory, CPU, circuit etc.) can be arranged to receive data but cannot perform the all the functions within FP#2 without special programming.
Second, the Examiner has reviewed both general dictionaries and subject matter specific dictionaries (e.g. Microsoft Computer Dictionary and the IEEE Dictionary, both cited above in this Office action) for evidence to establish that the claimed “the first processor circuit” has achieved recognition as agent noun denoting sufficient structure to perform the all the functions within FP#2 without special programming. Based upon a review of these dictionaries, the Examiner is unable to locate sufficient evidence that the claimed “the first processor circuit” has achieved recognition as an agent noun denoting sufficient structure for performing the all the functions within FP#2. For example, see the subsection of “Sources” noted above, describing how neither the claimed “instructions” nor an off-the-shelf “processor” can perform the all the claimed functions within FP#2 without special programming.
Third, the Examiner has reviewed the prior art of record for evidence that the claimed “first processor circuit” has sufficient structure to perform all the claimed functions within FP#2 without special programming. Based upon a review of the prior art now of record, the Examiner is unable to locate sufficient evidence to establish that the claimed “first processor circuit” has sufficient structure to perform the all the claimed functions within FP#2 without special programming.
Accordingly, the Examiner concludes that the that the claimed “first processor circuit” as set forth in FP#2 is being used as a generic term for a structure performing all the claimed functions within FP#2, and therefore is a generic placeholder for the phrase “means for.” Because the claimed “first processor circuit” is a generic placeholder having insufficient structure for performing the entire claimed functions within FP#2, the Examiner concludes that FP#2 meets invocation Prong (A).
c. Prong (B)
In accordance with the MPEP, Invocation Prong (B) requires:
(B) the term ‘means’ … or the generic placeholder is not modified by the term “means” or “step” or the generic placeholder is modified by functional language ….
MPEP § 2181 I. — Invocation Prong (B).
Based upon he claimed language itself, the Examiner finds the function of FP#2 is:
arranged to:
…
determine an identification of the user based on the first sensor data; [and]
cause the mobile device to send the identification of the user to a second processor circuit,
Function of Functional Phrase #2 (“Function of FP#2”) as recited in Claim 1
(i) Function Gets Its Ordinary Meaning
Because nothing in the ‘249 Patent or the prosecution history suggests otherwise, the Function of FP#2 will have its ordinary meaning. “Ordinary principles of claim construction govern interpretation of this claim language … and, for all the reasons discussed in the preceding two sections, we construe this function according to its ordinary meaning ….” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004)(citations omitted). “Ordinary principles of claim construction govern interpretation of the claim language used to describe the function.” Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002)(citations omitted).
(ii) Function of FP#2 is Computer Implemented
Based upon a review of the ‘249 Patent itself, the prosecution history, and with particular emphasis on the claimed language itself (“first processor circuit is arranged to”), the Examiner concludes that the Function of FP#2 is computer (i.e., software) implemented. A “first second and third processor circuit” are interpreted as set forth in the ‘249 specification:
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention. [Emphasis added.]
‘249 specification column 9 lines 26-53.
The specification also supports the Examiner’s conclusion that the Function of FP#2 is computer (i.e., software) implemented with respect to a user device and a wearable device, a cloud, a vehicle processing device or in any combination of the above.
c. Prong (C)
Examiner’s Prong (C) Findings
In accordance with the MPEP, § 112(f) Invocation Prong (C) requires:
(C) the term ‘means’ … or the generic placeholder is not modified by sufficient structure ... for performing the claimed function.
MPEP § 2181 I. — Invocation Prong (C).
Based upon a review of the entire FP#2, the Examiner finds that although FP#2 expressly recites a “processor,” the phrase itself does not contain sufficient structure (as defined by the Federal Circuit) for performing the entire Function of FP#2 without the addition of special programming (i.e. algorithm(s)). In fact, the Examiner finds that FP#2 positively recites very little structure other than the claimed “first sensor,” and “processor circuit.”
Algorithm Defined
An algorithm is a step-by-step procedure for accomplishing a given result:
An algorithm may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon Touch [Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011)] (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Even described “in prose,” an algorithm is still “a step-by-step procedure for accomplishing a given result.” Id. at 1385.
Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).3
FP#1 Doe Not Recite Any Algorithms, Let Alone All Algorithms to Perform the Entire Claim Function
Based upon the express wording within FP#2 and all evidence of record, the Examiner finds that to a POSITA, the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#1 (i.e., the function of “arranged to: … determine an identification of the user based on the first sensor data; [and] cause the mobile device to send the identification of the user to a second processor circuit …).” For at least this reason, the Examiner finds that algorithm(s) to perform the entire Function of FP#2 are not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step procedure explaining how to “determine an identification of the user based on the first sensor data; [and] cause the mobile device to send the identification of the user to a second processor circuit …”
Because the algorithm(s) needed to perform the entire Function of FP#2 are not expressly recited in claim 1 and to avoid improperly reading the specification into the claim,4 another claim construction principle would be needed to properly bring any algorithm(s) from the specification into claim 1.
To a POSITA and based upon all evidence of record, the Examiner finds that the claimed “first processor circuit” cannot perform the entire Function of FP#2 without additional structure (i.e., an algorithm).
Because the claimed “first processor circuit” does not contain sufficient structure (as defined by MPEP § 2181 and the Federal Circuit) for performing the entire Function of FP#2 without special programming, the Examiner concludes that FP#2 meets invocation Prong (C).
Because FP#2 does not contain sufficient structure for performing the entire Function of FP#2, the Examiner concludes that FP#2 meets Invocation Prong (C).
Because FP#2 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#2 invokes § 112(f).
d. Corresponding Structure for FP#2
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is `corresponding' structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 (quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, because the claimed phase is meant to ‘cover’5 software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, 673 F.3d at 1365. As noted in Diebold Nixdorf, Inc. v. Int'l Trade Comm'n, 899 F.3d 1291 (Fed. Cir. 2018):
“Structure disclosed in the specification qualifies as ‘corresponding structure; if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)). “Even if the specification discloses corresponding structure, the disclosure must be of ‘adequate’ corresponding structure to achieve the claimed function.” Id. (citation omitted). Thus, under § 112, paras. 2 and 6, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite. Id. (citation omitted).
Diebold Nixdorf, 899 F.3d at 1303.
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#2 to some corresponding structure found in the specification. The Original Disclosure at best states that the following:
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention.
‘249 Patent, specification column 9 lines 26-53
Based upon the entire Original Disclosure and with particular emphasis on the passage of the ‘249 Patent quoted directly above, the Examiner finds that this evidence is still insufficient because the specification simply states that any of the elements of the system could process the information. This passage does not clearly or associate the Function of FP#2 to any specific structure.
Because the Original Disclosure fails to clearly link or associate the Function of FP#2 to some corresponding structure, claim 1 is indefinite under § 112(b). A § 112(b) rejection for FP#2 for claim 1 is set forth below.
Functional Phrase #3 Claim 1
Functional Phrase #3 states:
wherein the sending of the identity of the user to the second processor circuit causes the second processor circuit to:
determine that the user is to enter into a vehicle;
cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle,
Functional Phrase #3 (“FP#3”) as recited in Claim 1.
a. Prong (A)
As an initial matter, the Examiner finds that FP#3 does not use the term “means.” Therefore, the issue arising under Invocation Prong (A) then becomes whether or not FP#1 is a generic placeholder for “means.” The analysis with respect to FP#2 prong A is applicable and incorporated by reference herein.
b. Prong (B)
Based upon he claimed language itself, the Examiner finds the function of FP#2 is:
determine that the user is to enter into a vehicle; [and]
cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle,
Functional Phrase #3 (“FP#3”) as recited in Claim 1.
The analysis with respect to FP#2 prong B is applicable and incorporated by reference herein.
To a POSITA and based upon all evidence of record and based upon all evidence of record and with particular emphasis on the Original Disclosure, the Examiner finds that the Function of FP#3 is computer (i.e., software) implemented.
To a POSITA and based upon all evidence of record, the Examiner finds that the claimed “second processor circuit” cannot perform the entire Function of FP#3 without additional structure (i.e., an algorithm).
Because the claimed “second processor circuit” does not contain sufficient structure (as defined by MPEP § 2181 and the Federal Circuit) for performing the entire Function of FP#3 without special programming, the Examiner concludes that FP#3 meets invocation Prong (C).
c. Prong (C)
Based upon a review of the FP#3, the Examiner finds that although FP#3 expressly recites a “processor,” the phrase itself does not contain sufficient structure for performing the entire Function of FP#3 without the addition of special programming (i.e. algorithm(s)). In fact, the Examiner finds that FP#3 positively recites very little structure other than the claimed “processor.”
To a POSITA and based upon all evidence of record, the Examiner finds that the claimed “first processor circuit” cannot perform the entire Function of FP#3 without additional structure (i.e. an algorithm).
Based upon the express wording with FP#3, the Examiner finds that to a POSITA, the claim language itself within FP#3 does not recite an algorithm for accomplishing the Function of FP#3 (e,g,, “determine that the user is to enter into a vehicle ….” For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#3 is not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to “determine that the user is to enter into a vehicle ….” In particular, the Examiner finds that FP#3 is attempting to encompass a special purpose computer having special programming (i.e., an algorithm).
In other words, based upon the express wording within FP#3, the Examiner finds that to a POSITA, the claim language itself within FP#3 does not recite an algorithm for accomplishing the Function of FP#3.
Because the claimed “first processor circuit” does not contain sufficient structure for performing the entire Function of FP#3 without special programming (i.e., an algorithm), the Examiner concludes that FP#3 meets invocation Prong (C).
Because FP#3 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#3 invokes § 112(f).
d. Corresponding Structure for FP#3
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#3 to some corresponding structure found in the specification. The Original Disclosure at best states that the following is the corresponding structure;
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention.
‘249 specification column 9 lines 26-53
This is still insufficient because the specification simply states that any of the elements of the system could process the information and does not have specific functions applied to specific processors as currently claimed.
Because the Original Disclosure fails to clearly link or associate the Function of FP#3 to some corresponding structure, claim 1 is indefinite under § 112(b). A § 112(b) rejection is set forth below for FP#3 in claim 1.
Functional Phrase #4 Claim 1
Functional Phrase #2 states:
wherein the sending of the identification of the user to the third processor circuit causes the third processor circuit to:
access at least one pre-defined user setting from a storage circuit based on the identification of the user; and
adjust at least one vehicle parameter based on the at least one pre-defined user setting
Functional Phrase #4 (“FP#4”) as recited in Claim 1.
Based upon he claimed language itself, the Examiner finds the function of FP#4 is:
access at least one pre-defined user setting from a storage circuit based on the identification of the user; and
adjust at least one vehicle parameter based on the at least one pre-defined user setting ….
(“Function of FP#4”) as recited in Claim 1.
The analysis with respect to FP#2 prongs A and B is applicable to FP#4.
Based upon the Original Disclosure and evidence of record, the Examiner finds that the Function of FP#4 is computer (i.e., software) implemented.
Based upon the express wording with FP#4 and evidence of record, the Examiner finds that to a POSITA, the claim language itself within FP#4 does not recite an algorithm for accomplishing the Function of FP#4 (i.e., “adjust at least one vehicle parameter based on the at least one pre-defined user setting ….” For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#4 is not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to “adjust at least one vehicle parameter based on the at least one pre-defined user setting ….” In particular, the Examiner finds that FP#4 is attempting to encompass a special purpose computer having special programming.
Based upon a review of all evidence of record and the express wording within FP#4, the Examiner finds that although FP#4 expressly recites a “third processor circuit,” the FP#4 itself does not contain sufficient structure for performing the entire Function of FP#4 without the addition of special programming (i.e., algorithm(s)). In fact, the Examiner finds that FP#4 positively recites very little structure other than the claimed “third processor circuit.” In other words, the Examiner finds that FP#4 is attempting to encompass a special purpose computer having special programming.
Because the claimed “third processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#4 without special programming, the Examiner concludes that FP#4 meets invocation Prong (C).
Because FP#4 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#4 invokes § 112(f).
Because the Original Disclosure fails to clearly link or associate the Function of FP#4 to some corresponding structure, claim 1 is indefinite under § 112(b).
Functional Phrase #5 Claim 19
Functional Phrase #5 states:
wherein one of the first processor circuit and the second processor circuit is arranged to determine an identification of the user based on the at least one physiological parameter;
Functional Phrase #5 (“FP#5”) as recited in Claim 19.
Function of FP#5 states:
to determine an identification of the user based on the at least one physiological parameter;
Function of Functional Phrase #5 (“Function of FP#5”) as recited in Claim 19.
Based upon all evidence of record and with particular emphasis on the express wording within FP#5, the Examiner finds that to a POSITA, the claim language itself within FP#5 does not recite an algorithm for accomplishing the Function of FP#5 (i.e., “to determine an identification of the user based on the at least one physiological parameter ….” For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#5 is not expressly recited in claim 1.
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to “to determine an identification of the user based on the at least one physiological parameter ….” In particular, the Examiner finds that FP#5 is attempting to encompass a special purpose computer having special programming.
Based upon a review of the FP#5, the Examiner finds that although FP#5 expressly recites a “one of the first processor circuit and the second processor circuit,” the phrase itself does not contain sufficient structure for performing the entire Function of FP#5 without the addition of special programming (i.e., algorithm(s)). In fact, the Examiner finds that FP#5 positively recites very little structure other than the claimed “first processor circuit and the second processor circuit.” In other words, the Examiner finds that FP#5 is attempting to encompass a special purpose computer having special programming.
Based upon the express wording within FP#5, the Examiner finds that to a POSITA, the claim language itself within FP#5 does not recite an algorithm for accomplishing the Function of FP#5.
Because the claimed “one of the first processor circuit and the second processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#5 without special programming, the Examiner concludes that FP#5 meets invocation Prong (C).
Because FP#5 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#5 invokes § 112(f).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#5 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#5 to some corresponding structure, claim 19 is indefinite § 112(b).
Functional Phrase #6 Claim 25
Functional Phrase #6 states:
wherein one of the first processor circuit is arranged to:
determine an identification of the user based on the at least one physiological parameter; [and]
access the at least one pre-defined user setting from the storage circuit, based on the identification of the user ….
Functional Phrase #6 (“FP#6”) as recited in Claim 25.
Based upon the claim language, the function of FP#6 is:
to: determine an identification of the user based on the at least one physiological parameter;
[and to:] access the at least one pre-defined user setting from the storage circuit, based on the identification of the user ….
Function of Functional Phrase #6 (“Function of FP#6”) as recited in Claim 25.
The analysis with respect to FP#2 prongs A and B is applicable to FP#6.
Based upon all evidence of record and with particular emphasis on the express wording within FP#6, the Examiner finds that to a POSITA, the claim language itself within FP#6 does not recite an algorithm for accomplishing the Function of FP#6.
Because the claimed “first processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#5 without special programming, the Examiner concludes that FP#6 meets invocation Prong (C).
Because FP#6 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#6 invokes § 112(f).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#6 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#6 to some corresponding structure, claim 25 is indefinite § 112(b).
Functional Phrase #7 Claim 25
Functional Phrase #7 states:
wherein sending the identification of the user and the at least one
pre-defined user setting from the second mobile device to the third processor circuit causes the vehicle to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification
.
Functional Phrase #7 (“FP#7”) as recited in Claim 25.
Based upon the claim language, the function of FP#7 is:
causes the vehicle to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification.
Function of Functional Phrase #7 (“Function of FP#7”) as recited in Claim 25.
The analysis with respect to FP#2 prongs A and B is applicable to FP#7.
Based upon all evidence of record and with particular emphasis on the express wording within FP#7, the Examiner finds that to a POSITA, the claim language itself within FP#6 does not recite an algorithm for accomplishing the Function of FP#7.
Because the claimed “third processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#7 without special programming, the Examiner concludes that FP#7 meets invocation Prong (C).
Because FP#7 meet’s the MPEP’s 3-Prong Analysis, the Examiner concludes that FP#7 invokes § 112(f).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#7 to some corresponding structure found in the specification.
Based upon all evidence of record and with particular emphasis on the express wording within FP#7, the Examiner finds that to a POSITA, the claim language itself within FP#7 does not recite an algorithm for accomplishing the Function of FP#7.
Because the claimed “first processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#5 without special programming, the Examiner concludes that FP#6 meets invocation Prong (C).
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#6 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#7 to some corresponding structure, claim 25 is indefinite § 112(b).
Functional Phrase #8 Claim 31
Functional Phrase #11 states:
wherein the first processor circuit is arranged to:
determine an identification of the user based on the at least one physiological parameter;
Functional Phrase #8 (“FP#8”) as recited in Claim 31.
Based upon the claim language, the function of FP#8 is:
“to: determine an identification of the user based on the at least one physiological parameter;”
Functional Phrase #8 (“FP#8”) as recited in Claim 31.
Because the claimed “the first processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#8 without special programming, the Examiner concludes that FP#8 meets invocation Prong (C).
Based upon the express wording within FP#8, the Examiner finds that to a POSITA, the claim language itself within FP#8 does not recite an algorithm for accomplishing the Function of FP#8.
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#8 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#8 to some corresponding structure, claim 31 is indefinite § 112(b).
Functional Phrase #9 Claim 31
Functional Phrase #9 states:
wherein the third processor circuit is arranged to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification.
Functional Phrase #9 (“FP#9”) as recited in Claim 31.
Based upon the claim language, the function of FP#9 is:
“to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification;”
Functional Phrase #9 (“FP#9”) as recited in Claim 31.
Because the claimed “the third processor circuit” does not contain sufficient structure (as defined by the CAFC) for performing the entire Function of FP#8 without special programming, the Examiner concludes that FP#9 meets invocation Prong (C).
Based upon the express wording within FP#9, the Examiner finds that to a POSITA, the claim language itself within FP#9 does not recite an algorithm for accomplishing the Function of FP#9.
Based upon a review of the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#9 to some corresponding structure found in the specification.
Because the Original Disclosure fails to clearly link or associate the Function of FP#9 to some corresponding structure, claim 31 is indefinite § 112(b).
The Examiner finds that the analysis above with respect to FP#1-4 for the first, second, and third processors of claim 1 apply to FP#5-FP#13 and the analysis or the FP#1-4 for claims 1 is incorporated herein.
Because the Original Disclosure fails to clearly link or associate the Function of FP#5-13 to some corresponding structure, claims 19, 25 and 31are indefinite under § 112(b). A § 112(b) rejection is set forth below for claims 19, 25, and 31.
CLAIM REJECTIONS - 35 USC § 112 1ST PARAGRAPH
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.
Claims 1-15, 37-39, and 46-49 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement.
New Matter
1. “mobile device” in claim 1 is “arranged to … cause the second mobile device to
Claims 1-10 and 12-15 are rejected under § 112(a) because these claims contain new matter.
The Original Disclosure does not disclose that the “mobile device” in claim 1 is “arranged to … cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle ….”
2. “determine that the user is to enter into a vehicle”
Claims 1-15, 37, 38, 39, and 46-49 are rejected under § 112(a) because these claims contain new matter.
The Original Disclosure does not disclose “determin[ing] that the user is to enter into a vehicle ….” This function or method step is not disclosed.
Computer Implemented Functions – 35 U.S.C. § 112(a) Rejections
Claims 1-21, 25-27, and 31-54 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement.
Claims 1-21, 25-27, and 31-54 recites computer-implemented functions including, among other limitations, “a first processor circuit”, “a second processor circuit” and a “a third processor circuit” perform the limitations of the claims.
Applicant(s) is/are respectfully reminded, for computer-implemented functional claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.” MPEP § 2161.01(I).
Applicant’s Original Disclosure does not describe an algorithm that performs the functions of FP#1-#13 as outlined above or in any of the independent method claims 11, 16, 34, 37, 40, 43, and 46. For example, the algorithm for “adjust at least one vehicle parameter based on at least one pre-defined user setting and the identification of the user” in claim 34 and the algorithm for “determining by the second mobile device that the user is to enter into the vehicle” as recited in claim 37 cannot be reasonably found in the Original Disclosure.
Applicant’s specification does not describe an algorithm that performs the function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For example, Applicant’s specification ‘249 defines the following;
Processing for certain embodiments of the vehicle settings adjustment system may be included in one or any combination of the vehicle processing unit 12, a cloud (e.g., one or more devices of the clouds 18 and/or 26), the driver wearable 22, the passenger wearable 30, the driver mobile device 24, the passenger mobile device 32, and/or the camera 34. For instance, user identification and/or user preferences (e.g., for vehicle parameter adjustments) may be achieved and/or stored, respectively, at any one or more of these devices based on sensed physiological parameters. Further, sensing of physiological parameters may be achieved via the mobile devices 24, 32, interior and exterior sensors 16, 14, respectively, camera 34, and/or the one or more sensors of the wearable devices 22, 30. However, in the interest of facilitating an understanding of operation of certain embodiments of a vehicle settings adjustment system and further in the interest of brevity, the description that follows focuses on the measurement of physiological parameters and any identification of the user using one or more sensors of the wearable devices 22 and/or 30, and determination of vehicle parameters (whether via access to pre-defined settings locally or remotely stored and/or without using an identity of the user) is described as being performed by the vehicle processing unit 12, with the understanding that variations to the described embodiments where these functions are implemented elsewhere among the various devices depicted in FIG. 1 are also contemplated and hence within the scope of the invention.
‘249 specification column 9 lines 26-53.
However, such disclosure is not an algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
Applicant is also reminded, “[i]f the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.” MPEP § 2161.01(I).
Therefore, because an algorithm for the function above is not disclosed in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter, and in accordance with MPEP § 2161.01, claims 1-21, 25-27, and 31-54 are rejected for lack of written description.
CLAIM REJECTIONS - 35 U.S.C. § 112(b)
35 U.S.C. § 112(b) indefiniteness rejection
The following is a quotation of 35 U.S.C. § 112(b) (“§ 112(b)”):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-10, 12-15, 19-21, 25-27, 31-33, and 51-53, are rejected under § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
A. Particular Phrases that Invoke § 112(f) and Are Indefinite Under § 112(b)
Functional Phrases FP#2 through FP#9 are indefinite under § 112(b). In particular Applicant fails to clearly link or associate the entire claimed function to some corresponding structure in the Original Disclosure.
The following phrases that have been determined by the Examiner to have invoked § 112(f) and are indefinite under § 112 (b): FP#2 through FP#9.
In particular, Applicant has failed to clearly link or associate the claimed function to some corresponding structure in the Original Disclosure.
Scope of the Claims Cannot Be Reasonable Determined
Claim 1 is Indefinite Because the Scope of the Claim Cannot Be Reasonably Determined
Claim 1 is indefinite because the claim scope cannot be reasonably determined. In particular, it is unclear to a person of ordinary skill in the art if Applicant intends claim 1 to be drawn to the structure of the subcombination (i.e. a first “mobile device”) alone, or alternatively, Applicant intends claim 1 to be drawn to the structure of the first “mobile device” in combination with the “second mobile device” (with “a second processor circuit”) and “a vehicle.”
Based upon the express wording in the clams, the Examiner finds that
Claim 1 begins: “A mobile device, comprising...”
Claim 2 begins: “The mobile device of claim 1 ....”
Claim 3 begins: “The mobile device of claim 1 ....”
Claim 4 begins: “The mobile device of claim 1 ....”
Claim 5 begins: “The mobile device of claim 1 ....”
Claim 6 begins: “The mobile device of claim 1 ....”
Claim 7 begins: “The mobile device of claim 1 ....”
Claim 12 begins: “The mobile device of claim 1 ....”
Claim 14 begins: “The mobile device as claimed in claim 1 ....”
Claim 15 begins: “The mobile device as claimed in claim 1 ....”
From this evidence, a person of ordinary skill in the art could reasonably interpret claim 1 as being drawn to a first “mobile device” alone. In other words, the factual findings above (i.e., elements (a)-(j) above) are strong evidence that the scope of claim 1 is limited to a single “mobile device.”
Based upon the express wording in the clams, the Examiner finds that claim 1 also recites:
… a second mobile device comprises the second processor circuit, wherein the sending of the identity of the user to the second processor circuit causes the second processor circuit to: determine that the user is to enter into a vehicle; cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle, wherein the vehicle comprises the third processor circuit, wherein the sending of the identification of the user to the third processor circuit causes the third processor Circuit to: access at least one pre-defined user setting from a storage circuit based on the identification of the user; and adjust at least one vehicle parameter based on the at least one pre-defined user setting …. [Emphasis added.]
Claim 1, (November 6, 2024)
From this section in the body of claim 1, a person of ordinary skill in the art could alternatively interpret claims 1 as being drawn to not only a first “mobile device” as recited in claim 1’s preamble, but a first “mobile device” as recited in claim 1’s preamble in combination with “a second mobile device,” and “a vehicle.”
Based upon this particular language in the body of claim 1, the “second mobile device” and “vehicle” are clearly outside the scope of the first “mobile device” recited in claim 1’s preamble. In other words, to one of ordinary skill in this particular art, the Examiner finds that the first “mobile device” as recited in claim 1’s preamble cannot be within the “second mobile device” because it is not technologically possible. The converse is equally true. To one of ordinary skill in this particular art, the Examiner finds that the “second mobile device” cannot be within the first “mobile device” as recited in claim 1’s preamble since that too is not technologically possible. Based upon the evidence of record, the Examiner finds that mobile devices are separate objects and cannot be placed inside one another.
Applicant even argues that in claim 1, “the claimed mobile device does not include the second processor circuit.” Nov 2024 Remarks, p 40. This is strong evidence that the “second processor circuit” is outside the scope of claim 1. And if the “second processor circuit” is outside the scope of claim 1, the “second processor circuit” need not be shown in the prior art for anticipation or obviousness.
Yet claim 1 expressly states functionalities of the second processor circuit such as “determine that the user is to enter into a vehicle.” This is strong conflicting evidence that the “second processor circuit” is part of claim 1. Applicant is reminded that the MPEP states:
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. [Emphasis added.]
MPEP § 2173.02 II.
First, because a potential infringer of claim 1 would not know if direct infringement required creation or importation (i.e., possession) of the subcombination “first “mobile device” as recited in claim 1’s preamble alone, or if direct infringement required possession of the combination first “mobile device” as recited in claim 1’s preamble and “a second mobile device” (with “a second processor circuit”), claim 1 is indefinite under § 112(b).
Second, because a potential infringer of claim 1 would not know if direct infringement required creation or importation (i.e., possession) of the subcombination “first “mobile device” as recited in claim 1’s preamble alone, or if direct infringement required possession of the combination first “mobile device” as recited in claim 1’s preamble and “a vehicle”, claim 1 is indefinite under § 112(b). “The primary purpose of this requirement of definiteness in claims is to provide clear warning to others as to what constitutes infringement of the patent.” Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000)(citations and quotations omitted).
Claims 2-7, 10, 12, 13-15 are also indefinite because the depend from indefinite claim 1.
Claim 25 is Indefinite Because the Scope of the Claim Cannot Be Reasonably Determined
Claim 25, 26, 27, and 52 are also indefinite because the claims scope cannot be reasonably determined. This rejection is substantially similar to the § 112(b) rejection set forth above. In particular, it is unclear to a person of ordinary skill in the art if Applicant intend claim 1 to be drawn to the structure of the subcombination (i.e. a first “mobile device”) alone, or alternatively, Applicants intend claim 1 to be drawn to the structure of the first “mobile device” in combination with the “second mobile device” and/or “a vehicle.”
The preamble of claim 25 begins “[a] mobile device comprising ….” The preamble of claim 26 and claim 27 begins “[t]he mobile device of claim 25 ….” From this evidence a POSITA could reasonably conclude that claim 25 is drawn to a “mobile device” alone.
However the body of claim 25 also states that “wherein the second mobile device comprises the second processor circuit, wherein the second processor circuit is arranged to [perform various actions.] From this claim language, a POSITA could reasonably conclude that the scope of claim 1 is a mobile device in combination with a “second mobile device.”
In other words, because a potential infringer of claim 25 would not know if direct infringement required creation or importation (i.e., possession) of the subcombination “first “mobile device” as recited in claim 25’s preamble alone, or if direct infringement required possession of the combination first “mobile device” as recited in claim 1’s preamble and “a second mobile device”, claim 25 is indefinite under § 112(b). “The primary purpose of this requirement of definiteness in claims is to provide clear warning to others as to what constitutes infringement of the patent.” Solomon v. Kimberly-Clark, 216 F.3d at 1379 (citations and quotations omitted).
Claims 8 and 9 are indefinite because It Is Unclear Upon Which these Claims Depend
Claims 8 and 9 are indefinite because it is unclear what particular claim these two claims depend. For example, claim 8 begins “The mobile device of claim [] ….” Claim 9 depends on claim 8.
Claims Do Not Make Grammatical Sense
Claim 10 indefinite because the phrase “first processor circuit is arranged to, prior to the causing, receive …” does not make grammatical sense.
Claim 16 indefinite because the phrase it is unclear to which the phase “based upon the identification of the user” (lines 17-18) refers to.
Claim 19 indefinite because the claimed structure of the “arrangement” of the first and second processor circuits cannot be reasonable determined. It is unclear if these are two circuits or one circuit. For example, if “first processor circuit” (line 12 ) is chosen to “determine the identification of the user” (line 13), it is unclear how “second processor circuit is arranged to send the identification of the user from the second mobile device to the third processor circuit of the vehicle” when the “first processor circuit” (line 12 ) is chosen.
CLAIM REJECTIONS - 35 USC § 251
Claims 1-21, 25-27, and 31-54 are rejected under 35 U.S.C. 251 as being based upon insufficient written description and the Computer Implemented Functions rejections above. The added material which is not supported by the prior patent is as follows:
Please see the § 112(a) Computer Implemented Functions rejection above.
CLAIM REJECTIONS - 35 USC § 103
Claims 1-7, 10-21, 25-27, and 31-54 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over WO 2017/089538 to Boesen (‘538) in view of US 2017/0129335Al to Lu (Lu).
The Examiner finds that with respect to the clam limitations that correspond to the first second and third processor performing specific functions as claimed Boesen ‘538 discloses the following on page 17;
One or more wearable devices 10 such as a set of earpieces including a left earpiece 12A and a right earpiece 12B may be in operative communication with the vehicle control system 40 via the communications system 48. The communications system 48 may communicate with the wearable devices 10 directly or through a mobile device 4 such as a mobile phone, a tablet, or other type of mobile device. For example, the communications system 48 may provide a Bluetooth or BLE link directly to the wearable devices or may provide a Bluetooth or BLE link to a mobile phone in operative communication with either the left earpiece 12A or the right earpiece 12B. As will be explained in further detail with respect to various examples, the wearable devices 10 may interact with the vehicle control system 40 in any number of different ways. For example, the wearable devices 10 may provide sensor data, identity information, stored information, streamed information, or other types of information to the vehicle 2. Based on this information, the vehicle 2 may take any number of actions which may include one or more actions taken by the vehicle control system 40 (or subsystems thereof). In addition, the vehicle 2 may communicate sensor data, identity information, stored information, streamed information or other types of information to the wearable devices 10.
‘538 page 17 emphasis added by the Examiner
This is a combination of the first, second and third processors all working together to process information related to the control of a vehicle including entering the vehicle as detailed in the previous rejection. Additionally as best as can be determined based on the 35 U.S.C. §112(6th ¶) claim interpretation , and the 35 U.S.C. §112(1st ¶) and the 35 U.S.C. §112(2nd ¶) rejections above the Applicant is not entitled to the claimed structure currently presented in the claims.
Boesen discloses a combination of the first, second and third processors all working together to process information related to the control of a vehicle including entering the vehicle as detailed in the previous rejection. Additionally as best as can be determined based on the 1126 112f claim interpretation, and the 35 U.S.C. §112(1st ¶) and the 35 U.S.C. §112(2nd ¶) rejections above the Applicant is not entitled to the claimed structure currently presented in the claims.
The specific processor and what is processed with respect to which processor is communicated sensor data with identity information in order to allow access to the vehicle could be any processor or processing circuit that performs an algorithm that performs the claimed function. Since the algorithm is not defined any of the connected processors can communicate the above information including sensor data and identity information. Boesen ‘438 does disclose 3 different processor circuits in communication with each other.
Accordingly, Boesen in view of Lu disclose all of the claimed subject matter as currently claimed and presented below.
(Amended) A mobile device, comprising: at least one sensor (‘538 Fig. 3); and
a first processor circuit (See e.g. ‘538 at Fig. 3 [30], and at P18:L23): The intelligent control system 30 may include one or more processors ), wherein the first processor circuit is arranged to:
determine an identification of a user based on the at least one physiological parameter;
‘538 at P7:L24 – P8:L8, Fig. 3, 5
send the identification of the user from the mobile device to a second processor circuit, wherein the second processor circuit is included in a vehicle;
While ‘538 does not expressly disclose a second processor per se, it does disclose that the intelligent control system 30 (first processor) communicates via the vehicles communication system. (e.g. at P42:L2, Fig. 5) Such vehicle communications systems would be known to include a processor. (See, e.g. EP2981589 at Fig. 3 [314] (processor), [320] (system communication) of record parent 15/893085) However, the extent that the claim requires an express teaching of a second processor circuit in a vehicle this feature would be obvious in view of Lu’s teaching of a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor.
wherein the sending causes the second processor circuit to access at least one pre-defined user setting from a storage circuit based on the identification of the user; and to adjust at least one vehicle parameter based on the at least one pre-defined user setting.
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
2. (Amended) The mobile device of claim 1, wherein the first processor circuit is arranged to:
receive a changed value for the at least one physiological parameter; and
cause adjustment of the at least one vehicle parameter based on the changed value, wherein the adjustment alters the at least one pre-defined user setting.
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
3. (Amended) The mobile device of claim 1, wherein the at least one vehicle parameter is associated with at least one passenger focused setting or at least one driver-focused setting.
‘538 and Lu both teach this feature:
‘538 at P23:L14: According to another aspect, one or more wearable devices may be used to identify an individual and the role of the individual as a driver or passenger of a vehicle. Once the driver has been identified a number of different actions may be taken by a vehicle control system. This may include automatically adjusting various settings within the vehicle based on user preferences. Thus, for example, seats may be adjusted to the position preferred by the user
including adjusting the seat forward or back, adjusting the seat upward or downward, or
adjusting the angle of the seat. Similarly, the position of the rearview mirrors or other mirrors
may be adjusted based on preferences associated with a particular driver. In addition, steering
wheel position may also be adjusted based on preferences associated with the particular driver.
These various adjustments may be performed in various ways including through the use of servo
motors or other types of motors, switches, or actuators.
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
4. (Amended) The mobile device of claim 1, wherein the at least one vehicle parameter, when adjusted, affects one or any combination of what the user feels, hears, sees, or the user's cognitive ability.
The settings described by ‘538 and Lu noted above relative to claims 3 would be known to affect what the user feels, hears, sees etc. Id
5. (Amended) The mobile device of claim 1, wherein the at least one vehicle parameter corresponds to one or any combination of vehicle seat settings, mirror settings, interior climate settings, playback of one or a combination of video or audio playback, driving plan settings, or
game console settings.
The settings described by ‘538 and Lu noted above relative to claims 3 would be understood at vehicle settings. Id
6. (Amended) The mobile device of claim 1,
wherein the at least one sensor is configured to sense one or any combination of patterns in fingerprint, voice, iris, tongue, or ear of the user, and (‘538 at P22:L6, P22:L1, Lu at [0042])
wherein the first processor circuit is arranged to:
perform a scan of the one or any combination of patterns
fingerprint, voice, iris, tongue, or ear of the user; (‘538 at P7:L24 – P8:L8, P22:L6, P22:L1, Fig. 5, Lu [0116])
identify the user based on the scanned one or any combination of
patterns in fingerprint, voice, iris, tongue, or ear of the user; (‘538 at P7:L24 – P8:L8, P22:L6, P22:L1, Fig. 5, Lu [0116]) and
communicate the identification of the user to vehicle logic.
‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. (See e.g. explanation relative to claim 1 above)
7. (Amended) The mobile device of claim 1, wherein the at least one physiological parameter comprises at least one pattern in heart rate, heart rate variability, electrodermal activity, voice, facial features, fingerprint features, iris features, tongue features, ear features,
respiration, activity, or sleep signals.
‘538 and Lu both teach this feature:
Lu at [0116]: In various embodiments, the vehicle 10 and/or the device 900 is configured to determine whether the user is present or proximate the vehicle - such as by determining that the wearable device is proximate the vehicle 10. The vehicle 10 may identify or authenticate the user presence for this purpose in any of a variety of ways, along with or in addition to detecting proximity of a user mobile device, such as by voice authentication, facial authentication, retina scan, etc. In various embodiments, the device 900 and/or the vehicle 10 only sense and/or act on user gestures after the presence or proximity determination is made at the device 900 and/or vehicle 10.
‘538 at P34:L24: These various sensors may be used in any number of ways to provide feedback to the vehicle. For example, the sensors may be used to detect emergency conditions associated with an occupant of the vehicle. Where the wearable device is an earpiece, the inertial sensors may be used to track head movement of the driver. If the head movement of the driver indicates that the user is falling asleep, such as downward movement of the chin and then snapping back of the head as the user catches themselves falling asleep, or other movements associated with a user falling asleep, then the earpiece may communicate a message to the vehicle. Upon receipt of the message, the vehicle may take any number of relevant actions. This may include turning on loud music, opening one or more windows, adjusting environmental controls such as making the cabin temperature cooler, turning-on autonomous or self-driving operations if available or turned off, locating the nearest rest stop or hotel or motel and providing navigation directions to it, turning on emergency hazard lights, disabling the vehicle, providing one or more audio warnings, placing a phone call or any number of other actions ensuring the safety of the driver. (See also, ‘538 at P22:L1, L6)
8. (Amended) The mobile device of claim 1, wherein the first processor circuit is
arranged to interpret the at least one physiological parameter as an indication that the user's ability to operate a vehicle is compromised, and wherein the causing of the adjustment of the at least one vehicle parameter comprises preventing the vehicle from starting. (‘538 at P13:L15-18, LU [0043])
9. (Amended) The mobile device of claim 8, further comprising a communication module, wherein the first processor circuit is arranged to cause the communications module to communicate adjustments with another device. (‘538 Figs 5-7, P3:L23, P21:L13, Lu [0051])
10. (Amended) The mobile device of claim 1, wherein the first processor circuit is
arranged to, prior to the causing:
receive at least one physiological parameter; (Lu at [0051-0052], ‘538 at P12:L14-28)
monitor changes (‘538 Fig. 9, P12:L15-28) to the at least one vehicle parameter; and
correlate the changes to the at least one vehicle parameter to the at least one physiological parameter. (‘536 at P7:L17-20, P22:L16-20)
11. (Amended) A method implemented by a mobile device, the method comprising:
receiving at least one physiological parameter of a user sensed by at least one sensor of the mobile device; (Lu at [0051-0052], ‘538 at P12:L14-28, Figs. 5&6)
determining an identification of the user based on the at least one physiological parameter; (‘538 at P7:L24 – P8:L8, Fig. 5)
sending the identification of the user to a second processor circuit, wherein the second processor circuit is included in a vehicle;
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
causing the second processor circuit to access at least one pre-defined user setting
from a storage system based on the identification of the user; and
As noted above, both ‘538 and Lu teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
causing adjustment of at least one vehicle parameter based on the at least one pre-defined user setting.
As noted above, ‘538 and Lu both teach this feature:
‘538 at P23:L14: According to another aspect, one or more wearable devices may be used to identify an individual and the role of the individual as a driver or passenger of a vehicle. Once the driver has been identified a number of different actions may be taken by a vehicle control system. This may include automatically adjusting various settings within the vehicle based on user preferences. Thus, for example, seats may be adjusted to the position preferred by the user including adjusting the seat forward or back, adjusting the seat upward or downward, or adjusting the angle of the seat. Similarly, the position of the rearview mirrors or other mirrors
may be adjusted based on preferences associated with a particular driver. In addition, steering
wheel position may also be adjusted based on preferences associated with the particular driver.
These various adjustments may be performed in various ways including through the use of servo
motors or other types of motors, switches, or actuators.
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
12. (Amended) A system, comprising:
at least one sensor (‘538 Fig. 3); and
a first processor (See e.g. ‘538 at Fig. 3 [30], and at P18:L23)
wherein the first processor circuit is arranged to:
receive at least one physiological parameter of a user sensed by the at least one sensor; (Lu at [0051-0052], ‘538 at P12:L14-28, Figs. 5&6)
send the at least one physiological parameter to a second processor circuit, wherein the second processor circuit is included in a vehicle;
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
cause the second processor circuit to determine an identification of the user based on the at least one physiological parameter; (‘538 at P7:L24 – P8:L8, Fig. 5) See also 112 rejection below)
cause the second processor circuit to access at least one pre-defined user setting from a storage system based on the identification of the user; and
As noted above, both ‘538 and Lu teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
cause adjustment of at least one vehicle parameter based on the at least one pre-defined user setting.
As noted above, ‘538 and Lu both teach this feature:
‘538 at P23:L14: According to another aspect, one or more wearable devices may be used to identify an individual and the role of the individual as a driver or passenger of a vehicle. Once the driver has been identified a number of different actions may be taken by a vehicle control system. This may include automatically adjusting various settings within the vehicle based on user preferences. Thus, for example, seats may be adjusted to the position preferred by the user including adjusting the seat forward or back, adjusting the seat upward or downward, or adjusting the angle of the seat. Similarly, the position of the rearview mirrors or other mirrors
may be adjusted based on preferences associated with a particular driver. In addition, steering
wheel position may also be adjusted based on preferences associated with the particular driver.
These various adjustments may be performed in various ways including through the use of servo
motors or other types of motors, switches, or actuators.
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
13. (Amended) The system of claim 12, wherein the system is a mobile device.
Both ‘538 and Lu teach mobile devices as noted above. Id (See, 112 rejection below)
14. (New) A mobile device as claimed in claim 1, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
15. (New) A mobile device as claimed in claim 1, wherein the at least one predefined
user setting is comprised within a user profile. (Lu at [0060])
16. (New) A method of adjusting at least one vehicle parameter using a mobile
device, the method comprising:
sensing at least one physiological parameter using at least one sensor;
(‘538 at P7:L24 – P8:L8, Fig. 3, 5)
determining an identification of a user based on the at least one physiological
parameter; (‘538 at P7:L24 – P8:L8, Fig. 3, 5) and
sending the identification of the user from the mobile device to a second processor circuit,
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
wherein the second processor is included in a vehicle,
While ‘538 does not expressly disclose a second processor per se, it does disclose that the intelligent control system 30 (first processor) communicates via the vehicles communication system. (e.g. at P42:L2, Fig. 5) Such vehicle communications systems would be known to include a processor. (See, e.g. EP2981589 at Fig. 3 [314] (processor), [320] (system communication) of record parent 15/893085) However, the extent that the claim requires an express teaching of a second processor circuit in a vehicle this feature would be obvious in view of Lu’s teaching of a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
wherein the sending causes the second processor circuit to access at least one
pre-defined user setting from a storage circuit, based on the identification of the user,
and to adjust at least one vehicle parameter based on the at least one pre-defined user
setting.
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
17. (New) A method as claimed in claim 16, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
18. (New) A method as claimed in claim 16, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
19. (New) A system for adjusting at least one vehicle parameter using a mobile device, comprising:
a vehicle comprising a second processor circuit and a storage circuit, wherein the storage circuit stores at least one pre-defined user setting; and a mobile device comprising:
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
‘538 and Lu both teach features relating to a storage circuit and pre-defined user setting:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
a first processor circuit; (‘538 at Fig. 3 [30], and at P18:L23)
at least one sensor coupled to the first processor circuit (Fig. 3 [30]), wherein the sensor is arranged to sense at least one physiological parameter, (‘538 at P7:L24 – P8:L8, Fig. 3, 5)
wherein the first processor circuit is arranged to:
determine an identification of a user based on the at least one physiological parameter; (‘538 at P7:L24 – P8:L8, Fig. 5) and
send the identification of the user from the mobile device to the vehicle;
As noted above with respect to claim 1, ‘538 does not expressly disclose a second processor per se, but does disclose that the intelligent control system 30 (first processor) communicates via the vehicles communication system. (e.g. at P42:L2, Fig. 5) Such vehicle communications systems would be known to include a processor. (See, e.g. EP2981589 at Fig. 3 [314] (processor), [320] (system communication) of record parent 15/893085) However, the extent that the claim requires an express teaching of a second processor circuit in a vehicle this feature would be obvious in view of Lu’s teaching of a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
wherein the second processor circuit in the vehicle is arranged to:
receive the identification of the user from the mobile device;
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) and ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
access the at least one pre-defined user setting from the storage circuit, based on the identification of the user; and
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
adjust the at least one vehicle parameter based on the at least one pre-defined user setting.
As noted above ‘538 and Lu both disclose adjusting vehicle parameters based on user settings. Id.
20. (New) A system as claimed in claim 19, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
21. (New) A system as claimed in claim 19, wherein the at least one pre-defined
user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
25. (New) A mobile device, comprising: at least one sensor wherein the sensor is arranged to sense at least one physiological parameter; (‘538 Fig. 3);
a storage circuit, wherein the storage circuit stores at least one pre-defined user
setting; and
‘538 and Lu both teach features relating to a storage circuit and pre-defined user setting:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
a first processor circuit arranged to: (See e.g. ‘538 at Fig. 3 [30], and at P18:L23)
determine an identification of a user based on the at least one physiological parameter;
(Lu at [0051-0052], ‘538 at P12:L14-28, Figs. 5&6)
access the at least one pre-defined user setting from the storage circuit, based on the identification of the user; and
As noted above, both ‘538 and Lu teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
send the identification of the user and the at least one pre-defined user setting from the mobile device to a second processor circuit, wherein the second processor circuit is included in a vehicle,
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
wherein the sending causes the vehicle to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification.
As noted above, ‘538 and Lu both teach this feature:
‘538 at P23:L14: According to another aspect, one or more wearable devices may be used to identify an individual and the role of the individual as a driver or passenger of a vehicle. Once the driver has been identified a number of different actions may be taken by a vehicle control system. This may include automatically adjusting various settings within the vehicle based on user preferences. Thus, for example, seats may be adjusted to the position preferred by the user including adjusting the seat forward or back, adjusting the seat upward or downward, or adjusting the angle of the seat. Similarly, the position of the rearview mirrors or other mirrors
may be adjusted based on preferences associated with a particular driver. In addition, steering
wheel position may also be adjusted based on preferences associated with the particular driver.
These various adjustments may be performed in various ways including through the use of servo
motors or other types of motors, switches, or actuators.
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
26. (New) The mobile device of claim 25, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature
and an iris feature. . (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
27. (New) The mobile device of claim 25, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
31. (New) A system for adjusting at least one vehicle parameter using a mobile
device, comprising:
a vehicle comprising a second processor circuit; and
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
a mobile device comprising:
a first processor circuit; (‘538 at Fig. 3 [30], and at P18:L23)
at least one sensor coupled to the first processor circuit, (Fig. 3 [30]) wherein the sensor is arranged to sense at least one physiological parameter, (‘538 at P7:L24 – P8:L8, Fig. 3, 5)
wherein the first processor circuit arranged to:
determine an identification of a user based on the at least one physiological parameter; and (‘538 at P7:L24 – P8:L8, Fig. 5)
send the identification of the user, and at least one pre-defined user setting, from the mobile device to the vehicle;
As noted above with respect to claim 1, ‘538 does not expressly disclose a second processor per se, but does disclose that the intelligent control system 30 (first processor) communicates via the vehicles communication system. (e.g. at P42:L2, Fig. 5) Such vehicle communications systems would be known to include a processor. (See, e.g. EP2981589 at Fig. 3 [314] (processor), [320] (system communication) of record parent 15/893085) However, the extent that the claim requires an express teaching of a second processor circuit in a vehicle this feature would be obvious in view of Lu’s teaching of a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
wherein the second processor circuit in the vehicle is arranged to:
receive the identification of the user and the at least one pre-defined user setting from the mobile device; and
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) and ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
adjust at least one vehicle parameter based on the at least one predefined user setting and the identification.
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
32. (New) The vehicle of claim 31, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
33. (New) The vehicle of claim 31, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
34. (New) A method of adjusting at least one vehicle parameter using a mobile device, the method comprising:
sensing at least one physiological parameter using at least one sensor; (‘538 at P7:L24 – P8:L8, Fig. 3, 5)
determining an identification of a user based on the at least one physiological
parameter; (‘538 at P7:L24 – P8:L8, Fig. 3, 5) and
sending the identification of the user and at least one pre-defined user setting
from the mobile device to a second processor circuit,
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1
wherein the second processor circuit is included in a vehicle,
While ‘538 does not expressly disclose a second processor per se, it does disclose that the intelligent control system 30 (first processor) communicates via the vehicles communication system. (e.g. at P42:L2, Fig. 5) Such vehicle communications systems would be known to include a processor. (See, e.g. EP2981589 at Fig. 3 [314] (processor), [320] (system communication) of record parent 15/893085) However, the extent that the claim requires an express teaching of a second processor circuit in a vehicle this feature would be obvious in view of Lu’s teaching of a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
wherein the sending causes the second processor circuit to adjust at least one vehicle parameter based on the at least one pre-defined user setting and the identification of the user.
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
35. (New) The method of claim 34, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
36. (New) The method of claim 34, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
37. (New) A method for adjusting at least one vehicle parameter using a mobile device, the method comprising:
storing at least one pre-defined user setting in a storage circuit of a vehicle;
‘536 and Lu both teach features relating to a storage circuit and pre-defined user setting:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
sensing, with at least one sensor of a mobile device, at least one physiological parameter;
(‘538 at P7:L24 – P8:L8, Fig. 3, 5)
determining, with a first processor circuit of the mobile device, an identification of
a user based on the at least one physiological parameter;
(‘538 at P7:L24 – P8:L8, Fig. 3, 5)
sending the identification of the user from the mobile device to the vehicle;
(See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
receiving, at a second processor circuit, the identification of the user from the mobile device, wherein the second processor is included in the vehicle;
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) and ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
accessing, with the second processor circuit, the at least one pre-defined user setting from the storage circuit, based on the identification of the user; and
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
adjusting, with the second processor circuit, the at least one vehicle parameter based on the at least one pre-defined user setting.
As noted above ‘538 and Lu both disclose adjusting vehicle parameters based on user settings. Id.
38. (New) The method of claim 37, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
39. (New) The method of claim 37, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
40. (New) A method of adjusting at least one adjustable vehicle parameter, the method comprising:
storing at least one pre-defined user setting in a storage circuit of a vehicle;
‘538 and Lu both teach features relating to a storage circuit and pre-defined user setting:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
receiving, at a second processor circuit of the vehicle, an identification of a user based on at least one physiological parameter of the user from a mobile device, wherein the second processor circuit is included in the vehicle;
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) and ‘538 teaches sending identification of the user based on physiological parameters to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
accessing, with the second processor circuit, the at least one pre-defined user setting from the storage circuit, based on the identification of the user; and
‘538 and Lu both teach this feature:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
adjusting, with the second processor circuit, the at least one vehicle parameter based on the at least one pre-defined user setting.
As noted above ‘538 and Lu both disclose adjusting vehicle parameters based on user settings. Id.
41. (New) The method of claim 40, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
42. (New) The method of claim 40, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
43. (New) A method of adjusting at least one adjustable vehicle parameter, the
method comprising:
receiving from a mobile device, at a second processor circuit of a vehicle, an identification of a user based on at least one physiological parameter of the user;
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) and ‘538 teaches sending identification of the user based on physiological parameters to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8)
receiving from the mobile device, at the second processor circuit, at least one pre-defined user setting; and
As noted above, Lu teaches a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
adjusting with the second processor circuit the at least one adjustable vehicle parameter based on the at least one pre-defined user setting and the identification.
As noted above with regard to claim 28 both ‘538 and Lu disclose adjusting vehicle parameters based on user settings. Id.
44. (New) The method of claim 43, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
45. (New) The method of claim 43, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
46. (New) A method of adjusting at least one adjustable vehicle parameter, the method comprising:
sensing, with at least one sensor of a mobile device, at least one physiological parameter;
(‘538 at P7:L24 – P8:L8, Fig. 3, 5)
determining, with a first processor circuit of the mobile device, an identification of a user based on the at least one physiological parameter; (‘538 at P7:L24 – P8:L8, Fig. 3, 5)
sending the identification of the user, and at least one pre-defined user setting, from the mobile device to a vehicle;
As noted above, ‘538 teaches sending identification of the user based on physiological parameters to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) ‘538 and Lu further teach:
‘538 at P8:L1: According to another aspect, a system includes a vehicle having a vehicle network. The system further includes a wearable device in operative communication with the vehicle network. The vehicle is configured to determine user settings for the vehicle from data received from the wearable device and implement the user settings for the vehicle. The data may be biometric data such as biometric data determined using one or more sensors of the wearable device such as a physiological sensor or inertial data. The biometric data may also be stored on the wearable device. The user settings may include settings such as steering wheel settings, seat settings, environmental control settings, or entertainment settings. (See also Figs. 5, 6 and 9)
Lu [0079]: The setting datastore 310 stores one or more settings associated with the control of the systems of the vehicle 10, including, but not limited to the vehicle control system 130, the HVAC system 21, the seat system 23, the infotainment system 25, the lock system 27, the lighting system 29, the window system 31 and the alarm system 33, based on the determined physiological change 321 and the determined physiological condition 322…
Lu at [0080]: The conditions control module 312 receives as input the physiological change 321 and the physiological condition 322. The conditions control module 312 processes
the physiological change 321 and the physiological condition 322; and retrieves the corresponding settings 334. The conditions control module 312 outputs the output 199 for the
vehicle control system 130, which includes HVAC data 336, seat data 338, vehicle controls data 340, infotainment data 342, light data 344, lock data 346, window control data 347 and alarm data 349 based on the retrieved settings 334.
receiving from the mobile device, at a second processor circuit, the identification of the user and the at least one pre-defined user setting,
As noted above ‘538 and Lu both disclose receiving a user identification at a second processor inclusive user settings. Id.
wherein the second processor circuit is included in the vehicle; and
While ‘538 does not expressly disclose a second processor per se, it does disclose that the intelligent control system 30 (first processor) communicates via the vehicles communication system. (e.g. at P42:L2, Fig. 5) Such vehicle communications systems would be known to include a processor. (See, e.g. EP2981589 at Fig. 3 [314] (processor), [320] (system communication) of record parent 15/893085) However, the extent that the claim requires an express teaching of a second processor circuit in a vehicle this feature would be obvious in view of Lu’s teaching of a second processor included in the vehicle. (See, e.g. Figs 1, 8 [44] disclosing an in vehicle (second) processor) Note that ‘538 teaches sending identification of the user to the vehicle network. (See, e.g. Figs 5 and 6, ‘538 at P7:L24 – P8:L8) Such networking being known to include a processor. Hence, the limitation is obvious based on the reasoning set forth above with regard to claim 1.
adjusting with the second processor circuit the at least one adjustable vehicle parameter based on the at least one pre-defined user setting and the identification.
As noted above with regard to claim 28 both ‘538 and Lu disclose adjusting vehicle parameters based on user settings. Id.
47. (New) The method of claim 46, wherein the at least one physiological parameter is selected from the group consisting of a facial feature, a fingerprint feature and an iris feature. (Obvious in view of ‘538 fingerprint (P22:L6) and Lu iris (eye fingerprint), face recognition (Lu at [0042])
48. (New) The method of claim 46, wherein the at least one pre-defined user setting is comprised within a user profile. (Lu at [0060] – control module 68 accesses a remote datastore 72, and retrieves a user profile based on the receipt of the remote notification.)
Claims 49-54 are the same with the exception of their dependency to the independent claims. Claims 49 below is representative.
49. (New) The method of claim 11, wherein the first mobile device comprises a
mobile telephone, and wherein the second mobile device comprises a wearable device,
wherein the wearable device is arranged to be worn by the user.
One or more wearable devices 10 such as a set of earpieces including a left earpiece 12A and a right earpiece 12B may be in operative communication with the vehicle control system 40 via the communications system 48. The communications system 48 may communicate with the wearable devices 10 directly or through a mobile device 4 such as a mobile phone, a tablet, or other type of mobile device. For example, the communications system 48 may provide a Bluetooth or BLE link directly to the wearable devices or may provide a Bluetooth or BLE link to a mobile phone in operative communication with either the left earpiece 12A or the right earpiece 12B. As will be explained in further detail with respect to various examples, the wearable devices 10 may interact with the vehicle control system 40 in any number of different ways. For example, the wearable devices 10 may provide sensor data, identity information, stored information, streamed information, or other types of information to the vehicle 2. Based on this information, the vehicle 2 may take any number of actions which may include one or more actions taken by the vehicle control system 40 (or subsystems thereof). In addition, the vehicle 2 may communicate sensor data, identity information, stored information, streamed information or other types of information to the wearable devices 10.
‘538 page 17 emphasis added by the Examiner
This is a first and second mobile device that is a mobile telephone and a wearable device that can be worn by the user.
MOTIVATION TO Combine
It would have been obvious to one of ordinary skill in the art at the time the invention
was made to modify the teachings of ‘538 relating to a mobile device, comprising a first processor and at least one sensor in combination with the teaching of Lu relating to the use a second in vehicle processor, to realize the invention as claimed. See e.g. MPEP 2143: Examples of Basic Requirements of a Prima Facie Case of Obviousness. I. A. Combining prior art elements according to known methods to yield predictable results. In this case all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Claims 1-7, 10, 12, 13-15, 19-21, 25-27, 31-33, 51-53 are rejected under 35 U.S.C. § 103 as being unpatentable over Pierfelice et al. (US Patent 2012/0161927) (“Pierfelice3”) in view of Rhee (US Patent No 2014/0101737) (“Rhee”) and optionally admitted prior art (“APA”).
These prior art rejections relies on Applicant’s statement that “Applicants respectfully submit that these are all coextensive with a microprocessor.” Nov 2024 Remarks, p 39.
The APA is based upon Applicant’s arguments in the Nov 2024 Remarks (see e.g., 37-38 in the Nov 2024 Remarks) supporting the holding in Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022). In other words, because Applicant argues the applicability of Dyfan, then the claimed functionalities within FP#3-FP#9 are admitted prior art.
Pierfelice discloses a mobile device 142 with a sensor 110. It is Examiner’s position that a CPU or processor is inherent in Pierfelice’s mobile device.
Pierfelice does not directly disclose the sensor within the mobile device. Rhee teaches a mobile device with the sensor. Therefore it would have been obvious to a POSITA to modify Pierfelice as taught by Rhee and put Rhee’s fingerprint sensor within Pierfelice’ mobile device.
To be especially clear, the Examiner hereby relies on Applicant’s statement that “Applicants respectfully submit that these are all coextensive with a microprocessor.” Nov 2024 Remarks, p 39.
In light of Applicant’s statement that the claimed functionalities within e.g., FP#3-FP#9 are all coextensive with a microprocessor, the claimed processors must be general purpose computers.
See 37 C.F.R. § 1.104 (c)(3), which recites, “[i]n rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability .... [Emphasis added.]”
RESPONSE TO ARGUEMENTS
The Nov 2024 Remarks have been fully considered but they are not persuasive.
§ 112(f)
Functional Phrase #2 Claim 1
The Patent Owner argues on pages 37-40 of the Nov 2024 Remarks that the FP#2, FP#3, FP#4, etc. (“Functional Phrases”) do not invoke § 112(f) for various reasons.
It is the Examiner’s position that without the application of § 112(f) to the Functional Phrases, Applicant would be obtaining a right to exclude others for all ways and methods for performing the Functions of FP#2, FP#3, and FP#3, etc.... For example, without the invocation of § 112(f), FP#2 utilizes pure functional language since such claims, as currently drafted, will cover all methods and manner of performing the Functions of FP#2. Yet the Federal Circuit is clear that § 112(f) was promulgated by Congress in order to limit such ‘purely functional language.’ As noted in Greenberg v. Ethicon Endo-Surgery:
As this court has observed, the record is clear on why paragraph six was enacted. In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3, 71 USPQ 175 (1946), the Supreme Court held invalid a claim that was drafted in means-plus- function fashion. Congress enacted paragraph six, originally paragraph three, to overrule that holding. In place of the Halliburton rule, Congress adopted a compromise solution, one that had support in the pre-Halliburton case law: Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof. [Emphasis added.]
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1582 (Fed. Cir. 1996) (select citations and quotations omitted).
This reasoning was again set forth by the Federal Circuit in Aristocrat Techs. Australia PTY Ltd. v. Intl. Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008), “The point of the requirement that the patentee discloses particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming. [Emphasis added.]”
Additionally, the Examiner finds that the claims at issue are not towards a new arrangement of the structural elements claimed, that is the “at least one first sensor,” “a first processor circuit” – what is clearly intended as the novel invention is the functionalities of the first processor circuit, that is the “special programming” that takes the processor out of the ambit of “general-purpose computer” and into the realm of a special-purpose device. Based upon the Original Disclosure and the entire prosecution history, Applicant’s arguments, and the express claim language, the special programming (incorporated into the claims via § 112(f)) is what differentiates the claimed invention from an existing, standard earphone with an existing, standard processor.
Many of Applicant’s arguments are conclusory citing inapplicable and inapposite case law that the Federal Circuit has said is “superseded.”
Additionally, Applicant asserts that Court decisions (e.g. Dyfan) having different claims with a different set of fact patterns is somehow controlling in this case. Instead, the Examiner’s position is based on the basic legal standard as established in Williamson, applied to the claims and particular fact pattern at issue in this reissue application.
Finally and to use colloquial terms, § 112(f) is simply shorthand notation for structure. In essence, a claimed functional phrase that invokes § 112(f) incorporates the “corresponding structure” from the specification into the claim as if it were expressly recited in the claim. If the claimed functional phrase is computer implemented as argued by Applicant, then the “corresponding structure” is an algorithm.6 That it. Thus, a computer implemented functional phrase that invokes § 112(f) incorporates the “corresponding structure” (i.e. algorithm) into the claim as if the algorithm were expressly recited in the claim.
As noted above, without the application of § 112(f), the Functional Phrases would amount to pure functional claiming, as set forth by the Federal Circuit in Greenberg and Aristocrat.
Put another way, if the Functional Phrases do not invoke § 112(f), what structure would anticipate the claimed functional phrase? Just a “processor” or just a “circuit?”
In summary, without the application of § 112(f), Applicant is simply committing a cardinal sin of claim construction—reading the specification into the claim. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002)( noting that “the district court committed a ‘cardinal sin’ of claim construction by importing limitations from the written description into the claims”)(overruled on other grounds).
Invocation of § 112(f): Introduction to Williamson Invocation Tests: WIT-1 & WIT-2
Williamson v. Citrix Online
The legal standard for determining if a claimed phrase, that does not recite “means,” invokes § 112(f) was set forth in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). In the section of the Williamson opinion designated as en banc,7 and with respect to claim terms that do not recite the word “means,” Williamson held:
When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term [1] fails to “recite sufficiently definite structure” or else [2] recites “function without reciting sufficient structure for performing that function.” Watts [v. XL Sys., Inc.], 232 F.3d [877] at 880.
Williamson, 792 F.3d at 1349 (en banc)(emphasis added; bracketed numbering added).8
Because “or else” is an idiom used to express alternatives9 and in light of the “or else” noted in the Williamson quotation above, Williamson essentially provides two distinct (i.e. alternative) tests (collectively the “Williamson Invocation Tests” or “WIT”) for overcoming the presumption that § 112(f) is not invoked when a phrase does not use the word “means.”
In summary, and in accordance with the WIT, when a claim term lacks the word “means,” the presumption to not invoke § 112(f) can be overcome and § 112(f) will apply if:
Williamson Invocation Test (1) (or “WIT-1”): the claim term fails to recite sufficiently definite structure; or
Williamson Invocation Test (2) (or “WIT-2”): the claim term recites function without reciting sufficient structure for performing that function.
In light of the “or else,” Williamson recites two alternative tests joined by “or else,” either of which can be used to overcome the presumption that § 112(f) is not invoked. To be clear, while Applicant is arguing WIT-1, the Examiner is relying exclusively on Williamson Invocation Test 2 i.e. “or else recites function without reciting sufficient structure for performing that function.” Williamson, 792 F.3d at 1349 (citations and quotations omitted).
Therefore, if the Examiner can show that a claimed functional phrase, that does not recite means (e.g., FP#1, FP#2, or FP#3), “recites function without reciting sufficient structure for performing that function,” the presumption is overcome and the claimed phrase invokes § 112(f).
Application of WIT-2: Egenera, Inc. v. Cisco Sys., Inc.
An exemplary application of WIT-2 (and a rejection of a patent owner’s WIT-1 argument) was discussed in Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020). In Egenera, the Federal Circuit rejected patent owner’s WIT-1 argument and applied WIT-210 to determine if a claimed phrase, that did not recite “means,” invoked § 112(f).
In particular, the court addressed the claimed phrase “logic to modify” when the patent owner argued that “logic” is structural because the “‘logic to modify’ is part of a supposedly structural component.” Egenera, 972 F.3d at 1374.11 “On appeal, Egenera, pointing to its expert’s explanation and dictionary definitions, argues that ‘logic’ is a common term of art meaning software, firmware, circuitry, or [a] combination thereof.” Id.
The court disagreed with the patent owner since even if the patent owner’s WIT-1 argument was true, that’s not the legal test the court is using to determine if the presumption is overcome:
“The question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112(f) if it recites ‘function without reciting sufficient structure for performing that function.’ [Emphasis in original.]”
Egenera, 972 F.3d at 1374 (quoting Williamson, 792 F.3d at 1348).
From the quotation directly above, there can be no doubt that the Egenera court is: (1) quoting the definitional statement of WIT-2; (2) citing to Williamson as the source for the definitional statement of WIT-2; and (3) not applying WIT-1. Thus, in common parlance, WIT-2 applies Egenera or WIT-2 equals Egenera.
Applying Egenera’s discussion of WIT-2 to this reissue application, the question is not whether the claimed functional phrase (e.g., FP#2) recites any structure (such as “a first processor circuit”) but whether the claimed phrase recites sufficient structure to perform all the claimed functions. Id. The Functional Phrases are subject to § 112(f) if they recite function without reciting sufficient structure for performing the claimed functions.
Moreover, Egenera’s position that “any structure” or “some structure” has a long history:
The recitation of some structure in a means plus function element does not preclude the applicability of section 112(6). For example, in this case, the structural description in the joining means clause merely serves to further specify the function of that means. The recited structure tells only what the means-for-joining does, not what it is structurally. [Emphasis in Original.]
Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1536 (Fed. Cir. 1991).
Like Egenera, the Examiner agrees that a “a first processor circuit” is structure. It’s a CPU or general purpose computer.
After having set forth the legal test, the court in Egenera next addressed patent owner’s WIT-1 argument. In particular the court addressed patent owner’s argument that “logic” is structural because it indicates some structure since “logic” is not utterly devoid of structure. The court found patent owner’s WIT-1 argument unpersuasive since WIT-1 is not the question the court is addressing:
Egenera also argues that the “larger claim context” indicates that “logic” is structural because the “logic to modify” is part of a supposedly structural component—the “control node.” But that is not enough. Mere inclusion of a limitation within a structure does not automatically render the limitation itself sufficiently structural. And, again, the question is not whether “logic” is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions. [emphasis added.]
Egenera, 972 F.3d at 1374.
Applying Egenera to this reissue application again, Applicant’s WIT-1 argument is unpersuasive since the question is not whether “a first processor circuit” is utterly devoid of structure but whether “the claim term recites sufficient structure to perform the claimed function.” Id.12 In other words, the court in Egenera is only applying WIT-2; the Egenera court is not applying WIT-1.
Finally, the court in Egenera noted that patent owner “Egenera does not explain how its ‘logic’—even assuming it connotes some possible structure in the general sense of software, firmware, or circuitry—amounts to ‘sufficient structure’ for performing [the modification] function.” Egenera, 972 F.3d at 1374 (citations and quotations omitted).
Like the patent owner in Egenera, Applicant in this reissue application does not explain how its “first processor circuit”—even assuming it connotes some possible structure in the general sense of a CPU (or general purpose computer) amounts to “sufficient structure” for performing the of the Function of FP#1.
For example, how does a processor with just an operating system perform the functions of “determine an identification of a user?” It is axiomatic that a POSITA understands that a general purpose computer (i.e. a “processor” with an “instructions” (an operating system) cannot perform both the functions of FP#1 without special programming.
Because Applicant’s arguments in this proceeding are strikingly similar to the patent owner’s WIT-1 arguments in Egenera that the Federal Circuit found unpersuasive, Applicant’s WIT-1 arguments in this reissue application are also unpersuasive.
In summary, not only is Applicant improperly using a layperson’s definition of “sufficient structure,” Applicant’s argument simply fails to meaningfully reckon with the Federal Circuit’s precedent, including Williamson’s en banc articulation of the legal standard and Egenera.
Examiner is Relying Exclusively on Williamson Invocation Test 2
Because Applicant has only argued WIT-1 (the part of the invocation test that the Examiner is not using), and because the Examiner is relying solely on the second WIT (i.e. Williamson Invocation Test 2), Applicant’s arguments are not persuasive. In other words, because Applicant’s arguments are only addressing Williamson Invocation Test 1, Applicant’s Williamson Invocation Test 1 arguments, no matter how meritorious, cannot be considered persuasive.
“Sufficiently Definite Structure” Is Not the Same “Sufficient Structure”
Based upon the express wording in Williamson, the Examiner notes that “sufficiently definite structure” is not the same “sufficient structure for performing that function.” Williamson, 792 F.3d at 1349 (en banc).
First, “sufficiently definite structure” only appears in WIT-1. This analysis focuses on whether structure is definite. The Examiner agrees that a “processor” is a definite structure since it’s a CPU. However, the Examiner is not using WIT-1 to rebut the presumption.
Second, “sufficient structure for performing that function” only appears in WIT-2. This analysis focuses on whether the claimed structure (i.e., “processor circuit”) is sufficient structure to perform the entire claimed function.
Applicant’s Use of the Speciation to Show FP#2 Does Not invoke § 112 (f)
Claim 1 recites, inter alia, a first processor circuit. Claim 1 further recites characteristics of that first processor circuit, including that it is arranged to receive first sensor data, that it is arranged to determine an identification of the user based on the first sensor data, and that it is arranged to cause the mobile device to send the identification of the user to a second processor circuit.
The specification provides a detailed description of embodiments a first processor circuit 42 in FIG. 2, including various components thereof, and the corresponding text of the original specification at paragraphs [0031] and [0044] - [0046].
…
Here, claim 1 not only specifically recites a processor circuit, but the specification and drawings provide detailed examples of the structure of such a processor circuit.
Nov 2024 Remarks, p 37-38.
Applicant’s citations to the original specification at paragraphs [0031] and [0044] - [0046] appears to be an attempt by Applicant to improperly use the specification’s corresponding structure to show that the phrase does not invoke § 112(f). However, the Federal Circuit has already explicitly rejected Applicant’s arguments which conflate these two distinct inquires.
In MTD Prods., the Federal Circuit held that “the Board erred by using the existence of corresponding structure in the specification to conclude that ‘mechanical control assembly’ has a sufficiently definite structure to evade § 112 , ¶ 6. [Emphasis added.]” MTD Prods., 933 F.3d at 1345.
Like the Board in MTD Prods., Applicant in this reissue application is, albeit improperly, also using the alleged existence of alleged corresponding structure (“processor circuit 42 in FIG. 2, including various components thereof” Nov 2024 Remarks, p 37) in the specification in order to conclude that FP#1 has a sufficiently definite structure to evade § 112(f). In other words, like the Board in MTD Prods., Applicant also appears to conflate the two distinct inquiries (i.e., the invocation analysis with the related corresponding structure analysis), for functional phrases. As noted in In MTD Prods.:
Interpretation of an asserted means-plus-function limitation involves two steps. First, we determine if the claim limitation is drafted in means-plus-function format.… If we conclude that the limitation is in means-plus-function format, the second step requires us to review the specification to identify the structure that performs the claimed function(s) and thus “corresponds to” the claimed means. While related, these two inquiries are distinct. In this case, however, the Board conflated these distinct inquiries, holding that the specification's disclosure of corresponding structure demonstrates that the alleged means-plus-function term is sufficiently definite so as to not invoke § 112 , ¶ 6. The Board's analysis implies that so long as a claim term has corresponding structure in the specification, it is not a means-plus-function limitation. This is not consistent with our prior decisions. Indeed, this view would seem to leave § 112, ¶ 6 without any application: any means-plus-function limitation that met the statutory requirements, i.e., which includes having corresponding structure in the specification, would end up not being a means-plus-function limitation at all. [Emphasis added.]
MTD Prods., 933 F.3d at 1344.
Applicant’s analysis on 37-41 of the Nov 2024 Remarks, like the Board in MTD Prods., “implies that so long as a claim term has corresponding structure in the specification, it is not a means-plus-function limitation.” Id.
However, in light of MTD Prods, it is clear error to use the “corresponding structure” in the specification as a basis to conclude that a particular phrase does not invoke § 112(f). In other words (and if Applicant’s arguments were to prevail), “any means-plus-function limitation that met the statutory requirements, i.e., which includes having corresponding structure in the specification, would end up not being a means-plus-function limitation at all.” Id. Because Applicant is conflating the two distinct inquires and in light of the guidance set forth in MTD Prods, Applicant’s arguments are unpersuasive.
For at least this reason, Applicant’s arguments, that point to the corresponding structure in the specification, are not persuasive.
Applicant Again Uses Layperson’s Definition of “Sufficient Structure”
Applicant’s arguments are not persuasive because Applicant is using a layperson’s definition of sufficient structure and not the Federal Circuit’s definition of sufficient structure. As noted above, “Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. [Emphasis added.]” TriMed, Inc. v. Stryker Corp., 514 F.3d at 1259-60.
Applicant’s attempt to show the claimed “processor” is sufficient structure is clearly in violation of the Federal Circuit’s definition of “sufficient structure” as set forth in TriMed above since Applicant does “need to resort to other portions of the specification … for an adequate understanding of the structure” id. while the Federal Circuit’s definition is “without.”
Because Applicant’s use of the specification to determine if the FP#2 recites “sufficient structure” is clearly opposite of the Federal Circuit’s explicit definition of “sufficient structure” as set forth in TriMed, Applicant’s arguments are unpersuasive.
General Purpose Computer + Special Programming = Special Purpose Computer
To review, a claimed phrase starts as a general purpose computer (“GPC”). Only with the addition of ‘special programming’ (“SP”) does the claimed language create a ‘special purpose computer’ (“SPC”).
A general purpose computer, or microprocessor, programmed to carry out an algorithm creates “a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348 (Fed.Cir. 1999) (quoting In re Alappat, 33 F.3d 1526, 1545 (Fed.Cir.1994) (en banc).
“In other words—to use the language of Alappat—the general purpose computer becomes a special purpose computer when loaded with the special programming. [Emphasis added.]” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015). The relationships between a “general purpose computer,” “special programming,” and a “special purpose computer” as first articulated above can be thought of as an equation:
Hardware
+
Software
=
What Is Needed
To
Anticipate
General Purpose
Computer
(GPC)
+
Special Programming (“SP”)
or
Algorithm
=
Special Purpose
Computer
(“SPC”)
Examiner’s Equation #1 (“EE#1”): titled “Eon Special Purpose Computer Equation”
If one were to assign a numerical value of one (“1”) to both the ‘General Purpose Computer’ and the ‘Special Programming’ in EA1 above in order to indicate what the right-most column requires (i.e. the “What is Needed to Anticipate” column), the Eon Special Purpose Computer Equation would become:
Hardware
+
Software
=
What Is Needed
To
Anticipate
General Purpose
Computer
(GPC)
+
Special Programming (“SP”)
or
Algorithm
=
Special Purpose
Computer
(“SPC”)
1
+
1
=
2
Examiner’s Equation #2 (“EE#2”): titled the “1+1=2 Equation” or
the “Modified Eon Special Purpose Computer Equation
Thus, for Eon’s “1+1=2 Equation” format above, an Examiner would have to find prior art that had the Special Purpose Computer. In other words, an examiner would have to find prior art that had two (“2”) elements: both the General Purpose Computer in addition to the Special Programming (or algorithms).
To be especially clear, the concepts and relationships between a “general purpose computer,” “special programming,” and a “special purpose computer” as first articulated in WMS Gaming, Alappat, and Eon) apply to all claimed computer implemented functional phrases, regardless if the phrases themselves invoke § 112(f).
With these concepts in mind and regardless if a claimed ‘computer implemented functional phrase’ does or does not invoke § 112(f), the fundamental question remains: What does an examiner need to find to anticipate this claimed element? A general purpose computer or a special purpose computer?
Based upon the express wording within FP#2, the Examiner finds that to a POSITA, the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#2 (i.e., “determine an identification of the user based on the first sensor data [and] cause the mobile device to send the identification of the user to a second …”). For at least this reason, the Examiner finds that an algorithm to perform the entire Functions of FP#2 is not expressly recited in claim 1. Note: The analysis to FP#2 above applies equally to all claimed phrases (i.e. FP#3, FP#4, etc.) that invoke § 112(f).
In other words, the claim language itself does not provide a step-by-step set of instructions indicating how to accomplish the Function of FP#2. “determine an identification of the user based on the first sensor data [and] cause the mobile device to send the identification of the user to a second …
“Applicants respectfully submit that these are all coextensive with a microprocessor.”
Nov 2024 Remarks, p 39.
Based upon the claim language itself, the Examiner disagrees. If Applicant’s statement above were true, then a general purpose computer (e.g. a CPU) would anticipate the entire FP#2.
Functional Phrases That Do Not Invoke § 112(f) – Only “Capable of” Is Needed
Applicant is respectfully reminded that when choosing to define product claims functionally, i.e., by what it does, carries with it a risk that the functional limitations are inherent with the prior art:
A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971) (“ [T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk. As our predecessor court stated in Swinehart, 439 F.2d at 213, 169 USPQ at 228:
where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. [Emphasis added.]
In re Schreiber, 128 F3d 1473, 1478 (Fed. Cir. 1997) (additional citations omitted).
Thus, if a claimed phrase does not invoke § 112(f), then as long as the prior art is ‘capable of’ performing the claimed functions, the prior art will anticipate. [T]he absence of a disclosure relating to function does not defeat the Board's finding of anticipation.” Schreiber, 128 F.3d at 1477.
Applicant’s Argument: Dyfan, LLC v. Target Corp
In the Nov 2024 Remarks, Applicant makes numerous references to Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022).
Because Zeroclick occurred before Dyfan and because Dyfan discusses Zeroclick, Zeroclick will be discussed first.
Zeroclick, LLC v. Apple Inc
First, it is the Examiner’s position that Zeroclick doesn’t apply to the claimed phrases because the claimed functions within FP#2, FP#3, FP#4 etc.: (1) are not conventional; (2) were not existing in prior art at the time of the invention; and (3) because Zeroclick applies WIT-1 while the Examiner is using WIT-2.
In Zeroclick the reason the functional phrase at issue did not invoke § 112(f) was because the claimed functional language is conventional and existing in the art at the time of the invention:
Given that the basic concept behind both of the patents-in-suit is relatively simple, a person of ordinary skill in the art could reasonably discern from the claim language that the words “program,” … and “user interface code,” … [are] specific references to conventional graphical user interface programs or code, existing in prior art at the time of the inventions. [Emphasis added.]
Zeroclick, 891 F.3d at 1008 (citations and quotations omitted).
For this reason alone, Applicant’s arguments are not persuasive.
Second, it is important to recognize that the Federal Circuit in Zeroclick did not invoke § 112, ¶ 6 because the party (i.e. the defendant, Apple Inc.) trying to rebut the presumption that § 112, ¶ 6 should not be invoked (because the claim did not recite “means”) failed to meet to its evidentiary burden. In particular, the Federal Circuit held that “[b]ecause the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus function terms, we vacate and remand.” Zeroclick, 891 F.3d at 1005.
The holding to “vacate and remand,” id. is noteworthy because the Federal Circuit did not ‘reverse’ or even state that the panel ‘disagreed’ with the district court’s claim interpretation. The Federal Circuit instead, vacated and then remanded the case back to the district court to make appropriate factual findings on the record in order to support the district court’s position that the presumption to not invoke § 112, ¶ 6 was overcome and thus in turn, to ultimately support the district court’s conclusion that the claimed phrase invoked § 112(f).
In particular, the Federal Circuit supported its holding in Zeroclick with the following rationale:
Neither of the limitations at issue uses the word “means.” Presumptively, therefore, § 112, ¶ 6 does not apply to the limitations. Apple argued that the limitations must be construed under § 112, ¶ 6, but provided no evidentiary support for that position. Accordingly, Apple failed to carry its burden, and the presumption against the application of § 112, ¶ 6 to the disputed limitations remained unrebutted. The district court's discussion is revealing: its determination that the terms must be construed as means-plus-function limitations is couched in conclusory language. The court relied on Apple's arguments, contrasting them against Zeroclick's contentions, but pointed to no record evidence that supports its ultimate conclusion regarding whether § 112, ¶ 6 applies to the asserted claims…. The [district] court thus legally erred by not giving effect to the unrebutted presumption against the application of § 112, ¶ 6. [Emphasis added.]
Zeroclick 891 F.3d at 1005.
In other words, from the Federal Circuit’s opinion, the district court’s conclusory statements and lack of “record evidence” to rebut the presumption that § 112, ¶ 6 should not be invoked is the court’s stated rationale for vacating and remanding the case. In light of court’s holding and supporting rationale (both as quoted above), Zeroclick is more about the lack of evidence to support a legal conclusion than substantive discussion or application of the WITs.
And unlike the defendant in Zeroclick, the Examiner in this reissue application has giving effect to the presumption but has nevertheless, has used the WIT-2 to overcome the presumption.
Third, even assuming arguendo that the claimed functions in this proceeding match or are similar to Zeroclick (i.e. the claimed functions in this proceeding are conventional and existing in prior art at the time of the invention), Zeroclick still applies WIT-1 for overcoming the presumption that § 112, ¶ 6 is not invoked. However as noted repeatedly, the Examiner is not using WIT-1, the Examiner is using WIT-2 as interpreted by Egenera. Because Zeroclick does not even attempt to address WIT-2, Zeroclick cannot be considered applicable. For this reason alone, Applicant’s arguments are not persuasive.
In conclusion, Zeroclick is inapplicable because, unlike Zeroclick, the claimed functions at issue in this reissue application are neither conventional nor existing in prior art at the time of the invention. Second, because the Federal Circuit in Zeroclick expressly stated that the rationale for not invoking § 112(f) (and ultimately vacating and remanding the case back to the district court) was because the district court used conclusory language without appropriate evidentiary support, and because the Examiner in this proceeding has provided factual findings with evidentiary support to thereby rebut the presumption that § 112, ¶ 6 should not be invoked; the rationale in Zeroclick is simply not applicable in this proceeding. Finally, even if the facts in this proceeding are somehow similar to Zeroclick (which they are not), Zeroclick uses WIT-1 for overcoming the presumption that § 112, ¶ 6 is not invoked while the Examiner is instead exclusively using WIT-2 as interpreted by Egenera. For these reasons, any arguments regarding Zeroclick are not persuasive.
Dyfan, LLC v. Target Corp.
Because Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022) quotes, discusses, and incorporates Zeroclick LLC. v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018), and because the Examiner has already addressed Zeroclick, the pertinent reasoning from Dyfan will be addressed below.
Dyfan is not relevant to this appeal for at least two separate and independent reasons:
First, like Zeroclick, the court in Dyfan found that the entire claimed phrase was “conventional “or “existing in the prior art at the time of the invention.” Dyfan, 28 F.4th at 1368. In this appeal, there is no evidence of record that FP#1, FP#2, or FP#3 are conventional or existing in the prior art the time of the invention.
Second, Dyfan was using WIT-1. As noted repeatedly, the Examiner is not using WIT-1. The Examiner is using WIT-2 as interpreted by Egenera.
These two separate and independent reasons will be discussed below.
Claimed Phrase is Conventional or Existing in the Prior Art at the Time of the Invention
Why the Phrase Did Not Invoke § 112(f)
In Dyfan, the court looked at the phrase “code” / “application” limitations:
said code, when executed, further configured to . . . after the first visual information is caused to be output based on the first location-relevant information; after the at least one mobile device is moved in the building; and in response to the receipt, from the at least one server and via the second wireless communications protocol, of the second response message including the second location-relevant information: cause to be output, via the at least one mobile device, the second visual information based on the second location-relevant information . . . .
[US Patent 10,194,]292 patent col. 41 l. 47-col. 42 l. 6.
Dyfan, 28 F.4th at, 1367.
After comparing the phrase at issue to the process the court performed in Zeroclick, the court in Dyfan found that the claimed functional phrases in both Dyfan and Zeroclick did not invoke § 112(f) because the entire phrases were references to conventional programs existing in the prior art at the time of the invention:
The district court also erred by not following our court's recent decision in Zeroclick…. We further explained that a person of ordinary skill in the art would have been able to reasonably discern from the claim language that the disputed limitations “program" and “user interface code” were references to conventional programs or code "existing in [the] prior art at the time of the invention[]” and were not used as generic terms or black box recitations of structure or abstractions. Id. Because the disputed limitations were references to conventional structures known to persons of ordinary skill in the pertinent art, and because the district court failed to properly apply the presumption and “made no pertinent finding that compel[led] the conclusion” that the limitations “user interface program” or “code” were used “in common parlance as substitute for ‘means,’” we rejected the district court's determination that the claims were subject to § 112(f) and vacated judgment of invalidity. Id. at 1009. That same rationale applies here, particularly in view of Dr. Goldberg's unrebutted testimony that “code” and "application" would have connoted structure to a person of ordinary skill and given the availability of off-the-shelf code to perform the recited claim functions.[Emphasis added.]
Dyfan, 28 F.4th at 1368.
Most interestingly, the court noted that the patent owner’s expert witness (i.e., Dr. Goldberg) testified that the entire phrase that was old and well known—the code and the functions performed by the code: “Dr. Goldberg also testified that a person of ordinary skill would have known that the claimed function of displaying information could be implemented using "off-the-shelf" code or applications.” Dyfan, 28 F.4th at 1368. “That same rationale [from Zeroclick] applies here, … given the availability of off-the-shelf code to perform the recited claim functions.” Id.
Thus, in both Dyfan and Zeroclick, the court was clear that the reason the claimed functional phrases did not invoke § 112(f) was because the entire claimed phrases were references to “conventional programs or code existing in the prior art at the time of the invention” or that the claimed functional phrases “were references to conventional structures known to persons of ordinary skill in the pertinent art.” Id.
Because there is no evidence of record that FP#2, FP#3, FP#4, etc. are “conventional” or “existing in the prior art the time of the invention,” Dyfan (like Zeroclick) is also not applicable to FP#2, FP#3, FP#4, etc. and ultimately not applicable to this reissue application.
Dyfan and Zeroclick Had No Prior Art Rejections on Appeal
One key additional point in both Dyfan and Zeroclick was that neither CAFC appeal involved prior art rejections before their respective three-judge panels. In other words, once the § 112(f) issues and associated § 112 ¶ 2 issues were determined, their Federal Circuit appeals were concluded. Thus, in both Dyfan and Zeroclick there was no imminent risk of unpatentability to any of the appealed claims under §§ 102 or 103 in spite of patent owners’ arguments that the phrase at issue are admitted prior art. In other words, by arguing the phrases are admitted prior art, the § 112(f) invocation problems are avoided and, in turn, the associated § 112 ¶ 2 indefiniteness challenges by the defendant are moot.
However unlike both Dyfan and Zeroclick, there are prior art rejections in application. Therefore, there is a risk to an applicant when the applicant argues that both Dyfan and/or Zeroclick are pertinent to this reissue application because the applicant is essential arguing that the entire functional phrases are admitted prior art—just like Dyfan and Zeroclick. If Applicant (in this reissue application) still desires to argue that the entire phrases are old and well known in the art, Applicant is reminded that t is well established that such admissions can be used as a basis in rejecting the claims under §§ 102 or 103. See 37 C.F.R. § 1.104 (c)(3), which recites, “[i]n rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability .... [Emphasis added.]”
Applying the above reasoning to this reissue application, if Applicant expressly admits on the record that the claimed functional phrases at issue (i.e., FP#2, FP#3, FP#4, etc.) are “references to conventional programs or code existing in the prior art at the time of the invention”—like patent owner’s expert witness did in Dyfan13—the phrases would not invoke § 112(f). See Dyfan and Zeroclick. However, for each functional phrase admitted to be “conventional” or “existing in the prior art at the time of the invention,” the entire phrase will be considered conventional or existing in the prior art at the time of the invention, and consequently, admitted prior art, just as in Dyfan and Zeroclick.
However, as of the date of this Office action (and also unlike both Dyfan and Zeroclick), Applicant has not admitted that the claimed functional phrases “were references to conventional programs or code existing in the prior art at the time of the invention.” Dyfan, 28 F.4th at 1368. Thus, it is the Examiner’s position that the court’s rationale, as expressly set forth in Dyfan for not invoking § 112(f), is not applicable to this reissue application.
Functional Phrase #3 Claim 1
The Patent Owner argues on pages 40 of the Nov 2024 Remarks that the FP#3 argues the following;
Claim 1 also recites, inter alia, that the first processor circuit sending the identity of the user to the second processor circuit causes the second processor circuit to: determine that the user is to enter into a vehicle; and cause the second mobile device to send the identification of the user to a third processor circuit when it is determined that the user is to enter into the vehicle.
At the outset, Applicants note that the claimed mobile device does not include the second processor circuit, which is instead included in a second mobile device. The language of claim 1 recited above instead describes a feature of the first processor circuit of claim 1 in terms of how it interacts with the second processor circuit. It is this interaction by the first processor circuit which is a claimed feature of the mobile device of claim 1, and it is not recited as a means-plus-function.
Nevertheless, Applicants also respectfully submit that it would be improper to interpret the second processor circuit under 35 U.S.C. § 112(f) for at least the same reasons as set forth above with respect to the first processor circuit.
Nov 2024 Remarks, pp 40-41.
Applicant’s arguments are not understood. However, because Applicant is claiming only a processor circuit, then a only a processor circuit is found in the Pierfelice / Rhee prior art combination.
The Examiner has considered all of Applicant’s remaining remarks and find that they are not persuasive.
In summary, the Examiner finds that the claim language itself does not recite “sufficient structure” for performing the functions of FP#2-FP#9. Thus, according to Williamson’s WIT-2, the claimed phrases invoke § 112(f). Thus, the Examiner maintains that § 112(f) applies to the claimed functional phrases FP#2-FP#9.
35 U.S.C. §112(a) – Written Description Rejections
The POR argues on pages 41 and 42 of the remarks that the following (underlining by the Examiner;
Again, Applicants respectfully disagree. If claim 1 was to be characterized (improperly) as reciting a computer-implemented function, then arguendo that function would be something such as “adjusting at least one vehicle parameter based on at least one pre-defined user setting.” In that case, not only does the specification describe in detail the algorithm for performing that function, but claim 1 itself sets out how the claimed mobile device is arranged to implement a specific algorithm for adjusting at least one vehicle parameter based on at least one pre-defined user setting, including:
the sensor being arranged to produce first sensor data associated with the user, and the first processor circuit being arranged to determine an identification of the user based on the first sensor data; and to send the identification of the user to a third processor circuit of a vehicle, via a second mobile device, as a result of which the third processor circuit is caused to access at least one pre-defined user setting from a storage circuit based on the identification of the user; and adjust the at least one vehicle parameter based on the at least one pre-defined user setting.
Similar analysis holds, mutatis mutandis, for claims 2-21, 25-27, and 31-54,
Therefore, for at least these reasons, Applicants respectfully request that the rejections of claims 1-21, 25-27, and 31-54 under 35 U.S.C. 112(a) be withdrawn.
Nov 2024 Remarks, pp 41-42.
The Examiner maintains that the claims require specific algorithm(s), in order for the claim to comply with the written description requirement. Accordingly the § 112(a) rejections are maintained. See MPEP § 2163.01 I. titled I. “Determining Whether There Is Adequate Written Description For A Computer-Implemented Functional Claim Limitation.”
The § 112(a) written description rejections are independent of whether a particular claimed phrase invokes § 112 ¶ 6. For example, see the MPEP’s discussion of LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, (Fed. Cir. 2005) where the Federal Circuit applied § 112(a) written description rejections to original claims that did not invoke § 112 ¶ 6.
35 U.S.C. §112(b) – Indefiniteness Rejections
The Examiner maintains the § 112(b) rejections which are based upon the § 112(f) claim interpretation section above. The Examiner maintains that even if the Original Disclosure discloses “a very detailed description of the embodiments, [emphasis Applicant’s]” Nov 2024 Remarks, p 43, this “very detailed description of the embodiments” id., still does not point out any algorithms. For example, where does the Original Disclosure describe an algorithm to “determine that the user is to enter into a vehicle,” determine the identification of the user,” and “adjust at least one vehicle parameter based on the at least one pre-defined user setting?” Simply arguing that the algorithm ‘is disclosure somewhere’ is not sufficient.
Applicant argues:
For example, claim 1 does not recite a computer-implemented function, such as, e.g., “a processor for adjusting at least one vehicle parameter based on at least one pre-defined user setting.” [Emphasis added.]
Nov 2024 Remarks, pp 42.
The Examiner disagrees. The claims 1, 19, 25, and 31 clearly recite computer (i.e., software) implemented functions such as the Function of FP#2, the Function of FP#3, the Function of FP#4, etc. Applicant’s argument is contradicted by the express claim language. Because the claimed functions (again, Function of FP#2, the Function of FP#3, the Function of FP#4, etc.) are computer (i.e., software) implemented, the corresponding structure is the algorithm.
As noted previously and based upon the claim language itself, the Examiner found that the express claim language within FP#3-FP#9 does not disclose the algorithms (i.e., “special programming”) for each functional phrase. If Applicant disagrees, Applicant encouraged to point out the exact algorithm(s) that perform each of the functions within FP#3-FP#9.
Applicant argues:
If claim 1 was to be characterized (improperly) as reciting a computer-implemented function, then arguendo that function would be something such as “adjusting at least one vehicle parameter based on at least one pre-defined user setting.”
Nov 2024 Remarks, pp 42.
Applicant’s arguments are not understood. Applicant has already stated that in claim 1, “the claimed mobile device does not include the second processor circuit.” Nov 2024 Remarks, p 40. Following Applicant’s reasoning, it is presumed that claim 1 also does not include the “third processor circuit” within “vehicle” as well. Because the “third processor circuit” within the “vehicle” is not within the claimed “mobile device,” the “third processor circuit” within the “vehicle” are not within the scope of claim 1 and need not be shown in the prior art for anticipation or obviousness.
Applicant adds that:
In that case, not only does the specification describe in detail the algorithm for performing that function, but claim 1 itself sets out how the claimed mobile device is arranged to implement a specific algorithm for adjusting at least one vehicle parameter based on at least one pre-defined user setting, including: the sensor being arranged to produce first sensor data associated with the user, and the first processor circuit being arranged to determine an identification of the user based on the first sensor data; and to send the identification of the user to a third processor circuit of a vehicle, via a second mobile device, as a result of which the third processor circuit is caused to access at least one pre-defined user setting from a storage circuit based on the identification of the user; and adjust the at least one vehicle parameter based on the at least one pre-defined user setting.
Nov 2024 Remarks, pp 42-43.
Applicant’s arguments are again, not persuasive.
First, simply stated that “the specification describe[s] in detail the algorithm for performing that function” does not state what the alleged algorithm is. The Examiner finds that Applicant in the Nov 2024 Remarks has not pointed to a single algorithm within the Original Disclosure that performs, in their entirety, the Function of FP#2, the Function of FP#3, the Function of FP#4, the Function of FP#5, etc. Applicant is reminded that it is not the Examiner’s duty to clearly link or associate the claimed function (e.g., the Function of FP#2) to some corresponding structure—its Applicant’s duty. “The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1377 (Fed.Cir.2001)).
Second, it’s unclear “how the claimed mobile device is arranged to implement a specific algorithm for adjusting at least one vehicle parameter based on at least one pre-defined user setting [emphasis added,]” since claim 1 expressly states that this function is performed by the “third processor circuit” within the “vehicle.” In other words, what does the claimed arrangement of the mobile device look like that can somehow perform this function in the vehicle? The Examiner has reviewed the Original Disclosure (and especially the drawings) and cannot locate this functionality in the mobile device.
35 U.S.C. §251
The Examiner maintains the 35 U.S.C. § 251 rejection because the claims are still rejected under § 112(a) written description because of new matter rejections in § V. A. above.
35 U.S.C. §103 – Obviousness Rejections
Applicant argues on pages 45-52 of the Nov 2024 Remarks that the Applicant traverses the 35 U.S.C. § 103 rejection for the same reasons as it has traversed the § 112(f) claim interpretation and § 112(a) and § 112(b) rejections. The Examiner disagrees that the § 112(f) claim interpretation and the § 112(a) and § 112(b) rejections have been overcome.
Regarding the prior art, the Examiner stated in the previous final rejection the following;
“The Examiner finds that with respect to the clam limitations that correspond to the first second and third processor performing specific functions as claimed Boesen ‘538 discloses the following on page 17:
One or more wearable devices 10 such as a set of earpieces including a left earpiece 12A and a right earpiece 12B may be in operative communication with the vehicle control system 40 via the communications system 48. The communications system 48 may communicate with the wearable devices 10 directly or through a mobile device 4 such as a mobile phone, a tablet, or other type of mobile device. For example, the communications system 48 may provide a Bluetooth or BLE link directly to the wearable devices or may provide a Bluetooth or BLE link to a mobile phone in operative communication with either the left earpiece 12A or the right earpiece 12B. As will be explained in further detail with respect to various examples, the wearable devices 10 may interact with the vehicle control system 40 in any number of different ways. For example, the wearable devices 10 may provide sensor data, identity information, stored information, streamed information, or other types of information to the vehicle 2. Based on this information, the vehicle 2 may take any number of actions which may include one or more actions taken by the vehicle control system 40 (or subsystems thereof). In addition, the vehicle 2 may communicate sensor data, identity information, stored information, streamed information or other types of information to the wearable devices 10.
‘538 page 17 emphasis added by the Examiner
This is a combination of the first, second, and third processors all working together to process information related to the control of a vehicle including determining to enter the vehicle as detailed in the claims.
Since the algorithm is not set forth and for purposes of attempting to apply the prior art only, the Examiner will interpret the claimed phrases as any of the connected processors that can communicate the above information including sensor data and identity information and access authorization. Additionally, Boesen ‘438 does disclose 3 different processor circuits in communication with each other. The remainder of the POR’s arguments with respect to independent claims 11, 16, 19, 25, 31 34, 37, 40, 43 and 46 are the same arguments presented to claim 1 and remain rejected under 35 U.S.C. §103 for the same reasons. Accordingly, the 35 U.S.C. §103 rejection of the claims are maintained.
CONCLUSION
Finality and Period For Reply
Applicant's Nov 2024 Claim Amendments necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 C.F.R. § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Evidence of ‘Basic Knowledge’ or ‘Common Sense’
In accordance with In re Lee, 277 F.3d 1338, 1344-45 (Fed. Cir. 2002), the Examiner finds that the references How Computers Work, Millennium Ed. by Ron White (“How Computers Work”) and How Software Works, (“How Software Works”) also by Ron White are additional evidence of what is basic knowledge or common sense to one of ordinary skill in this art. The two references are cited in their entirety. Moreover, because these two references are directed towards beginners (see e.g. “User Level Beginning . . .” on How Computers Work), because these two references have basic content (which is self-evident upon review of their contents), and after further review of the entire prosecution history including all the art now of record in conjunction with the factors as discussed in MPEP § 2141.03 (where practical), the Examiner finds that these two references are primarily directed towards those of low skill in this art. Because these two references are directed towards those of low skill in this art, the Examiner finds that one of ordinary skill in this art must—at the very least—be aware of and understand the knowledge and information contained within these two references.
If Applicant disagrees with the Examiner’s finding above regarding How Computers Work and How Software Works, Applicant should in their next appropriately entered response, traverse the Examiner’s findings and provided appropriate argument and evidence in support thereof. Upon receiving (a) Applicant’s effective traversal on this matter and (b) appropriate evidence in support thereof, the Examiner will reevaluate his findings on this in this section.
Evidence of the Characteristics & Capabilities of a General Purpose Computer
Based upon a review of: (1) the Original Disclosure; (2) relevant general purpose and technical dictionaries; (3) the prior art now of record (including How Computer Work and How Software Works); (4) the entire remaining prosecution history and (5) a search of the relevant prior art; the Examiner finds that to one of ordinary skill in this particular art:
How Computers Work, parts 1-5 (i.e. Part 1 starting at page 2 through Part 5, ending at page 279) (“White, Parts 1-5”) discloses and describes the characteristics and functionalities of a general purpose computer. In other words, the Examiner finds that to one of ordinary skill in this particular art, any characteristics and functionalities of a computer beyond what is shown and described in How Computers Work, Parts 1-5, would require special programming.
How Software Works (Chapters 1-5) describes the characteristics and functionalities of a general purpose computer. Chapter 6 and 7 in How Software Works also describes how a general purpose computer can be transformed into a special purpose computer using a programming language.
If Applicant disagrees with the Examiner’s finding above regarding How Computers Work and How Software Works, Applicant should in their next appropriately entered response, traverse the Examiner’s findings and provided appropriate argument and evidence in support thereof. Upon receiving (a) Applicant’s effective traversal on this matter and (b) appropriate evidence in support thereof, the Examiner will reevaluate his findings in this section.
Prior Art Considered
Unless expressly noted otherwise by the Examiner, all prior art documents listed on USPTO form PTO-892 (titled “Notice of References Cited”) are cited in their entirety.
Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to John M. Hoteling whose telephone number is 571-272-4437.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's supervisor, Andrew J. Fischer can be reached at (571) 272-6779.
The Examiner is also available for an interview to clarify any statements made in this Office action.
Patent Center
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/JOHN M HOTALING II/Reexamination Specialist, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the ‘249 Patent, or in the prior art.
2 Based upon the Original Disclosure, the art of record, and the knowledge of one of ordinary skill in this art as determined by the factors discussed in MPEP §2141.03 (where practical), the Examiner finds that the Microsoft Press Computer Dictionary is an appropriate technical dictionary known to be used by one of ordinary skill in this art. See e.g. Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1373 (Fed. Cir. 2003) where the Federal Circuit used the Microsoft Press Computer Dictionary (3d ed.) as “a technical dictionary” to define the term “flag.” See also In re Barr, 444 F.2d 588 (CCPA 1971)(noting that its appropriate to use technical dictionaries in order to ascertain the meaning of a term of art) and MPEP §2173.05(a) titled “New Terminology.”
3 See also “An algorithm is defined, for example, as ‘a finite sequence of steps for solving a logical or mathematical problem or performing a task.’” MPEP § 2181 II. B. (quoting Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002).
4 I.e., Applying the “general claim construction principle that limitations found only in the specification of a patent or patent application should not be imported or read into a claim.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
5 See 35 U.S.C. § 112 6th ¶ which states in part that “[a]n element in a claim for a combination ... shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. [Emphasis added.]”
6 “Aristocrat and related cases hold that, if a patentee has invoked computer-implemented means-plus-function claiming, the corresponding structure in the specification for the computer implemented function must be an algorithm unless a general purpose computer is sufficient for performing the function. [Emphasis added.]” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014)(citing Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)).
7 “Part II.C.1. of this opinion has been considered and decided by the court en banc.” Williamson, 792 F.3d at 1343, n1.
8 See also MPEP § 2181 I. quoting a very similar Williamson statement.
9 “’or’ 1 — used as a function word to indicate an alternative < coffee or tea>” Merriam-Webster’s Collegiate Dictionary, 10th Edition, Merriam-Webster Inc., Springfield, M.A., 1997; “’or else’ —used to say what another possibility is. He either thinks he can't do it or else he just isn't interested.” Merriam Webster’s Dictionary at Merriam-Webster.com, Merriam-Webster, www.merriam-webster.com/dictionary/or else. Last accessed 01 Feb 2019.
…
“’or else’ — used to say what another possibility is [.] He either thinks he can't do it or else he just isn't interested.”
Merriam-Webster.com Dictionary, s.v. “or else,” https://www.merriam-webster.com/dictionary/or%20else. Last accessed 01 Feb 2019.
10 The court obviously didn’t adopt the Examiner nomenclature of “WIT-2.”
11 Although the Egenera court does not say so explicitly, it is the Examiner’s position that the patent owner in Egenera, (like Appellant in this proceeding) was arguing WIT-1.
12 See also Williamson, 792 F.3d at1349 (en banc)(“We also overrule the strict requirement of a showing that the limitation essentially is devoid of anything that can be construed as structure.”)
13 Like patent owner’s expert witness in Dyfan, Applicant in this reissue application would not only have to expressly admit the claimed functional phases were conventional or existing in the prior art at the time of the invention, but Applicant would also have to provide appropriate evidence in support thereof (e.g., a prior art U.S. patent), just as patent owner’s expert witness provided documentary evidence in Dyfan.
Prosecution Insights