DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the communication filed on . The disposition of claim is as follows:
Pending:
Rejected:
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on has been entered.
Response to Arguments and Amendments
Applicant's arguments filed have been fully considered. The Examiner proceeds below with a response.
Regarding Claims rejected under 35 U.S.C. § :
Applicant's arguments have been fully considered but they are not persuasive
Applicant presents the following arguments:
Claims are amended such that the features of the amended claims are described in the specification. Especially, this amendment, incorporating "based on predetermined information," sufficiently identifies the input to determine whether a misrecognition condition is satisfied, and one skilled in the art would understand how to perform such a determination using information established in advance. The specification describes this determination, for example, in paragraph [0049], which states "the first misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS Accordingly, the specification describes the claimed features in a manner that reasonably conveys to a person of ordinary skill in the relevant art that the inventor or a joint inventor had possession of the claimed invention at the time of filing.
Although applicant contends "the specification describes the claimed features in a manner that reasonably conveys to a person of ordinary skill in the relevant art that the inventor or a joint inventor had possession of the claimed invention at the time of filing. Applicant provides the example that “the first misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.” This is insufficient to satisfy the written description requirement. To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
Applicant's arguments amount to an assertion that it would be common practice for a person skilled in the art to determine that a misrecognition condition is satisfied based on generic road information IR and/or surroundings detection information IS.
Applicant asserts that a person skilled in the art understands how to determine satisfaction of a misrecognition condition () based on generic road information IR and/or surroundings detection information IS. Although a person skilled in the art may arguably have familiarity with generic road information IR and/or surroundings detection information IS, such a person would not understand that the Applicant had possession of the claimed invention. Utilizing generic road information IR and/or surroundings detection information IS to determine a misrecognition condition would require additional information and at least understanding of applicability to multiple specific road scenarios. Absent knowledge of how these factors are employed with the specified inputs, a person skilled in the art would be faced with a vast amount of inputs, algorithms, model training, and data sets that would confound the process of implementing Applicant's actual invention.
Moreover, Applicant does not direct Examiner to any language, steps or flow charts in the disclosure to show particular hardware or an algorithm, such that a skilled artisan would understand how to . There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs and output a value. As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I.)
Absent from the Specification is any discussion as to the particular steps, i.e., algorithm, necessary to perform the claimed functions. As such, the rejection is maintained as the instant Specification does not disclose sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to . Stated differently, the steps, procedure or algorithm taken to perform the claimed functions are not described in sufficient detail in the instant Specification to demonstrate that the inventor was in possession of that knowledge.
Therefore, the rejection, as updated infra, has been maintained.
Dependent Claims
Regarding Claims , Applicant's arguments are based only upon dependencies. Therefore, the arguments are not persuasive.
Claim Interpretation - Dictionary Definition
The Examiner has relied on dictionary definitions to interpret claim terms according to their plain and ordinary meaning, applying the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP §§ 2111, 2111.01. The dictionary definitions and sources are as follows:
:
”” [ [Def. ]. (n.d.).
Retrieved , from .]
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how a utilizing predetermined information. There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0049]
The first misrecognition condition is a condition that the vehicle 100 is traveling on a national road, a local road, or the like and on a main road or a trunk road. The vehicle control device 10 determines whether or not the first misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
[0053]
The second misrecognition condition is a condition that the driver is highly likely to misrecognizes that the permission condition is satisfied, and that the driver is present on the road RDego of the vehicle. In other words, the second misrecognition condition is a condition that the same type of equipment is provided on the road where the permission condition is satisfied and that the same type of equipment as the equipment that does not satisfy the permission condition is provided on the road RDego of the vehicle. In the present example, the features of the second misrecognition condition include, for example, the presence of an entrance tollgate of an expressway, the presence of a waiting place, the presence of a central separation zone, the presence of a plurality of lanes having the same traveling direction, and the presence of a signboard or a sign indicating that pedestrian traffic is prohibited. The vehicle control device 10 determines whether or not the second misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
[0055]
The fourth misrecognition condition is a condition that the vehicle 100 is traveling on the permission misrecognition road. The permission misrecognition road is a road that does not satisfy the permission condition, and is a road that is misrecognized as a road that satisfies the permission condition by a driver of another vehicle other than the vehicle 100. In other words, the permission misrecognition road is a road on which a driver of another vehicle different from the vehicle 100 misrecognizes the road as a road where the permission condition is satisfied.
[0056] Whether the fourth misrecognition condition is satisfied is determined, for example, by using so-called big data acquired as road-information IR. In this case, the vehicle control device 10 recognizes, based on the big data, a road on which the driver of the other vehicle other than the host vehicle 100 has operated the winker lever and has not changed the lane by operating the steering wheel itself for a predetermined time or longer, as a permission misrecognition road. Alternatively, the vehicle control device 10 recognizes, based on the big data, a road on which the driver of the other vehicle other than the host vehicle 100 has operated the winker lever for a predetermined period of time or more and in which the lane change has not been performed by operating the steering wheel himself/herself for a predetermined number of times or more, as a permission misrecognition road. In addition, the vehicle control device 10 may be configured to recognize the permission misrecognition road by using an AI technique such as so-called machine learning or deep learning when the permission misrecognition road is recognized based on the big data. Note that the vehicle control device 10 may be configured to receive the information on the permission misrecognition road by the communication device 73, and determine whether the vehicle traveling road RDego is the permission misrecognition road based on the information.
See at least: Instant Specification ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0043] When "Yes" in S305, the vehicle control device 10 advances the process to S310 and determines whether or not the permission condition is satisfied.
[0044] The permission condition is a condition that the host vehicle traveling road RDego is a road on which the lane change of the host vehicle 100 using the lane change assist control is permitted. In this example, the permission condition includes first to third permission conditions, and is satisfied when all of the first to third permission conditions are satisfied.
[0045] The first permission condition is a condition that the own-vehicle traveling road RDego is a road on which walking of a person is prohibited. The second permission condition is a condition that a plurality of lanes having the same traveling direction are provided on the vehicle traveling road RDego. The third permission condition is a condition that the center separation zone RDspt (see FIG. 2) is provided on the own-vehicle traveling roadway RDego. The vehicle control device 10 determines whether the first to third permission conditions are satisfied based on the road information IR and/or the surroundings detection information IS.
See at least: Instant Specification ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how a . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0049]
The first misrecognition condition is a condition that the vehicle 100 is traveling on a national road, a local road, or the like and on a main road or a trunk road. The vehicle control device 10 determines whether or not the first misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
[0053]
The second misrecognition condition is a condition that the driver is highly likely to misrecognizes that the permission condition is satisfied, and that the driver is present on the road RDego of the vehicle. In other words, the second misrecognition condition is a condition that the same type of equipment is provided on the road where the permission condition is satisfied and that the same type of equipment as the equipment that does not satisfy the permission condition is provided on the road RDego of the vehicle. In the present example, the features of the second misrecognition condition include, for example, the presence of an entrance tollgate of an expressway, the presence of a waiting place, the presence of a central separation zone, the presence of a plurality of lanes having the same traveling direction, and the presence of a signboard or a sign indicating that pedestrian traffic is prohibited. The vehicle control device 10 determines whether or not the second misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
[0055]
The fourth misrecognition condition is a condition that the vehicle 100 is traveling on the permission misrecognition road. The permission misrecognition road is a road that does not satisfy the permission condition, and is a road that is misrecognized as a road that satisfies the permission condition by a driver of another vehicle other than the vehicle 100. In other words, the permission misrecognition road is a road on which a driver of another vehicle different from the vehicle 100 misrecognizes the road as a road where the permission condition is satisfied.
[0056] Whether the fourth misrecognition condition is satisfied is determined, for example, by using so-called big data acquired as road-information IR. In this case, the vehicle control device 10 recognizes, based on the big data, a road on which the driver of the other vehicle other than the host vehicle 100 has operated the winker lever and has not changed the lane by operating the steering wheel itself for a predetermined time or longer, as a permission misrecognition road. Alternatively, the vehicle control device 10 recognizes, based on the big data, a road on which the driver of the other vehicle other than the host vehicle 100 has operated the winker lever for a predetermined period of time or more and in which the lane change has not been performed by operating the steering wheel himself/herself for a predetermined number of times or more, as a permission misrecognition road. In addition, the vehicle control device 10 may be configured to recognize the permission misrecognition road by using an AI technique such as so-called machine learning or deep learning when the permission misrecognition road is recognized based on the big data. Note that the vehicle control device 10 may be configured to receive the information on the permission misrecognition road by the communication device 73, and determine whether the vehicle traveling road RDego is the permission misrecognition road based on the information.
See at least: Instant Specification ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a ). As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0043] When "Yes" in S305, the vehicle control device 10 advances the process to S310 and determines whether or not the permission condition is satisfied.
[0044] The permission condition is a condition that the host vehicle traveling road RDego is a road on which the lane change of the host vehicle 100 using the lane change assist control is permitted. In this example, the permission condition includes first to third permission conditions, and is satisfied when all of the first to third permission conditions are satisfied.
[0045] The first permission condition is a condition that the own-vehicle traveling road RDego is a road on which walking of a person is prohibited. The second permission condition is a condition that a plurality of lanes having the same traveling direction are provided on the vehicle traveling road RDego. The third permission condition is a condition that the center separation zone RDspt (see FIG. 2) is provided on the own-vehicle traveling roadway RDego. The vehicle control device 10 determines whether the first to third permission conditions are satisfied based on the road information IR and/or the surroundings detection information IS.
See at least: Instant Specification ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0043] When "Yes" in S305, the vehicle control device 10 advances the process to S310 and determines whether or not the permission condition is satisfied.
[0044] The permission condition is a condition that the host vehicle traveling road RDego is a road on which the lane change of the host vehicle 100 using the lane change assist control is permitted. In this example, the permission condition includes first to third permission conditions, and is satisfied when all of the first to third permission conditions are satisfied.
[0045] The first permission condition is a condition that the own-vehicle traveling road RDego is a road on which walking of a person is prohibited. The second permission condition is a condition that a plurality of lanes having the same traveling direction are provided on the vehicle traveling road RDego. The third permission condition is a condition that the center separation zone RDspt (see FIG. 2) is provided on the own-vehicle traveling roadway RDego. The vehicle control device 10 determines whether the first to third permission conditions are satisfied based on the road information IR and/or the surroundings detection information IS.
See at least: Instant Specification ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “make at least one of determinations including, (i) first determination to determine whether first condition is satisfied that the vehicle is traveling on a main road or a trunk road based on the acquired road information”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0049] The first misrecognition condition is a condition that the vehicle 100 is traveling on a national road, a local road, or the like and on a main road or a trunk road. The vehicle control device 10 determines whether or not the first misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
See at least: Instant Specification ¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0050] The second misrecognition condition is a condition that the driver is highly likely to misrecognizes that the permission condition is satisfied, and that the driver is present on the road RDego of the vehicle. In other words, the second misrecognition condition is a condition that the same type of equipment is provided on the road where the permission condition is satisfied and that the same type of equipment as the equipment that does not satisfy the permission condition is provided on the road RDego of the vehicle. In the present example, the features of the second misrecognition condition include, for example, the presence of an entrance tollgate of an expressway, the presence of a waiting place, the presence of a central separation zone, the presence of a plurality of lanes having the same traveling direction, and the presence of a signboard or a sign indicating that pedestrian traffic is prohibited. The vehicle control device 10 determines whether or not the second misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
See at least: Instant Specification ¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0051] The third misrecognition condition is a condition that a characteristic that is highly likely to cause the driver to misrecognize that the permission condition is satisfied exists in the traveling state of the vehicle 100. In the present example, the feature of the third misrecognition condition is, for example, that the distance traveled by the vehicle 100 without passing through the traffic light or the intersection is equal to or greater than a predetermined distance threshold. The vehicle control device 10 determines whether or not the third misrecognition condition is satisfied based on the road information IR and/or the surroundings detection information IS.
See at least: Instant Specification ¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how . There is no written content as to how or what specific algorithms are performed (i.e. formulas, algorithms, sequence of mathematical steps, process of determination, for example)
To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Specifically, to have “possession,” the Specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In addition, the specification must “demonstrate that the patentee possessed the full scope of the invention recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). Original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Id. This can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail. Additionally, it is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); see also Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57, 62 (Jan. 7, 2019).
At best, the Specification vaguely and generically describes the following:
[0052]The fourth misrecognition condition is a condition that the vehicle 100 is traveling on the permission misrecognition road. The permission misrecognition road is a road that does not satisfy the permission condition, and is a road that is misrecognized as a road that satisfies the permission condition by a driver of another vehicle other than the vehicle 100. In other words, the permission misrecognition road is a road on which a driver of another vehicle different from the vehicle 100 misrecognizes the road as a road where the permission condition is satisfied.
See at least: Instant Specification ¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output a . As noted in the MPEP, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved” (See MPEP § 2161.01 I). In particular, the MPEP requires description of “an algorithm or steps/procedure taken to perform the function."
Claimed subject matter should be described in the specification in such a manner as to enable one of ordinary skill in the art to make and use the invention. The specification does not at all describe the steps / procedure involved in which would necessarily involve some calculations or steps that have not been described.
It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure/algorithm as to how this value is generated raises questions whether applicant truly had possession of this feature at the time of filing.
Regarding Claims ,
The claims ultimately depend from a claim that fails to comply with the written description requirement and is/are rejected for depending therefrom.
Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding Claim ,
A great degree of uncertainty and confusion exists regarding the proper interpretation of the claim in light of the multiplicity and scope of rejections set forth under 35 USC §112(b) above and their interrelation with one another. The specification, as interpreted by a person having ordinary skill in the art, fails to provide reasonable certainty as to how the claim limitations should be interpreted and the intended boundaries of the subject matter encompassed by the claim. Considerable speculation is required to interpret the intended meaning of the claim and what the claim is intended to encompass. As such, the examiner is unable to interpret the meaning and scope of this claim with substantial certainty that would be required to attempt to apply prior art to reject the claim. Therefore, the examiner will not attempt to apply prior art to reject this claim because unreasonable and speculative assumptions as to the proper interpretation of claimed limitations that would be required to reject the claim on the basis of prior art would be improper. (See In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), MPEP §2143.03(I), MPEP §2173.06(II)¶2; “it is improper to rely on speculative assumptions regarding the meaning of a claim and then base a rejection under 35 U.S.C. 103 on these assumptions”; “a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”).
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line . It is unclear whether this is meant to There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim ,
The claim recites the limitation "" in Line .
However, the claim also recites the limitation "" in Lines .
Taken together, these claim limitations are incomprehensible such that it is impossible to clearly understand the intended scope. The examiner is unable to discern the intended scope of these limitations, how the claimed phrases are intended to relate to one another, nor construe this information in light of the instant disclosure.
Specifically, .
The Examiner is unable to ascertain what these limitations, taken together, are intended to encompass. This renders the claim vague and indefinite as one of ordinary skill in the art would not be able to ascertain the metes and bounds of the claim.
To overcome the rejection, it is suggested that Applicant rephrase the claimed limitations, without introducing any new matter, to more clearly articulate the intended scope of the claim.
Regarding Claim ,
The claim recites the limitation "(iv) fourth determination to determine whether fourth condition is satisfied that the vehicle is traveling on a permission misrecognition road, based on information on permission misrecognition road" in Lines .
However, this limitation is incomprehensible such that it is impossible to clearly understand the intended scope of the phrase. The examiner is unable to discern the intended scope of this limitation, how the claimed phrases are intended to relate to one another, nor construe this information in light of the instant disclosure.
The Examiner is unable to ascertain what this limitation is intended to encompass. This renders the claim vague and indefinite as one of ordinary skill in the art would not be able to ascertain the metes and bounds of the claim.
To overcome the rejection, it is suggested that Applicant rephrase the claimed limitation / phrase, without introducing any new matter, to more clearly articulate the intended scope of the claim.
Terminology
The Examiner notes that the following terms are utilized in Applicant’s specification as follows:
:
See Instant Specification: ¶¶
:
See Instant PgPub: ¶¶
Definitions for Claim Language - MPEP § 2111.01(III)-(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given the plain meaning to a person of ordinary skill in the art. (See MPEP §§ 2173.01, 2173.05(a), and 2111.01).
If special definitions are present, Applicant should bring them to the attention of the Examiner and the prosecution history in the next response.
To date, Applicant has provided no indication of special definitions.
Examiner Interviews
Regular Examiner Interview Requests:
Pursuant to USPTO Guidance, one Examiner interview per round of prosecution is available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant may call Examiner Reinbold directly at 313-446-6607 (preferred) or use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft, can be reached on 571-270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Additional Examiner Interview Requests:
If Applicant needs more than one Examiner interview during a single round of prosecution, applicant may request approval for additional examiner interview(s) from Examiner Reinbold’s Supervisory Patent Examiner (SPE), Logan Kraft, who can be reached at 571-270-5065.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT A. REINBOLD whose telephone number is (313)446-6607. The examiner can normally be reached on MON - FRI: 8AM - 5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Logan Kraft, can be reached on (571)270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SCOTT A REINBOLD/Primary Examiner, Art Unit 3747