REISSUE NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 18/536,005 (“the ‘005 application”) for U.S. Patent No. 9,620,012 (“the ‘012 Patent”).
A preliminary amendment was filed December 11, 2023 that canceled claims 1-6 and added new claims 7-14. Claims 7-14 are now pending.
Related Reissues
The ‘005 application is a continuation reissue of application 17/563,558, now RE49838, which is a continuation reissue of application 16/206,836, now RE48926, which is a continuation reissue of 16/204,958, now RE48747, which is a reissue of the ‘012 Patent.
Specification
The specification is objected to. The amendment to the specification should include the reissue patent number RE49838 for related application 17/563558.
Correction is required.
Reason for Reissue
This is a broadening reissue. The Declaration By The Inventor (“Reissue Dec”) filed January 2, 2024, states,
“The patentee claimed less than he had the right to claim in the patent. At least the scope of claim 7 substantially broadens the scope of original patent claim 1. For example, claim 1 recites that the device comprises "the output unit outputs notification to the other vehicles before the running condition is changed," which unduly limits the scope of claim 1. The error is corrected by new claim 7.”
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘012 Patent
1
7
causes the processor to acquire information for causing the lamp outside the first vehicle to indicate information to notify a driver of a second vehicle other than the first vehicle that the first vehicle is in a controlled-driving mode in which a speed and a traveling direction of the first vehicle are controlled
See at least col. 12, lines 44-61; col. 16, lines 7-16; Figs. 9-10
2
7
causes the processor to in response to the acquired information, output an instruction for causing the lamp outside the first vehicle to indicate information to notify the driver of the second vehicle other than the first vehicle that the first vehicle is in the controlled-driving mode
See at least col. 15, lines 1-15; Fig. 13
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-14 of RE49838. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the ‘005 application omits the limitations relating to the GPS and driving routes. The claims also differ in that the claims of the ‘005 application refer to a lamp whereas the claims of RE49838 refer to a state indicator. See the table provided below for comparison. Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Claim 7 of the ‘005 application
Claim 7 of RE49838
A device for a first vehicle having a lamp for externally displaying a status of the first vehicle, the device comprising:
a processor; and a non-transitory memory storing a program which, when executed by the processor, causes the processor to:
A device for a first vehicle having a state indicator for externally displaying a status of the first vehicle, the device comprising: a processor; and a non-transitory memory storing a program which, when executed by the processor, causes the processor to:
receive a current position of the first vehicle from a GPS on the first vehicle;
calculate a driving route to a destination;
control the first vehicle in accordance with the calculated driving route when the first vehicle is in a controlled-driving mode in which a speed and a traveling direction of the first vehicle are controlled by the processor;
acquire information for causing the lamp outside the first vehicle to indicate information to notify a driver of a second vehicle other than the first vehicle that the first vehicle is in a controlled-driving mode in which a speed and a traveling direction of the first vehicle are controlled;
acquire information indicating that the first vehicle is in the controlled-driving mode;
and in response to the acquired information, output an instruction for causing the lamp outside the first vehicle to indicate information to notify the driver of the second vehicle other than the first vehicle that the first vehicle is in the controlled-driving mode.
and in response to the acquired information, output an instruction for causing the state indicator outside the first vehicle to indicate information to notify a driver of a second vehicle other than the first vehicle that the first vehicle is in the controlled-driving mode.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 7, 10, 11, and 14 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by U.S. Pat. No. 9,037,852 to Pinkus et al. (“Pinkus”).
As per claim 7, Pinkus discloses a device for a first vehicle having a lamp for externally displaying a status of the first vehicle, the device comprising:
PNG
media_image1.png
548
759
media_image1.png
Greyscale
a processor (Fig. 1); and
a non-transitory memory storing a program which, when executed by the processor, causes the processor to (Fig. 3):
acquire information for causing the lamp outside the first vehicle to indicate information to notify a driver of a second vehicle other than the first vehicle that the first vehicle is in a controlled-driving mode in which a speed and a traveling direction of the first vehicle are controlled
(27:11-24, “In one embodiment, FHV Meter 100 may interface with the control system of the autonomous FHV advantageously permitting FHV Meter 100 to command the autonomous FHV to perform the operating conditions described above.”
14:20-24, “The operator may press a button or turn a dial on FHV Meter 100 that will create a signal within FHV meter to start the fare. In box 420, FHV Meter 100 accesses the stored operating parameters, including expiration and exclusion parameters, from encrypted parameters data store 380.” The START button signals from the FHV meter 100 to the FHV that the automatic driving mode with a passenger may begin.
24:45-60, “In other embodiments, FHV Meter 100 may be a separate unit that attaches and interfaces with the control system of the autonomous FHV. The separate unit may connect with the autonomous FHV using any means known in the art for connecting two computer systems. For example, FHV Meter 100 may connect to the control system via a USB port, a RS 232 port, wireless port, or Bluetooth. The placement of FHV Meter 100 within the autonomous FHV may vary depending on the intended operator. For example, an autonomous FHV may include a meter that has a front view similar to the front view depicted in FIG. 1. In some embodiments, an operator may press the "START" button to first engage a fare when picking up a passenger. In such embodiments, FHV meter 100 may be near the front seat of the autonomous FHV, In other embodiments, the passenger may press the "START" button (or similar button) to start a fare.” Where the acquired information indicating an automatic driving mode is sent via any of the disclosed connections between the FHV and the FHV meter 100. The START button signals that the automatic driving mode with a passenger may begin.
26:24-36, “Once the user inputs the data (which may be via user interface, import file, or any other means of inputting data known by those skilled in the art), parameter maintenance computer system 600 may create a secure, encrypted data packet which is then delivered to the autonomous FHV as described above with respect to FIGS. 6-8. Once the autonomous FHV receives the secure, encrypted data packet, it may then store it encrypted parameters data store and extract the data within the packet as described above with respect to FIG. 9. The autonomous FHV may then operate according to the parameters defined within the data packet.” The FHV meter 100 receives the parameters that indicate how the FHV is to operate in the autonomous mode.); and
in response to the acquired information, output an instruction for causing the lamp outside the first vehicle to indicate information to notify the driver of the second vehicle other than the first vehicle that the first vehicle is in the controlled-driving mode
(9:23-40, “FHV Meter 100 may, in some embodiments, be connected to status indicator 150. Advantageously, status indicator 150 provides indicia of the availability of FHV 190 to accept fares. For example, status indicator 150 may be illuminated when FHV 190 may accept fares. In some embodiments, status indicator 150 may comprise a configurable display, such as a video screen, which may provide indicia indicating that availability of FHV 190. For example, the indicia may comprise a special color, such as green, to indicate that the FHV may accept a fare. The indicia may also comprise text such as "FOR HIRE" or "NOT IN SERVICE" to advantageously communicate to the public whether the FHV is available. In some embodiments, status indicator 150 may be in communication with FHV Meter 100. In such embodiments, status indicator 150 may only provide indicia that are available when FHV Meter 100 is operating in accordance with the expiration and exclusion parameters stored in encrypted parameters data store 380.” Thus status indicator 150 and indicia indicate to other drivers when the vehicle is in an automatic driving mode in response to the parameter data received.
9:36-40, “In such embodiments, status indicator 150 may only provide indicia that are available when FHV Meter 100 is operating in accordance with the expiration and exclusion parameters stored in encrypted parameters data store 380.” Status indicator 150 is in communication with FHV meter 100 and provides indicia based on the parameter data received by the FHV meter 100.).
As per claim 10, Pinkus discloses the device according to claim 7, wherein the lamp is different from a tail lamp and a direction light (9:23-40, “FHV Meter 100 may, in some embodiments, be connected to status indicator 150. Advantageously, status indicator 150 provides indicia of the availability of FHV 190 to accept fares. For example, status indicator 150 may be illuminated when FHV 190 may accept fares. In some embodiments, status indicator 150 may comprise a configurable display, such as a video screen, which may provide indicia indicating that availability of FHV 190. For example, the indicia may comprise a special color, such as green, to indicate that the FHV may accept a fare. The indicia may also comprise text such as "FOR HIRE" or "NOT IN SERVICE" to advantageously communicate to the public whether the FHV is available. In some embodiments, status indicator 150 may be in communication with FHV Meter 100. In such embodiments, status indicator 150 may only provide indicia that are available when FHV Meter 100 is operating in accordance with the expiration and exclusion parameters stored in encrypted parameters data store 380.”).
Claims 11 and 14 recite substantially similar subject matter to that of claims 7 and 10, respectively. Therefore, claims 11 and 14 are rejected under the same rationale as claims 7 and 10.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 8, 9, 12, and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Pat. 9,037,852 to Pinkus et al. (“Pinkus”).
As per claims 8 and 9, Pinkus does not expressly disclose the device according to claim 7, wherein the lamp includes a tail lamp or direction light to be flashed in accordance with the instruction. However, flashing a tail lamp or direction light to, for example, notify neighboring vehicles an intent to change lanes or direction or slow down or stop is old and well known in the art. At the time of the invention, it would have been obvious to a person of ordinary skill in the art to flash a tail lamp or direction light to indicate a state of the vehicle as doing so is an old and well known customary function performed by drivers of vehicles. In many cases, it is the law to use a tail lamp or direction light to indicate a state of the vehicle so that neighboring vehicles are made aware of the driver’s intent.
Claims 12 and 13 recite substantially similar subject matter to that of claims 8 and 9, respectively. Therefore, claims 12 and 13 are rejected under the same rationale as claims 8 and 9.
Information Disclosure Statement
Prior art is evaluated in accordance with the policy of MPEP 2256, which states:
“Where patents, publications, and other such items of information are submitted by a party (patent owner or requester) in compliance with the requirements of the rules, the requisite degree of consideration to be given to such information will be normally limited by the degree to which the party filing the information citation has explained the content and relevance of the information. The initials of the examiner placed adjacent to the citations on the form PTO /SB /08A and 08B or its equivalent, without an indication to the contrary in the record, do not signify that the information has been considered by the examiner any further than to the extent noted above.”
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘012 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/JOHN M HOTALING II/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992