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 claims is as follows:
Pending:
Rejected:
Information Disclosure Statement
Acknowledgement is hereby made of receipt of the Information Disclosure Statements filed by the Applicant listed below:
September 10, 2025
March 19, 2024
Claim Interpretation – 35 USC § 112(f)
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 limitation(s) is/are:
Because these claim limitations /are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Interpretation - Contingent Limitations
Claim contains contingent limitation (), infra:
Claim :
() “”
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B. See MPEP § 2111.04(II).
Limitation () in claim recites method or process steps that require a first step if a first condition happens and a second step if a second condition happens. Accordingly, the analysis set forth in Ex Parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) applies to method claim contingent limitation (). See MPEP § 2111.04(II). When analyzing the claimed method as a whole, the PTAB determined that giving the claim its broadest reasonable interpretation, "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed" (quotation omitted). Schulhauser at 10. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the [ ] method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met)". Schulhauser at 9.
For example, the broadest reasonable interpretation of Claim does not require “” since the conditional limitations are not actually required to occur (i.e., a determination that one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition rather than the failure to result in an acceptable rolling resistance condition actually occurring)
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 the . 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). 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:
[0038] In various aspects, the determination component 106 can utilize real-time data or calibration data of one or more of the plurality of parameters to determine the appropriate adjustments of wheel camber and toe angle to provide an acceptable rolling resistance condition. More specifically, the determination component 106 can be calibrated based on empirical data of tire pressure, tread depth, wheel camber, toe angle, or any other suitable parameters to provide appropriate vehicle states and conditions for an acceptable rolling resistance condition when monitoring of rolling resistance is unattainable or impeded (e.g., sensor failure, extreme conditions, low battery or energy). Thus, the control component 108 can execute the suitable states and conditions (toe angle, camber) based on the calibration data. Conversely, when accurate monitoring of rolling resistance is enabled, the real-time data of one or more of the plurality of parameters can be directly utilized by the determination component 106 to compute the rolling resistance of the vehicle and by the control component 108 to execute the determined adjustments (e.g., adjusting camber or toe angle). Thus, the appropriate changes to the chassis settings can be dynamically adjusted to achieve minimized rolling resistance and suitable traction.
See at least: Instant PgPub ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output . 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 the 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). 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:
[0039] In various embodiments, the system 100 can comprise a control component 108. In various cases, as described herein, the control component 108 can control one or more aspects of the vehicle based on a determination that the one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition.
[0040] In various embodiments, the control component 108 can conduct, initiate, facilitate, or otherwise perform any suitable electronic actions, in response to the determination component 106 (e.g., in response to a determination that one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition). In contrast, the control component 108 can, in various instances, refrain from conducting, initiating, facilitating, or otherwise performing such electronic actions, in response to the determination component 106 (e.g., in response to a determination that one or more of the plurality of parameters of the vehicle do result in an acceptable rolling resistance condition).
See at least: Instant PgPub ¶¶
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 ,
Claim limitation “.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification fails to provide adequate written description of a corresponding structure used to accomplish the function performed by the “”. A mere restatement of function associated with a means-plus-function limitation in the specification without more description of the means that accomplish the function fails to provide adequate written description. One skilled in the art would not understand the specification itself to disclose a structure capable of accomplishing the function corresponding to the claimed means-plus-function limitation “” (See MPEP §§2163(II)(A)(3)(¶7), 2181(IV)(¶3)) (See Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008) ("consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.' It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) ("The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure."). Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore, that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under 35 U.S.C. § 112(a). 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.
Regarding Claims -3 and 9,
Claim limitation “.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification fails to provide adequate written description of a corresponding structure used to accomplish the function performed by the “”. A mere restatement of function associated with a means-plus-function limitation in the specification without more description of the means that accomplish the function fails to provide adequate written description. One skilled in the art would not understand the specification itself to disclose a structure capable of accomplishing the function corresponding to the claimed means-plus-function limitation “” (See MPEP §§2163(II)(A)(3)(¶7), 2181(IV)(¶3)) (See Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008) ("consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.' It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) ("The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure."). Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore, that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under 35 U.S.C. § 112(a). 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.
Regarding Claims ,
Claim limitation “.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification fails to provide adequate written description of a corresponding structure used to accomplish the function performed by the “”. A mere restatement of function associated with a means-plus-function limitation in the specification without more description of the means that accomplish the function fails to provide adequate written description. One skilled in the art would not understand the specification itself to disclose a structure capable of accomplishing the function corresponding to the claimed means-plus-function limitation “” (See MPEP §§2163(II)(A)(3)(¶7), 2181(IV)(¶3)) (See Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008) ("consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.' It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) ("The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure."). Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore, that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under 35 U.S.C. § 112(a). 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.
Regarding Claims ,
Claim limitation “.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification fails to provide adequate written description of a corresponding structure used to accomplish the function performed by the “”. A mere restatement of function associated with a means-plus-function limitation in the specification without more description of the means that accomplish the function fails to provide adequate written description. One skilled in the art would not understand the specification itself to disclose a structure capable of accomplishing the function corresponding to the claimed means-plus-function limitation “” (See MPEP §§2163(II)(A)(3)(¶7), 2181(IV)(¶3)) (See Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008) ("consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.' It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) ("The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure."). Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore, that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under 35 U.S.C. § 112(a). 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.
Regarding Claim ,
Claim limitation “” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The specification fails to provide adequate written description of a corresponding structure used to accomplish the function performed by the “”. A mere restatement of function associated with a means-plus-function limitation in the specification without more description of the means that accomplish the function fails to provide adequate written description. One skilled in the art would not understand the specification itself to disclose a structure capable of accomplishing the function corresponding to the claimed means-plus-function limitation “” (See MPEP §§2163(II)(A)(3)(¶7), 2181(IV)(¶3)) (See Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336-37, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008) ("consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.' It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999); Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007) ("The inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing a structure."). Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore, that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under 35 U.S.C. § 112(a). 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.
Regarding Claim ,
The claim recites “.”
The specification does not provide adequate written description of how the . 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). 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:
[0038] In various aspects, the determination component 106 can utilize real-time data or calibration data of one or more of the plurality of parameters to determine the appropriate adjustments of wheel camber and toe angle to provide an acceptable rolling resistance condition. More specifically, the determination component 106 can be calibrated based on empirical data of tire pressure, tread depth, wheel camber, toe angle, or any other suitable parameters to provide appropriate vehicle states and conditions for an acceptable rolling resistance condition when monitoring of rolling resistance is unattainable or impeded (e.g., sensor failure, extreme conditions, low battery or energy). Thus, the control component 108 can execute the suitable states and conditions (toe angle, camber) based on the calibration data. Conversely, when accurate monitoring of rolling resistance is enabled, the real-time data of one or more of the plurality of parameters can be directly utilized by the determination component 106 to compute the rolling resistance of the vehicle and by the control component 108 to execute the determined adjustments (e.g., adjusting camber or toe angle). Thus, the appropriate changes to the chassis settings can be dynamically adjusted to achieve minimized rolling resistance and suitable traction.
See at least: Instant PgPub ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output . 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 the 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). 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:
[0039] In various embodiments, the system 100 can comprise a control component 108. In various cases, as described herein, the control component 108 can control one or more aspects of the vehicle based on a determination that the one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition.
[0040] In various embodiments, the control component 108 can conduct, initiate, facilitate, or otherwise perform any suitable electronic actions, in response to the determination component 106 (e.g., in response to a determination that one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition). In contrast, the control component 108 can, in various instances, refrain from conducting, initiating, facilitating, or otherwise performing such electronic actions, in response to the determination component 106 (e.g., in response to a determination that one or more of the plurality of parameters of the vehicle do result in an acceptable rolling resistance condition).
See at least: Instant PgPub ¶¶
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 9,
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). 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:
[0038] In various aspects, the determination component 106 can utilize real-time data or calibration data of one or more of the plurality of parameters to determine the appropriate adjustments of wheel camber and toe angle to provide an acceptable rolling resistance condition. More specifically, the determination component 106 can be calibrated based on empirical data of tire pressure, tread depth, wheel camber, toe angle, or any other suitable parameters to provide appropriate vehicle states and conditions for an acceptable rolling resistance condition when monitoring of rolling resistance is unattainable or impeded (e.g., sensor failure, extreme conditions, low battery or energy). Thus, the control component 108 can execute the suitable states and conditions (toe angle, camber) based on the calibration data. Conversely, when accurate monitoring of rolling resistance is enabled, the real-time data of one or more of the plurality of parameters can be directly utilized by the determination component 106 to compute the rolling resistance of the vehicle and by the control component 108 to execute the determined adjustments (e.g., adjusting camber or toe angle). Thus, the appropriate changes to the chassis settings can be dynamically adjusted to achieve minimized rolling resistance and suitable traction.
See at least: Instant PgPub ¶¶
There is no description of what the steps / procedure actually entail. They are simply treated as black boxes that accept certain inputs () and output . 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 the 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 9,
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). 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:
[0039] In various embodiments, the system 100 can comprise a control component 108. In various cases, as described herein, the control component 108 can control one or more aspects of the vehicle based on a determination that the one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition.
[0040] In various embodiments, the control component 108 can conduct, initiate, facilitate, or otherwise perform any suitable electronic actions, in response to the determination component 106 (e.g., in response to a determination that one or more of the plurality of parameters of the vehicle will fail to result in an acceptable rolling resistance condition). In contrast, the control component 108 can, in various instances, refrain from conducting, initiating, facilitating, or otherwise performing such electronic actions, in response to the determination component 106 (e.g., in response to a determination that one or more of the plurality of parameters of the vehicle do result in an acceptable rolling resistance condition).
See at least: Instant PgPub ¶¶
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 claims ultimately depend from a claim that fails to comply with the written description requirement and 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.
Claims are 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 ,
The term "" is a relative term in that it is a subjective term. See MPEP § 2173.05(b)(IV). The term “” is not defined by the claim and the Specification does not clearly indicate, define or explain what the term “” encompasses. Furthermore, the Specification does not provide a standard for determining what is considered "". This renders the claim as vague and indefinite as the metes and bounds of the claim are unclear and cannot be ascertained by one of ordinary skill in the art. Applicant may overcome a rejection by amending the claim to remove the subjective term, or by providing evidence that the meaning of the term can be ascertained by one of ordinary skill in the art when reading the disclosure.
Regarding Claim ,
The term "" is a relative term in that it is a subjective term. See MPEP § 2173.05(b)(IV). The term “” is not defined by the claim and the Specification does not clearly indicate, define or explain what the term “” encompasses. Furthermore, the Specification does not provide a standard for determining what is considered "". This renders the claim as vague and indefinite as the metes and bounds of the claim are unclear and cannot be ascertained by one of ordinary skill in the art. Applicant may overcome a rejection by amending the claim to remove the subjective term, or by providing evidence that the meaning of the term can be ascertained by one of ordinary skill in the art when reading the disclosure.
Regarding Claim ,
The term "" is a relative term in that it is a subjective term. See MPEP § 2173.05(b)(IV). The term “” is not defined by the claim and the Specification does not clearly indicate, define or explain what the term “” encompasses. Furthermore, the Specification does not provide a standard for determining what is considered "". This renders the claim as vague and indefinite as the metes and bounds of the claim are unclear and cannot be ascertained by one of ordinary skill in the art. Applicant may overcome a rejection by amending the claim to remove the subjective term, or by providing evidence that the meaning of the term can be ascertained by one of ordinary skill in the art when reading the disclosure.
Regarding Claim ,
The claim recites the limitation "" in . There is insufficient antecedent basis for this limitation in the claim.
Regarding Claims ,
Claim limitation “.” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or