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:
Canceled:
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:
thee claimed invention is not focused on characterizing vehicle motion in a downhill. The claimed invention does make such calculations using conventional method. But the focus of the invention, as claimed, is directed to how to calculate a speed reduction to apply to the vehicle to counter speed increases experienced by the vehicle in the downhill.
In this regard, the Specification comprises a large section on how such speed reduction is determined. For example, para. [0090] discloses that the speed reduction may be based on a desired speed for the vehicle in a downhill. In other words, a selected/desired speed limit. In para. [0091], the speed reduction is based on set braking speed or a set speed limit. In this embodiment, if the vehicle is expected to accelerate so that the braking speed or speed limit is reached in the downhill, one or more of the vehicle's brakes is/are engaged so that the vehicle speed is reduced so as maintain the speed at or below the braking speed (see Specification, para. [0091]). Paras. [0092]-[0096] describe in detail how such braking is calculated and applied.
Further, paras. [0097]-[0098] describes how such braking is calculated: [0097] To determine the vehicle's speed and the speed reduction, the required brake force along the upcoming road section 510 may need to be known as well. The required brake force may be determined using commonly known techniques based on road gradient and on a mass of the vehicle. The mass of the vehicle may in this case be a measured or otherwise determined, for example estimated, total mass of the vehicle. The mass may typically be determined by a mass estimation algorithm based on either information from a suspension of the vehicle or on a measured or estimated moment of inertia of the vehicle. Also, other variables may be considered in estimation of required brake force, such as air resistance, rolling resistance and powertrain friction.
[0098] To determine the speed reduction, different speed scenarios for the upcoming road section 510, corresponding to using one or more of available braking systems, may be calculated or simulated based on available brake power compared with the required braking force. For example, a simulation may be used to determine the vehicle speed at the crest 512 of the downhill slope 514, such that the vehicle 100 may maintain a certain speed in the downhill slope, e.g., the set braking speed, if a certain braking system, a combination of braking systems or no braking systems is used.
Specification, paras. [0097]-[0098].
Paras. [0097]-[0098] clearly disclose how the speed reduction is determined. The claimed invention uses conventional laws of physics to determine the predicted speed that the vehicle will experience in a downhill. The claimed invention then determines a speed reduction needed prior to the vehicle reaching the downhill, such as by a braking procedure, so that the speed of the vehicle will not exceed a selected speed, braking speed, or a speed limit during the downhill. Para. [0098] states that, for example, a simulation may be used to determine the vehicle speed at the crest of the downhill slope such that the vehicle may maintain a certain speed in the downhill slope. The claimed invention may then use braking to achieve the determined vehicle speed determined by the simulation.
The Examiner respectfully disagrees.
Although applicant contends " in regards to claim limitation: , 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 a speed reduction to be performed before reaching the road crest based on at least a gradient of a downhill slope following the road crest based on Newton’s laws, employ one of a number of different speed reduction strategies for the road section (e.g. reduced request of positive engine torque, dragging, freewheeling etc., may be evaluated where the reduction of the speed of the vehicle 100 before the vehicle reached the crest 512 is followed by an increase of the speed of the vehicle 100 in the downhill slope); determine speed reduction based on one or more of a number of factors (e.g. the desired speed in the downhill slope; set braking speed or a set speed limit); determine whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in the downhill and engage brakes such that vehicle speed is reduced so as to maintain speed at or below braking speed; and consider the influence of vehicle speed on the available braking capacity (e.g. by determining the available braking capacity based on a simulated vehicle speed of the vehicle along the upcoming road section)
Applicant asserts that a person skilled in the art understands how to determine a speed reduction to be performed before reaching the road crest based on at least a gradient of a downhill slope following the road crest. Although a person skilled in the art may arguably have familiarity with Newton’s laws, different speed reduction strategies for the road section (e.g. reduced request of positive engine torque, dragging, freewheeling); determining speed reduction based on one or more of a number of factors (e.g. the desired speed in the downhill slope; set braking speed or a set speed limit); determining whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in the downhill and engage brakes such that vehicle speed is reduced so as to maintain speed at or below braking speed; consideration of the influence of vehicle speed on the available braking capacity (e.g. by determining the available braking capacity based on a simulated vehicle speed of the vehicle along the upcoming road section), and determination of required brake force based on road gradient and on a mass of the vehicle (mass estimation algorithm based on either information from a suspension of the vehicle or on a measured or estimated moment of inertia of the vehicle).
Such a person would not understand that the Appellant had possession of the claimed invention. Employing Newton’s laws; various speed reduction strategies; determination of speed reduction on the basis of one or more factors; determination of whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in a downhill path; gradient of a downhill slope in consideration of mass; and consideration of vehicle speed influence on available braking capacity would require at tuning for multiple specific applications. 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 has been maintained.
Dependent Claims
Regarding Claims , Applicant's arguments are based only upon dependencies from claim(s) . Therefore, the arguments are not persuasive.
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 claim(s) contain(s) 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 . is determined 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:
[0088] The speed reduction may be determined based on at least a gradient of the downhill slope 514 following the road crest.
[0089] In one example, the speed reduction may be determined according to conventional methods using e.g. Newton's laws of motion to estimate the manner in which the speed of the vehicle 100 will change when driving through an upcoming section of the road. Different speed reduction strategies for the road section, such as reduced request of positive engine torque, dragging, freewheeling etc., may be evaluated where the reduction of the speed of the vehicle 100 before the vehicle reached the crest 512 is followed by an increase of the speed of the vehicle 100 in the downhill slope.
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 unspecified inputs relating to a gradient of a downhill slope following the road crest 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."
A person skilled in the art would not understand how to determine a speed reduction to be performed before reaching the road crest based on at least a gradient of a downhill slope following the road crest on the basis of Applicant’s written description. Although a person skilled in the art may arguably have familiarity with Newton’s laws, different speed reduction strategies for the road section (e.g. reduced request of positive engine torque, dragging, freewheeling); determining speed reduction based on one or more of a number of factors (e.g. the desired speed in the downhill slope; set braking speed or a set speed limit); determining whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in the downhill and engage brakes such that vehicle speed is reduced so as to maintain speed at or below braking speed; consideration of the influence of vehicle speed on the available braking capacity (e.g. by determining the available braking capacity based on a simulated vehicle speed of the vehicle along the upcoming road section), and determination of required brake force based on road gradient and on a mass of the vehicle (mass estimation algorithm based on either information from a suspension of the vehicle or on a measured or estimated moment of inertia of the vehicle).
Such a person would not understand that the Appellant had possession of the claimed invention. Employing Newton’s laws; various speed reduction strategies; determination of speed reduction on the basis of one or more factors; determination of whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in a downhill path; gradient of a downhill slope in consideration of mass; and consideration of vehicle speed influence on available braking capacity would require at tuning for multiple specific applications. 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.
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.
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 3,
The claim recites “.”
The specification does not provide adequate written description of how is determined. 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:
[0088] The speed reduction may be determined based on at least a gradient of the downhill slope 514 following the road crest.
[0089] In one example, the speed reduction may be determined according to conventional methods using e.g. Newton's laws of motion to estimate the manner in which the speed of the vehicle 100 will change when driving through an upcoming section of the road. Different speed reduction strategies for the road section, such as reduced request of positive engine torque, dragging, freewheeling etc., may be evaluated where the reduction of the speed of the vehicle 100 before the vehicle reached the crest 512 is followed by an increase of the speed of the vehicle 100 in the downhill slope.
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 unspecified inputs relating to a gradient of a downhill slope following the road crest 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."
A person skilled in the art would not understand how to on the basis of Applicant’s written description. Although a person skilled in the art may arguably have familiarity with Newton’s laws, different speed reduction strategies for the road section (e.g. reduced request of positive engine torque, dragging, freewheeling); determining speed reduction based on one or more of a number of factors (e.g. the desired speed in the downhill slope; set braking speed or a set speed limit); determining whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in the downhill and engage brakes such that vehicle speed is reduced so as to maintain speed at or below braking speed; consideration of the influence of vehicle speed on the available braking capacity (e.g. by determining the available braking capacity based on a simulated vehicle speed of the vehicle along the upcoming road section), and determination of required brake force based on road gradient and on a mass of the vehicle (mass estimation algorithm based on either information from a suspension of the vehicle or on a measured or estimated moment of inertia of the vehicle).
Such a person would not understand that the Appellant had possession of the claimed invention. Employing Newton’s laws; various speed reduction strategies; determination of speed reduction on the basis of one or more factors; determination of whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in a downhill path; gradient of a downhill slope in consideration of mass; and consideration of vehicle speed influence on available braking capacity would require at tuning for multiple specific applications. 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.
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.
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 4,
The claim recites “.”
The specification does not provide adequate written description of how is determined. 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:
[0088] The speed reduction may be determined based on at least a gradient of the downhill slope 514 following the road crest.
[0089] In one example, the speed reduction may be determined according to conventional methods using e.g. Newton's laws of motion to estimate the manner in which the speed of the vehicle 100 will change when driving through an upcoming section of the road. Different speed reduction strategies for the road section, such as reduced request of positive engine torque, dragging, freewheeling etc., may be evaluated where the reduction of the speed of the vehicle 100 before the vehicle reached the crest 512 is followed by an increase of the speed of the vehicle 100 in the downhill slope.
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 unspecified inputs relating to a gradient of a downhill slope following the road crest 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."
A person skilled in the art would not understand how to on the basis of Applicant’s written description. Although a person skilled in the art may arguably have familiarity with Newton’s laws, different speed reduction strategies for the road section (e.g. reduced request of positive engine torque, dragging, freewheeling); determining speed reduction based on one or more of a number of factors (e.g. the desired speed in the downhill slope; set braking speed or a set speed limit); determining whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in the downhill and engage brakes such that vehicle speed is reduced so as to maintain speed at or below braking speed; consideration of the influence of vehicle speed on the available braking capacity (e.g. by determining the available braking capacity based on a simulated vehicle speed of the vehicle along the upcoming road section), and determination of required brake force based on road gradient and on a mass of the vehicle (mass estimation algorithm based on either information from a suspension of the vehicle or on a measured or estimated moment of inertia of the vehicle).
Such a person would not understand that the Appellant had possession of the claimed invention. Employing Newton’s laws; various speed reduction strategies; determination of speed reduction on the basis of one or more factors; determination of whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in a downhill path; gradient of a downhill slope in consideration of mass; and consideration of vehicle speed influence on available braking capacity would require at tuning for multiple specific applications. 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.
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.
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 . is determined 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:
[0088] The speed reduction may be determined based on at least a gradient of the downhill slope 514 following the road crest.
[0089] In one example, the speed reduction may be determined according to conventional methods using e.g. Newton's laws of motion to estimate the manner in which the speed of the vehicle 100 will change when driving through an upcoming section of the road. Different speed reduction strategies for the road section, such as reduced request of positive engine torque, dragging, freewheeling etc., may be evaluated where the reduction of the speed of the vehicle 100 before the vehicle reached the crest 512 is followed by an increase of the speed of the vehicle 100 in the downhill slope.
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 unspecified inputs relating to a gradient of a downhill slope following the road crest 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."
A person skilled in the art would not understand how to determine a speed reduction to be performed before reaching the road crest based on at least a gradient of a downhill slope following the road crest on the basis of Applicant’s written description. Although a person skilled in the art may arguably have familiarity with Newton’s laws, different speed reduction strategies for the road section (e.g. reduced request of positive engine torque, dragging, freewheeling); determining speed reduction based on one or more of a number of factors (e.g. the desired speed in the downhill slope; set braking speed or a set speed limit); determining whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in the downhill and engage brakes such that vehicle speed is reduced so as to maintain speed at or below braking speed; consideration of the influence of vehicle speed on the available braking capacity (e.g. by determining the available braking capacity based on a simulated vehicle speed of the vehicle along the upcoming road section), and determination of required brake force based on road gradient and on a mass of the vehicle (mass estimation algorithm based on either information from a suspension of the vehicle or on a measured or estimated moment of inertia of the vehicle).
Such a person would not understand that the Appellant had possession of the claimed invention. Employing Newton’s laws; various speed reduction strategies; determination of speed reduction on the basis of one or more factors; determination of whether the vehicle is expected to accelerate such that braking speed or speed limit is reached in a downhill path; gradient of a downhill slope in consideration of mass; and consideration of vehicle speed influence on available braking capacity would require at tuning for multiple specific applications. 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.
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.
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 are rejected for depending therefrom.
Special 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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