DETAILED ACTION
The following is a FINAL Office action (“Action”) based on the Response filed March 24, 2026 (“March Resp.”), which was filed in reply to the non-final Office action mailed Nov. 28, 2025 (“non-final Office action”), which was the first Office action based on the filing of this reissue application on March 22, 2024 from U.S. Patent No. 11,280,704 (“the ‘704 patent”), which issued from U.S. patent application no. 16/538,048 (“the ‘048 application”).
Claims 1-35 are pending, with claims 1-20 being original patent claims, claims 21-34 being new as of March 22, 2024, and claim 35 is new as of March 24, 2026.
Prior Art Cited and Applied
The following is the prior art cited and applied in this Action below.
U.S. Patent No. 9,229,453 B1, to Jin-Woo Lee (“Lee”).
U.S. Patent No. 6,259,980 B1, to Peck et al. (“Peck”).
U.S. Patent Application Publication No. 2016/0161267, to Masahiro Harada (“Harada”).
Notice of Pre-AIA or AIA Status
The ‘704 patent has a filing date of August 12, 2019, and is a continuation of U.S. patent no. 10,379,007 (“the ‘007 patent”) (from application no. 15/192,609) filed on June 24, 20161, which is on or after March 16, 2013, thus, this application will be examined using the first inventor to file provisions of the AIA . All references to sections 102 and 103 of U.S.C. title 35 in this Order are AIA unless otherwise stated.
This reissue application was filed on or after September 16, 2012, therefore, all reference to 35 U.S.C. 251 and 37 CFR 1.172, 1.75, and 3.73 are to the current provisions enacted under the Leahy-Smith American Invents Act (“AIA ”). See Federal Register, Vol. 77, No. 157, pg. 48820, August 16, 2012.
Response to Arguments
Applicant makes several arguments in response to the non-final Office action. They are:
The consent has been updated with a proper s-signature. March Resp. 8.
The 3.73(c) statement has been corrected. March Resp. 8.
The reissue declaration has been updated with two new declarations from two inventors with the appropriate boxes checked, thus, the corresponding objection and 35 U.S.C. § 251 rejection over the defective declaration should be withdrawn. March Resp. 8-9.
The section 251 recapture rejection should be withdrawn because while new claim 28 is broader in scope than originally patented claim 15 (claim 16 during examination of the application) in that the surrender generating limitation (“SGL”) has been amended, the SGL is still generally present in claim 28 such that it is less restrictive than the claims before surrender in the application that issued as the ‘704 patent. March Resp. 9-13.
The prior art rejections over Lee and Lee in view of Peck should be withdrawn because Lee does not teach the vehicle’s navigation is based on a “defined route,” as recited in the claims. March Resp. 14-22.
For the following reasons, arguments 2-5 are not persuasive and argument 1 is acknowledged.
First Argument
While the consent was not necessarily objected to in the non-final Office action, the new consent filed March 24, 2026 is accepted.
Second Argument
The 3.73(c) statement is still objected to for the reasons explained in the “Objections – Statement Under 37 CFR 3.73(c)” section below.
Third Argument
The objection and section 251 rejection of the reissue declaration are maintained for the reasons set forth below in the “Objections – Reissue Declaration” section below.
Fourth Argument
As noted above, Applicant argues that the SGL is still generally present in claim 28 such that it is less restrictive than the claims before surrender in the application that issued as the ‘704 patent, thus, there is no recapture. See MPEP § 1412.02, subsection II.C, “Situation 2.” The SGL from claim 15 recites, “the plurality of actuators are configured to allow a driver of the vehicle to sit in a driver's seat of the vehicle and operate the steering mechanism, the throttle, and the brake while the plurality of actuators are installed.” Claim 28 (considered to be the broadened version of claim 15) is directed to a “vehicle” that comprises “a steering mechanism, a throttle, and a brake being configured to respectively provide steering, power, and braking of the vehicle in response to user input from a driver located in the vehicle,” and the corresponding, yet broadened, SGL recites, “the at least one actuator is configured to allow the user input from the driver seated in the vehicle to provide the at least one of the steering, the power, and the braking of the vehicle.”
There is no disagreement that a “[i]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original [pre-surrender] claim, the recapture rule does not bar reissue,” as explained in the MPEP and in In re Youman, 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). However, as section 1412.02, subsection II.C, “Situation 2,” further states, “[i]f the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art.” In re Mostafazadeh, 643 F.3d 1353, 1361, 98 USPQ2d 1639, 1644 (Fed. Cir. 2011).
In this case, as explained in the rejections below, both claims 15 and 28 are rejected over Lee and Lee in view of Peck. As a result, the SGL in either of these claims is “well known in the prior art,” and as such, there is still impermissible recapture.
Fifth Argument
Applicant’s arguments with respect to the prior art rejections are understood to hinge on the interpretation of “defined route” as claimed and described in the ‘704 patent. See March Resp. 14-22. Applicant argues that “[i]nstead of teaching a defined route, Lee describes a ‘path generation process’ that controls the vehicle while the vehicle is traveling.” March Resp. 15, 17, 18, 20, 21. Specifically, that the “path generation process” in Lee is for things like a lane change, which Applicant argues is different than a “defined route.” See id. This argument is not persuasive for the following reasons.
Initially, Applicant does not necessarily provide a proposed definition of “defined route” nor does Applicant point to any part of the ‘704 patent to aid in interpreting a “defined route.” Reissue claims are construed under a broadest reasonable interpretation standard. See MPEP § 1440 (citing 37 C.F.R. § 1.176(a), “A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications.”).
While features from the specification are not read into the claims under a broadest reasonable interpretation (unless a term is particularly defined), the specification may still provide guidance. See MPEP § 2111.01. However, as noted above, there is no definition of “defined route” in the ‘704 patent, nor are the descriptions of “defined route” specific enough to exclude changes in travel, such as are disclosed in Lee. At best, column 7, lines 49-57, of the ‘704 patent states, “defined routes include a sequence of positions for which the robot must reach (i.e., waypoints).” Thus, a “defined route” can be thought of as a path with “waypoints.”
Lee teaches generating a “collision avoidance path 82” that includes a “cruise path 140” and a “return path” while the vehicle is traveling. In other words, the “collision avoidance path 82” generated in Lee has a starting point, a “cruise path,” and a “return path,” all of which are specific “waypoints” defining the path. As a result, the “collision avoidance path 82” is also a “defined route” consistent with the claim term as described in the ‘704 patent.
For these reasons, Applicant’s arguments are not persuasive.
Claim Amendment Formatting
Original patent claims 1-20 do not have status identifiers. It is strongly encouraged that even unamended original patent claims have status identifiers to avoid any confusion of the current status of the claims. See MPEP § 2250, subsection IV, and 37 C.F.R. §§1.530(d)(2), 1.121(c).
Consent - Comment
The consent filed March 24, 2026 is accepted.
Objections – Statement Under 37 CFR 3.73(c)
The 3.73(c) statement filed on March 24, 2026 is objected to because at the top of the form the listed “Application No./Patent No.” field is listed as “18/614,190”, which is this reissue application and the date of filing for this reissue application. However, this is incorrect because this reissue application is from underlying patent no. 11,280,704. A new statement under 37 CFR 3.73(c) is required to be executed and filed with this field filled in as “11,280,704” with an issue date of “March 22, 2022”.
Objections – Reissue Declaration
The reissue declarations are objected to because (1) the declarations filed March 12, 2026 only contain signatures of two inventors, despite all being listed, and (2) the declarations filed March 12, 2026 are different (not just the signatures) from the reissue declarations filed March 22, 2024.
Initially, as an alternative to having all inventors sign the reissue declaration(s), the assignee of 100% of the entire right may also sign the declaration because the application that issued as the ‘704 patent was filed under 37 C.F.R. § 1.46. See MPEP § 1410.01, subsection I. Please see MPEP § 1414.01 for the proper procedure for submitting a reissue declaration by the assignee.
If the reissue declaration is intended to be by the inventors, then each inventor must sign the same declaration, even if multiple copies are needed to account for all signatures. The following are acceptable remedies for filing a reissue declaration by inventors:
Similar to the declarations filed on March 12, 2026, as many copies as needed should be filed such that all inventor signatures are executed between the copies. If this option is elected, then each declaration filed should be an exact copy (except the signatures) as the others, and all inventor signatures must be accounted for between all filed copies and signed within the same general time period.
The preferred remedy, however, is to file one form PTO/AIA /05 with the first named inventor and signature, then check the box on the bottom of page 2 indicating additional supplemental sheets are attached, and then attach the corresponding number of supplemental PTO/AIA /10 forms with the remaining inventors and their signatures.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Reissue Declaration
Claims 1-34 are rejected as being based upon a defective reissue declaration under 35 U.S.C. § 251. See 37 C.F.R. § 1.175. The nature of the defects in the declaration is discussed above in this Action.
Recapture
Claims 28-34 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue filing is based.2
The reissue application contains claims that are broader than the issued patent claims. The record of the ‘048 application for the ‘704 patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. § 251, and the broader scope of claimed subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Citing both In re Clement3 and North American Container4, section 1412.02 of the MPEP establishes a three-step test for recapture as follows:
Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
Determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
Determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step (1)
New independent claims 21 and 28 are directed to a “vehicle” as is originally patented independent claim 15, and originally patented independent claims 1 and 8 are directed to a “system” and “method,” respectively. As a result, for the recapture analysis, only original independent claim 15 is deemed relevant when compared to new claims 21 and 28. This is consistent with the error statement in the reissue declaration filed March 22, 2024.
New independent claims 21 and 28 are broader than original independent claim 15 of the ‘704 patent because there are limitations not present in new independent claims 21 and 28 of the same scope as in claim 15, thus, resulting in a broadening of the claim scope. “A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects.” See MPEP § 1412.03, subsection I.
The one relevant feature of original independent claim 15 that has been removed from claim 21 is that the vehicle is no longer required to be “autonomous”.
The two relevant features of original independent claim 15 that have been removed from claim 28 are: (1) the vehicle is no longer required to be “autonomous”; and (2) “wherein the plurality of actuators are configured to allow a driver of the vehicle to sit in a driver's seat of the vehicle and operate the steering mechanism, the throttle, and the brake while the plurality of actuators are installed.”
As a result of removing the above features, independent claims 21 and 28 are broader in scope than previously patented claim 15, even if also reciting additional, narrower limitations. Also, since independent claims 21 and 28 are broader in scope than the previously patented claims, so too are all dependent claims 22-27 and 29-34. See M.P.E.P. § 1412.03. As a result, claims 21-39 are all considered broadened.
Step (2)
Determining whether subject matter was previously surrendered during prosecution of the original patent requires two sub-steps per section 1412.02, subsection II.B of the MPEP. In the first sub-step, “[i]f an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant.” In the second sub-step, “[t]he examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.” See id.
For sub-step 1, the removed “autonomous” limitation noted above with respect to claim 21 was part of the first claims examined on the merits after a restriction requirement in the ‘048 application. Thus, removal of “autonomous” from both claims 21 and 28 cannot serve as a basis for surrendered subject matter. As a result, claim 21 is not subject to a 251 rejection for impermissible recapture. However, claim 28 still is missing the other driver’s seat limitation noted above.
The limitation “wherein the plurality of actuators are configured to allow a driver of the vehicle to sit in a driver's seat of the vehicle and operate the steering mechanism, the throttle, and the brake while the plurality of actuators are installed” was added by amendment to claim 16 (now claim 15) during prosecution of the ‘048 application and argued to distinguish over the cited and applied prior art. See ‘048 Application, Response filed July 16, 2021, at 6-7. A Notice of Allowance was mailed on Aug. 2, 2021 based on applicant’s claim amendments and argument, and was the next Office action during prosecution of the ‘048 application. The Notice of Allowance, on page 2, explicitly noted the driver’s seat limitation listed above of claim 15 as distinguishing over the prior art. As a result, the deleted driver’s seat limitation is a surrender generating limitation. See M.P.E.P. § 1412.02.
For sub-step 2, as explained above, the exact wording of the driver’s seat limitation noted above from claim 15 is now deleted from claim 28, even if a new driver’s seat limitation was added but of a broader scope as discussed in step 3 below. Removal of this limitation from claim 28 is deletion of “limitations relied upon by applicant in the original application to make the claims allowable over the art” and this deleted limitation is surrendered subject matter. See M.P.E.P. § 1412.02.
Step (3)
A rejection for impermissible recapture may be avoided if “the claims [have been] materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” See M.P.E.P. § 1412.02, subsection II.C (citing In re Mostafazadeh, 643 F.3d 1353, 1361, 98 U.S.P.Q. 2d 1639, 1644 (Fed. Cir. 2011)).
Claim 28 has been amended to recite a driver’s seat limitation but of a broader scope. Specifically, claim 28 now recites, “at least one actuator being configured to autonomously control at least one of the steering, the power, and the braking of the vehicle … the at least one actuator is configured to allow the user input from the driver seated in the vehicle to provide the at least one of the steering, the power, and the braking of the vehicle.” Comparing this limitation to the driver’s seat limitation of claim 15 numerous differences can be seen, including but not limited to, claim 28 does not require the “plurality of actuators” or that the plurality of actuators be configured to allow a driver to sit in the driver’s seat. Instead, claim 28 now only requires the one actuator to be configured to allow a driver of the vehicle to sit in a driver's seat. As a result, the amendment of claim 28, while similar to the surrender generating limitation of claim 15, is broader in scope.
As noted above in the “Response to Arguments” section, recapture may be avoided despite the surrender generating limitation in claim 28 being broader than the original surrender generating limitation of claim 15 amended into the claims during examination of the ‘704 patent so long as the new surrender generating limitation still materially narrows the original claim prior to surrender. See MPEP § 1412.02, subsection II.C, “Situation 2”. However, impermissible recapture may still exist if the broader surrender generating limitation is “well known in the prior art.” See id. In this case, because the original surrender generating limitation and broader surrender generating limitation are “well known in the prior art” evidenced by the rejections of claims 15 and 28 over Lee and Lee in view of Peck below, claim 28 still attempts to impermissibly recapture surrendered subject matter, as do each of claims 29-34, which depend from claim 28.
For at least the reasons above, claims 28-34 attempt to impermissibly recapture surrendered subject matter and are rejected under section 251.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 8-13 and 28-35 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Lee5.
Claim 8
Claim 8 recites and Lee teaches:
A method of autonomously navigating a vehicle along a defined route (Lee 3:13-42, 15:47-16:4, Fig. 1, vehicle 10 has a system with internal components 12, 14, 16, 18, 20, 22, 24, 26, 28 and can be autonomously navigated along a desired path, which is determined/defined route as shown in Fig. 7), the method comprising:
creating the defined route using a human machine interface during a route-training mode, wherein the human machine interface is configured to receive user input, and wherein the defined route is based on movement of the vehicle during the route-training mode and the user input (Lee 3:48-60, 15:47-16:4, Fig. 7, step 126 is a path generation step in which a route is defined based on human machine input at box 34 in Fig. 2, such as a driver’s request for a lane change via a turn signal switch/controller (i.e., “a human machine interface”), where the path generation is determined based on movement and the user request (“input”) prior to making the lane change, i.e., “the route-training mode”);
receiving information from one or more sensors disposed around the vehicle (Lee 3:50-53, “The desired path prediction processor 32 also receives signals from a lane marking detection processor 36 provided by the camera 14 and object detection sensing at box 36 provided by the sensor 22.”);
triggering one or more movement plans based on the information (Lee 3:58-60, 15:47-16:4, “The desired path generation processor 32 generates a smooth path [based on sensor information] for the vehicle 10 when turning that does not have abrupt changes that would otherwise provide passenger discomfort.”); and
autonomously controlling a steering mechanism, a throttle, and a brake of the vehicle based on the defined route and the one or more movement plans (Lee 3:38-42, “Based on the desired path of the vehicle 10 and whether the vehicle 10 is being semi-autonomously or autonomously driven, the controller 12 may provide output signals to a vehicle brake system 24, a vehicle throttle 26 and/or a vehicle steering system 28.”).
Claim 28
Claim 28 recites and Lee teaches:
A vehicle (Lee 3:13-42, Fig. 1, vehicle 10) comprising:
a steering mechanism (Lee 3:13-42, Fig. 1, steering system 28), a throttle (Lee 3:13-42, Fig. 1, throttle 26), and a brake (Lee 3:13-42, Fig. 1, brake system 24) being configured to respectively provide steering, power, and braking of the vehicle in response to user input from a driver located in the vehicle (Lee 3:13-42, the steering system 28, throttle 26, and brake system 24 provides steering, power, and braking to the vehicle in response to a user driving (“input”) the vehicle); and
at least one actuator being configured to autonomously control at least one of the steering, the throttle, and the braking based on a defined route and one or more movement plans, the defined route created using at least one of a human machine interface and a machine to machine interface (Lee 3:38-42, 48-60, 15:47-16:4, Fig. 7, step 126 is a path generation step in which a route is defined based on both determination of avoiding an object in the road and human machine input at box 34 in Fig. 2, such as a driver’s request for a lane change via a turn signal switch/controller (i.e., “a human machine interface”), where the path generation is determined based on movement and the user request (“input”) prior to making the lane change and based on the path the vehicle is autonomously driven through controlled output signals to the brake, throttle, and steering systems),
wherein the at least one actuator is configured to allow the user input from the driver seated in the vehicle to provide the at least one of the steering, the power, and the braking of the vehicle (Lee 4:10-13, 6:10-15, 15:43-46, since a driver may be in the vehicle offering input while driving means the driver can sit in the driver’s seat while the brake, throttle, and steering systems are installed),
wherein the vehicle is operably connected to one or more sensors disposed around the vehicle (Lee 3:50-53, “The desired path prediction processor 32 also receives signals from a lane marking detection processor 36 provided by the camera 14 and object detection sensing at box 36 provided by the sensor 22.”), and
wherein the one or more movement plans are triggered based on information received at the vehicle from the one or more sensors (Lee 3:58-60, 15:47-16:4, “The desired path generation processor 32 generates a smooth path [based on sensor information] for the vehicle 10 when turning that does not have abrupt changes that would otherwise provide passenger discomfort,” and/or also updates the path to avoid collision with an object in the road).
Claims 9 and 29
Claims 9 and 29 further recite and Lee further teaches, “the one or more sensors comprises at least one of an audio sensor, a visual sensor, or a haptic sensor.” Lee 3:26-42, yaw-rate is a form of haptic sensing and a camera is a visual sensor.
Claims 10 and 30
Claims 10 and 30 further recite and Lee further teaches, “the one or more sensors comprises a positioning system.” Lee 3:26-35, 10:40-54, at least the steering angle, lateral, and longitudinal sensors are a positioning system, additionally, a GPS receiver is a sensor that receives signals representing a position.
Claims 11 and 31
Claims 11 and 31 further recite and Lee further teaches, “the one or more movement plans comprises passing a detected obstacle along the defined route.” Lee 10:40-54, 15:35-38, where a first evasive maneuver is braking, thus, stopping, to avoid an object/obstacle.
Claims 12 and 32
Claims 12 and 32 further recite and Lee further teaches, “the one or more movement plans comprises stopping at a stop point.” Lee 15:35-38, where a first evasive maneuver is braking, thus, stopping, to avoid an object/obstacle.
Claims 13 and 33
Claims 13 and 33 further recite and Lee further teaches, “the defined route comprises a sequence of positions for the vehicle to reach.” Lee 14:56-63, determining the deviation is done at different “distances” or sequences of positions along the path.
Claim 35
Claim 35 recites and Lee further teaches, “vehicle of claim 28,wherein the human-to-machine interface is configured to receive the user input during a route-training mode6 and is configured to create the defined route based on movement of the vehicle and the user input during the route-training mode.” Lee 3:38-42, 48-60, 15:47-16:4, Fig. 7, step 126 is a path generation step in which a route is “trained”, or updated from its normal route, based on both determination of avoiding an object in the road and human machine input at box 34 in Fig. 2, such as a driver’s request for a lane change via a turn signal switch/controller (i.e., “a human machine interface”), where the path generation is determined based on movement and the user request (“input”) prior to making the lane change and based on the path the vehicle is autonomously driven through controlled output signals to the brake, throttle, and steering systems.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
The following applies to all rejections below, absent any discussion elaborating on any of the elements. Regarding element 1, the scope and contents of the prior art are evident based on the citations and explanations provided in the rejections below. See M.P.E.P. § 2141(II)(A). Regarding element 2, the differences between the prior art and claims are noted in the rejections below. See M.P.E.P. § 2141(II)(B). Regarding element 3, the level of ordinary skill is expressly or implicitly found in the prior art of record as applied in the rejections below, where the teachings of the art show a presumed knowledge of the relevant art at the relevant time. See M.P.E.P. §§ 2141(II)(C), 2141.03(III). Regarding element 4, to the extent that there is evidence available as to secondary considerations, they will be addressed below, otherwise, it is assumed there are no secondary considerations to take into account.
Claims 1-6 and 15-26 rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Peck, both of which are in the same field of autonomous driving vehicles as the claimed invention.
Claim 1
Claim 1 recites and Lee teaches:
A system for controlling a vehicle by autonomously navigating the vehicle along a defined route (Lee 3:13-42, Fig. 1, vehicle 10 has a system with internal components 12, 14, 16, 18, 20, 22, 24, 26, 28 and can be autonomously navigated along a desired path), the system comprising:
a vehicle (Lee 3:13-42, Fig. 1, vehicle 10) having:
[a brake system] configured to press and release a brake pedal of the vehicle based on the defined route and one or more movement plans (Lee 3:13-42, Fig. 1, brake system 24 is used in conjunction with other systems to navigate the route), the defined route created using a human machine interface (Lee 3:48-50, Fig. 2, box 34 is a user interface that can take human input for a desired route);
[a throttle system] configured to press and release a gas pedal of the vehicle based on the defined route and the one or more movement plans (Lee 3:13-42, Fig. 1, throttle 26 is used in conjunction with other systems to navigate the route); and
a steering [system] configured to control a steering wheel of the vehicle based on the defined route and the one or more movement plans (Lee 3:13-42, Fig. 1, steering system 28 is used in conjunction with other systems to navigate the route), [a steering system] configured to attach to the steering wheel …; and
a plurality of sensors disposed around the vehicle (Lee 3:13-42, 4:10-13, there are sensors on the vehicle 10),
wherein the brake [system], the throttle [system], and the steering [system] are configured to allow a driver of the vehicle to sit in a driver's seat of the vehicle and operate the brake pedal, the gas pedal, and the steering wheel while the brake [system], the throttle [system], and the steering [system] are installed (Lee 4:10-13, 6:10-15, 15:43-46, since a driver may be in the vehicle offering input while driving means the driver can sit in the driver’s seat while the brake, throttle, and steering systems are installed),
wherein the vehicle is operably connected to the plurality of sensors, and wherein the one or more movement plans are triggered based on information received at the vehicle from at least one of the plurality of sensors (Lee 3:13-42, 4:10-13, 10:19-28, 12:48-55).
Lee does not teach the additionally recited limitations. Peck remedies this and teaches a braking system includes “a brake actuator controlled by a brake motor,” (Peck 3:51-61, 7:12-13, 7:49-8:17, Figs. 1-3, there is a braking control motor 96 and an actuator (motor) that exerts a force on the brake), the throttle system includes “a throttle actuator controlled by a throttle motor,” (Peck 6:46-59, where the “throttle control mechanism 76” functions as a motor that “drivingly connects the throttle control actuator 74 and the accelerator pedal 66,” which is similar to the “braking controller 92 [that] includes a braking control motor 96,” (see id. at 7:9-10), see also id. at Fig. 5, throttle control actuator 74, throttle control mechanism 76), the steering system includes “a steering actuator [that] compris[es] a steering motor … and a reaction stand configured to support the steering motor,” (Peck 3:32-42, 5:40-61, Figs. 1-3, there is a steering column 142 (i.e., “reaction stand”) that supports steering wheel 26 and can be controlled by steering control motor and linear actuator).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the brake, steering, and throttle actuators and motors of Peck with the autonomous driving vehicle system of Lee to more specifically and in detail implement an autonomous driving vehicle that is “low cost, safe, and reliable.” See Peck 4:12-14.
Claim 15
Claim 15 recites and Lee teaches:
An autonomous vehicle configured to navigate a defined route (Lee 3:13-42, Fig. 1, vehicle 10 has a system with internal components 12, 14, 16, 18, 20, 22, 24, 26, 28 and can be autonomously navigated along a desired path), the autonomous vehicle comprising:
a steering mechanism (Lee 3:13-42, Fig. 1, steering system 28); a throttle (Lee 3:13-42, Fig. 1, throttle 26); and a brake (Lee 3:13-42, Fig. 1, brake system 24); and
a plurality of [systems] configured to autonomously control the steering mechanism, the throttle, and the brake based on the defined route and one or more movement plans (Lee 3:38-42, “Based on the desired path of the vehicle 10 and whether the vehicle 10 is being semi-autonomously or autonomously driven, the controller 12 may provide output signals to a vehicle brake system 24, a vehicle throttle 26 and/or a vehicle steering system 28.”), the defined route created using a human machine interface (Lee 3:48-50, Fig. 2, box 34 is a user interface that can take human input for a desired route),
wherein the plurality of [systems] are configured to allow a driver of the vehicle to sit in a driver's seat of the vehicle and operate the steering mechanism, the throttle, and the brake while the plurality of actuators are installed (Lee 4:10-13, 6:10-15, 15:43-46, since a driver may be in the vehicle offering input while driving means the driver can sit in the driver’s seat while the brake, throttle, and steering systems are installed),
wherein the autonomous vehicle is operably connected to one or more sensors disposed around the autonomous vehicle (Lee 3:50-53, “The desired path prediction processor 32 also receives signals from a lane marking detection processor 36 provided by the camera 14 and object detection sensing at box 36 provided by the sensor 22.”), and
wherein the one or more movement plans are triggered based on information received at the autonomous vehicle from the one or more sensors (Lee 3:58-60, 15:47-16:4, “The desired path generation processor 32 generates a smooth path [based on sensor information] for the vehicle 10 when turning that does not have abrupt changes that would otherwise provide passenger discomfort.”).
Lee does not teach the “plurality of [systems]” are “a plurality of actuators,” as recited in the claim. Peck remedies this and teaches “a plurality of actuators configured to autonomously control the steering mechanism, the throttle, and the brake.” Peck 3:32-42, 5:40-61, Figs. 1-3, there is a steering column 142 (i.e., “reaction stand”) that supports steering wheel 26 and can be controlled by steering control motor and linear actuator, Peck 6:46-59, where the “throttle control mechanism 76” functions as a motor that “drivingly connects the throttle control actuator 74 and the accelerator pedal 66,” which is similar to the “braking controller 92 [that] includes a braking control motor 96,” (see id. at 7:9-10), see also id. at Fig. 5, throttle control actuator 74, throttle control mechanism 76, and Peck 3:51-61, 7:12-13, 7:49-8:17, Figs. 1-3, there is a braking control motor 96 and an actuator (motor) that exerts a force on the brake.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the brake, steering, and throttle actuators and motors of Peck with the autonomous driving vehicle system of Lee to more specifically and in detail implement an autonomous driving vehicle that is “low cost, safe, and reliable.” See Peck 4:12-14.
Claim 21
Claim 21 recites and Lee teaches:
A vehicle (Lee 3:13-42, Fig. 1, vehicle 10) comprising:
a steering mechanism (Lee 3:13-42, Fig. 1, steering system 28);
a throttle (Lee 3:13-42, Fig. 1, throttle 26); and
a brake (Lee 3:13-42, Fig. 1, brake system 24),
a plurality of [systems] configured to autonomously control at least one of the steering mechanism, the throttle, and the brake based on the defined route and one or more movement plans (Lee 3:38-42, “Based on the desired path of the vehicle 10 and whether the vehicle 10 is being semi-autonomously or autonomously driven, the controller 12 may provide output signals to a vehicle brake system 24, a vehicle throttle 26 and/or a vehicle steering system 28.”), the defined route created using a human machine interface (Lee 3:48-50, Fig. 2, box 34 is a user interface that can take human input for a desired route),
wherein the plurality of [systems] are configured to allow a driver of the vehicle to sit in a driver's seat of the vehicle and operate at least one of the steering mechanism, the throttle, and the brake while the plurality of actuators are installed (Lee 4:10-13, 6:10-15, 15:43-46, since a driver may be in the vehicle offering input while driving means the driver can sit in the driver’s seat while the brake, throttle, and steering systems are installed),
wherein the vehicle is operably connected to one or more sensors disposed around the vehicle (Lee 3:50-53, “The desired path prediction processor 32 also receives signals from a lane marking detection processor 36 provided by the camera 14 and object detection sensing at box 36 provided by the sensor 22.”), and
wherein the one or more movement plans are triggered based on information received at the vehicle from the one or more sensors (Lee 3:58-60, 15:47-16:4, “The desired path generation processor 32 generates a smooth path [based on sensor information] for the vehicle 10 when turning that does not have abrupt changes that would otherwise provide passenger discomfort.”).
Lee does not teach the “plurality of [systems]” are “a plurality of actuators,” as recited in the claim. Peck remedies this and teaches “a plurality of actuators configured to autonomously control the steering mechanism, the throttle, and the brake.” Peck 3:32-42, 5:40-61, Figs. 1-3, there is a steering column 142 (i.e., “reaction stand”) that supports steering wheel 26 and can be controlled by steering control motor and linear actuator, Peck 6:46-59, where the “throttle control mechanism 76” functions as a motor that “drivingly connects the throttle control actuator 74 and the accelerator pedal 66,” which is similar to the “braking controller 92 [that] includes a braking control motor 96,” (see id. at 7:9-10), see also id. at Fig. 5, throttle control actuator 74, throttle control mechanism 76, and Peck 3:51-61, 7:12-13, 7:49-8:17, Figs. 1-3, there is a braking control motor 96 and an actuator (motor) that exerts a force on the brake.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the brake, steering, and throttle actuators and motors of Peck with the autonomous driving vehicle system of Lee to more specifically and in detail implement an autonomous driving vehicle that is “low cost, safe, and reliable.” See Peck 4:12-14.
Claims 2, 16, and 22
Claims 2, 16, and 22 further recite and Lee further teaches, the plurality of or one or more “sensors comprises at least one of an audio sensor, a visual sensor, or a haptic sensor.” Lee 3:26-42, yaw-rate is a form of haptic sensing and a camera is a visual sensor.
Claims 3, 17, and 23
Claims 3, 17, and 23 further recite and Lee further teaches, the plurality of or one or more “sensors comprises a positioning system.” Lee 3:26-35, 10:40-54, at least the steering angle, lateral, and longitudinal sensors are a positioning system, additionally, a GPS receiver is a sensor that receives signals representing a position.
Claims 4, 18, and 24
Claims 4, 18, and 24 further recite and Lee further teaches, “the one or more movement plans comprises passing a detected obstacle along the defined route.” Lee 10:40-54, 15:35-38, where a first evasive maneuver is braking, thus, stopping, to avoid an object/obstacle.
Claims 5, 19, and 25
Claims 5, 19, and 25 further recite and Lee further teaches, “the one or more movement plans comprises stopping at a stop point.” Lee 15:35-38, where a first evasive maneuver is braking, thus, stopping, to avoid an object/obstacle.
Claims 6, 20, and 26
Claims 6, 20, and 26 further recite and Lee further teaches, “the defined route comprises a sequence of positions for the vehicle to reach.” Lee 14:56-63, determining the deviation is done at different “distances” or sequences of positions along the path.
Claims 7 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Peck, and in further view of Harada, all of which are in the same field of autonomous driving vehicles as the claimed invention.
Claims 7 and 27
Claims 7 and 27 further recite, “the defined route comprises a closed route.” Neither Lee nor Peck teach a “closed route.” Even so, Harada teaches that an autonomous vehicle determined path may also include a determination that the path is closed. Harada, ¶56, “a travel route can be altered or adjusted if information received indicates that a road or a portion of the road on the determined travel route is closed due to an accident, flooding or other reason.” It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Lee and Peck to make a determination of a “closed route,” as in Harada, so that the “route can be altered or adjusted” and, thus, allow the vehicle to reach its destination. See id.
Claims 14 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Harada, both of which are in the same field of autonomous driving vehicles as the claimed invention.
Claims 14 and 34
Claims 14 and 34 further recite, “the defined route comprises a closed route.” Lee does not teach a “closed route.” Even so, Harada teaches that an autonomous vehicle determined path may also include a determination that the path is closed. Harada, ¶56, “a travel route can be altered or adjusted if information received indicates that a road or a portion of the road on the determined travel route is closed due to an accident, flooding or other reason.” It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the autonomous vehicle system of Lee to make a determination of a “closed route,” as in Harada, so that the “route can be altered or adjusted” and, thus, allow the vehicle to reach its destination. See id.
Amendments in Reissue Applications
Amendments made during examination of a reissue application are different than amendments made during examination of a standard utility application. See 37 CFR § 1.173; see also MPEP § 1453.
A few notable, but by no means the only, differences are:
Throughout examination of a reissue application, amendments are always with respect to the original patent regardless of any amendments that have already been filed. See 37 CFR § 1.173(g).
Deleted limitations must be shown in single brackets while newly added limitations and the entirety of newly added claims are underlined, including number and status identifier. See 37 CFR § 1.173(d).
Changes to the specification must mention where in the issued patent (i.e., column and lines numbers) the changes are to be made and the entirety of an amended paragraph must be presented, unless canceling the paragraph. See 37 CFR § 1.173(b)(1)(i); see also MPEP § 1453, subsection V.A., Example (1).
Status identifiers, after the first amendment, must indicate how many times an original patent claim has been amended during examination of the reissue application (e.g., “Twice Amended”, etc.). See 37 CFR § 1.173(b)(2).
When claims are amended, “there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.” 37 CFR § 1.173(c).
Applicant Obligations
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 Patent No. 11,280,704 is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings before the Patent Trial and Appeal Board, and litigation.
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.
Conclusion
Applicant's amendment necessitated the new grounds 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 JOSHUA KADING whose telephone number is (571)270-3413. The examiner can normally be reached Monday-Friday, 8:00 AM to 5:00 PM Eastern Time.
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/JOSHUA KADING/ Reexamination Specialist, Art Unit 3993
Conferees:
/Laura Davison/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993
1 The ‘007 patent claims a benefit to U.S. provisional application no. 62/184,104 filed June 24, 2015. The provisional application shares only one common image with the ‘007 patent and the ‘704 patent, thus, whether there is proper 35 U.S.C. § 112(a) support is unclear, meaning the effective filing date of the ‘704 patent is unclear. However, whether the effective filing date is June 24, 2015 or June 24, 2016 this application is still subject to AIA provisions. Additionally, the effective filing date is not at issue with respect to the rejections below because all the prior art qualifies as of a date earlier than June 24, 2015.
2 See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
3 131 F.3d 1464, 45 U.S.P.Q. 2d 1161 (Fed. Cir. 1997).
4 415 F.3d 1335, 75 U.S.P.Q. 2d 1545 (Fed. Cir. 2005).
5 Lee was published on Jan. 5, 2016 and was filed on Aug. 29, 2014. The ‘704 patent has an effective filing date of either June 24, 2016 or June 24, 2015 depending on whether the U.S. provisional application (no. 62/184,104), to which the ‘704 patent claims a benefit, fully supports the ‘704 patent under 35 U.S.C. § 112(a). An analysis of the provisional application will not be carried out in this Action, however, because regardless of the effective filing date, the ‘704 patent qualifies as prior art at least under section 102(a)(2) as of the Aug. 29, 2014 filing date.
6 The specification of the ‘704 patent describes, in some embodiments, that “a route-training mode” is when “the robot is commanded to start route-training and begins generating new waypoints based on one or more configurable events.” Id. 7:59-61. A variety of events are subsequently described but generally are “some other configured event for which a concrete trigger may be implemented according to a pre-defined software interface.” Id. 7:66-8:1.
Prosecution Insights