DETAILED ACTION
This is a response to Application # 18/937,468 filed on November 5, 2024 in which claims 1-5 were presented for examination.
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
Claims 1-5 are pending, which are rejected under 35 U.S.C. §§ 112(b) and 103.
Information Disclosure Statement
The information disclosure statement filed November 5, 2024 complies with the provisions of 37 C.F.R. § 1.97, 1.98 and MPEP § 609. It has been placed in the application file and the information referred to therein has been considered as to the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Title of the Invention
37 C.F.R. § 1.72(a) states: “The title of the invention may not exceed 500 characters in length and must be as short and specific as possible” (emphasis added). Thus, the title of the invention is not sufficiently descriptive.
A new title is required that is more clearly and more specifically indicative of the invention to which the claims are directed.
Claim Interpretation
Claim 5 recites a method claim including the limitation “prohibiting use of a predetermined low gear stage on a low-speed side in the automatic gear change device when the automobile travels by autonomous driving using a predetermined travel mode.” (Emphasis added).
The broadest reasonable interpretation of this limitation does not require the prohibiting the use of a predetermined low gear stage to be performed because it does not require the automobile to travel by autonomous driving using a predetermined travel mode. See Ex parte Schulhauser, 2013-007847 (PTAB 2016) (precedential) where the board held that when method steps are to be carried out only upon the occurrence of a condition precedent, the broadest reasonable interpretation holds that those steps are not required to be performed. (id. at *7). See, e.g., Reactive Surfaces v. Toyota Motor Corp., IPR2016-01914 (PTAB 2018) (“[t]he use of ‘when’ instead of ‘if’ does not change whether the method step is conditional”) (citing Ex parte Kaundinya, No. 2016-000917, 2017 WL 5510012, at *5-6 (PTAB Nov. 14, 2017) ("when" may indicate a conditional method step); Ex parte Zhou, No. 2016-004913, 2017 WL 5171533, at *2 (PTAB Nov. 1, 2017) (same); Ex parte Lee, No. 2014-009364, 2017 WL 1101681, at *2 (PTAB Mar. 16, 2017) (same)).
Claim Interpretation-35 U.S.C. § 112(f)
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f).
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “surroundings recognition device,” “drive device,” “automatic gear change device,” and “brake device” in claims 1 and 5.
Because these claim limitations are being interpreted under 35 U.S.C. § 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
In this instance, the following interpretations shall be applied:
the “drive device” shall be interpreted to be limited to the devices and the equivalents thereof described in Spec. ¶ 16
the “automatic gear change device” shall be interpreted to be limited to the devices and the equivalents thereof described in Spec. ¶ 17
the “brake device” shall be interpreted to be limited to the devices and the equivalents thereof described in Spec. ¶ 19
the “surroundings recognition device” shall be interpreted to be limited to the devices and the equivalents thereof described in Spec. ¶ 24
If Applicant does not intend to have these limitations interpreted under 35 U.S.C. § 112(f), Applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. § 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f).
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. § 112(f) because the claim limitation recites sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation is: “surroundings recognition device” in claim 2.
Because this claim limitation is not being interpreted under 35 U.S.C. § 112(f) , it is not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If Applicant intends to have this limitation interpreted under 35 U.S.C. § 112(f) , Applicant may: (1) amend the claim limitation to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation does not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-5 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1 and 5, these claims include the limitation “a controller configured to control at least the drive device, the automatic gear change device, and the brake device such that the automobile travels by autonomous driving using information from the surroundings recognition device, wherein the controller is configured to prohibit use of a predetermined low gear stage on a low-speed side in the automatic gear change device when the automobile travels by autonomous driving using a predetermined travel mode,” or similar. (Emphasis added).
First, the limitation “such that the automobile travels by autonomous driving using information from the surroundings recognition device” is subject to two mutually exclusive interpretations. This limitation may be interpreted that the automobile travelling by autonomous driving using information from the surroundings recognition device is merely the intended use of the controlling the drive device, the automatic gear change device, and the brake device. Thus, under this interpretation, the “such that” clause would not be entitled to any patentable weight.1
This limitation may also be interpreted to affirmatively require that the vehicle must be driven and the surroundings recognition device is actively used as part of the autonomous driving process. In other words, under this interpretation, an autonomous vehicle that had a surroundings recognition device but did not use it to control the autonomous travel would not be covered under the scope of this claim.
“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). See also Ex parte McAward, Appeal 2015-006416 (PTAB 2017) (precedential) (affirming the holding in Ex parte Miyazaki).
Second, these claims also refer to a “low” gear stage and a “low” speed. The term “low” is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Therefore, for the reasons discussed above, these claims are indefinite.
Regarding claims 2-4, these claims depend from claim 1 and, therefore, inherit the rejection of that claim.
Claim Rejections - 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. § 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. § 103(a), the Examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the Examiner to consider the applicability of 35 U.S.C. § 103(c) and potential 35 U.S.C. §§ 102(e), (f) or (g) prior art under 35 U.S.C. § 103(a).
Claims 1-5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kuretake, US Publication 2019/0344779 (hereinafter Kuretake) in view of Sakai et al., US Publication 2020/0189563 (hereinafter Sakai).
Regarding claim 1, Kuretake discloses an automobile comprising “a drive device” (Kuretake ¶ 22) where the motor functions as a drive device. Additionally, Kuretake discloses “an automatic gear change device” (Kuretake ¶ 23, see also ¶ 29) by including a transmission (i.e., a gear change device) in the autonomous vehicle (Kuretake ¶ 31). Thus, because the transmission may be controlled by the autonomous vehicle, it is an “automatic” gear change device. Further, Kuretake discloses “a brake device” (Kuretake ¶ 23) by including a brake. Moreover, Kuretake discloses “a controller configured to control at least the drive device, the automatic gear change device, and the brake device …” (Kuretake ¶ 25) where the ECU acts “as a controller to control the motor 1 and the transmission 4.” Finally, Kuretake discloses “the controller is configured to prohibit use of a predetermined low gear stage on a low-speed side in the automatic gear change device when the automobile travels by autonomous driving using a predetermined travel mode” (Kuretake ¶¶ 31, 35) where, during “seamless priority mode” (i.e., a predetermined travel mode, Kuretake ¶ 31), which “corresponds to an operating mode of the autonomous vehicle” (i.e., when the automobile travels by autonomous driving, Kuretake ¶ 31), where the system prohibits the use of any gear other than the current gear, which would include both lower gear stages and higher speed stages. (Kuretake ¶ 35).
Kuretake does not appear to explicitly disclose “a surroundings recognition device configured to acquire information on surroundings of a vehicle” and “a controller configured to control at least the drive device, the automatic gear change device, and the brake device such that the automobile travels by autonomous driving using information from the surroundings recognition device.”
However, Sakai discloses an autonomous vehicle including “a surroundings recognition device configured to acquire information on surroundings of a vehicle” (Sakai ¶ 23) where the surroundings recognition device may include at least a camera, radar, or LIDAR. Additionally, Sakai discloses “a controller configured to control at least the drive device, the automatic gear change device, and the brake device such that the automobile travels by autonomous driving using information from the surroundings recognition device” (Sakai ¶¶ 23-26) by disclosing that the ECU controls the autonomous vehicle (Sakai ¶ 23) and that the camera (i.e., a surroundings recognition device) generates images of the surrounding area that are sent to the ECU. (Sakai ¶¶ 25-26).
Kuretake and Sakai are analogous art because they are from the “same field of endeavor,” namely that of autonomous vehicle control systems.
Prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Kuretake and Sakai before him or her to modify the autonomous vehicle of Kuretake to include the surroundings recognition device of Sakai.
The motivation for doing so would have been that a person of ordinary skill in the art prior to the effective filing date would have recognized an autonomous vehicle without a surrounding recognition device is highly dangerous and likely to lead to the loss of human life, therefore, the addition of such a device is highly desirable.
Regarding claim 2, the combination of Kuretake and Sakai discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Kuretake and Sakai discloses “wherein the surroundings recognition device includes one or more than one among a camera, a millimeter-wave radar, a quasi-millimeter-wave radar, an infrared laser radar, and a sonar” (Sakai ¶ 23) where the surroundings recognition device may include at least a camera, radar, or LIDAR.
Regarding claim 3, the combination of Kuretake and Sakai discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Kuretake and Sakai discloses “the predetermined travel mode is a travel mode other than a sport mode” (Kuretake ¶ 31) where the mode is “seamless priority mode,” which is a “travel mode other than a sport mode.” Further, the combination of Kuretake and Sakai discloses “the predetermined low gear stage is a first gear stage” (Kuretake ¶ 23) where the first gear stage is disclosed to be present in the vehicle and thus, would be excluded if the vehicle was in seamless priority mode and in any gear stage other than first.
Regarding claim 4, the combination of Kuretake and Sakai discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Kuretake and Sakai discloses “wherein the controller is configured to permit a skipping upshift in the automatic gear change device when the automobile travels by autonomous driving using the predetermined travel mode” (Kuretake ¶¶ 36-37) by disclosing an alternative predetermined travel mode of the first skip mode that may inhibit downshifting (i.e., low gear stages) but permits upshifting by skipping the even gear stages.
Regarding claim 5, it merely recites a method performed by the automobile of claim 1. The method comprises execution of computer software modules for performing the various functions. The combination of Kuretake and Sakai comprises computer software modules for performing the same functions. Thus, claim 5 is rejected using the same rationale set forth in the above rejection for claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Kuwahara et al., US Publication 2016/0318514, System and method for controlling gear shifting in a vehicle.
Oyama et al., US Publication 2021/0404552, System and method for controlling gear shifting in a vehicle.
Adachi et al., US Patent 11,214,277, System and method for controlling gear shifting in a vehicle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW R DYER whose telephone number is (571)270-3790. The examiner can normally be reached Monday-Thursday 7:30-4:30.
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/ANDREW R DYER/Primary Examiner, Art Unit 3662
1 “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).