www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/596,307
`
`10/08/2019
`
`Junichi YUKAWA
`
`733756.404
`
`2252
`
`Seed IP Law Group LLP/Panasonic
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`BEAULIEU, YONEL
`
`ART UNIT
`
`3668
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/21/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOeAction @ SeedIP.com
`
`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`115 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-15 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 08 October 2019 is/are: a)¥) accepted or b)(_) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 10/08/2019.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210915
`
`Application No.
`Applicant(s)
`16/596,307
`YUKAWAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`YONEL BEAULIEU
`3668
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 08 October 2019.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 2
`
`Detailed Correspondence
`
`Notice of Pre-AlA or AIA Status
`
`The presentapplication, filed on or after March 16, 2013, is being
`
`examined under the first inventor to file provisions of the AIA.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An elementin a claim for a combination may be
`expressed as a meansor step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AlIA 35 U.S.C. 112, sixth
`
`paragraph:
`
`An elementin a claim for a combination may be expressed as a meansor step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`suchclaim 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 ofordinary 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
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 3
`
`specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that
`
`meet the following three-prong test will be interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means”or “step” or a term used as
`
`a substitute for “means”that is a generic placeholder (also called a
`
`nonce term or a non-structural term having no specific structural
`
`meaning) for performing the claimed function;
`
`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
`
`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
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 4
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`treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph. The presumption that the claim limitation is interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
`
`the claim limitation recites sufficient structure, material, or acts to entirely
`
`perform the recited function.
`
`Absence of the word “means”(or “step”) in a claim creates a
`
`rebuttable presumption that the claim limitation is not to be treated in
`
`accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph. The presumption that the claim limitation is not interpreted
`
`under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is
`
`rebutted when the claim limitation recites function without reciting sufficient
`
`structure, material or acts to entirely perform the recited function.
`
`Claim limitations in this application that use the word “means”(or
`
`“step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.
`
`112, sixth paragraph, except as otherwiseindicated in an Office action.
`
`Conversely, claim limitations in this application that do not use the word
`
`“means”(or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 5
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`AIA 35 U.S.C. 112, sixth paragraph, except as otherwiseindicated in an
`
`Office action.
`
`This application includes one or more claim limitations that do not use
`
`the word “means,” but are nonetheless being interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim
`
`limitation(s) uses a generic placeholder that is coupled with functional
`
`language without reciting sufficient structure to perform the recited function
`
`and the generic placeholder is not preceded by a structural modifier. Such
`
`y
`tt
`claim limitation(s) is/are: “...first operation section...”, “...second operation
`
`y
`tt
`section...”, “...communicator...” in claims 1 and 15.
`
`Becausethis/these claim limitation(s) is/are being interpreted under
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are
`
`being interpreted to cover the corresponding structure described in the
`
`specification as performing the claimed function, and equivalents thereof.
`
`If applicant does notintend to have this/theselimitation(s) interpreted
`
`under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`applicant may:
`
`(1) amend the claim limitation(s) to avoid it/them being
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 6
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph(e.g., by reciting sufficient structure to perform the claimed
`
`function); or (2) present a sufficient showing that the claim limitation(s)
`
`recite(s) sufficient structure to perform the claimed function so as to avoid
`
`it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph.
`
`Claim Rejections - 35 USC § 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.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second
`paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 6, 8, and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C.
`
`112 (pre-AlA), second paragraph, as being indefinite for failing to
`
`particularly point out and distinctly claim the subject matter which the
`
`inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 7
`
`In claims 6 and 8 “...the object...” (lines 2, respectively) lacks
`
`antecedentbasis. Not clear which ‘object’ is referred to as such has not
`
`previously been identified.
`
`As to claim 14, it is not readily understood as to [why] the second
`
`section being discarded when the second stage, which requires that
`
`section, is performed.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as
`
`subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C.
`
`102 and 103)is incorrect, any correction of the statutory basis for the
`
`rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`The following is a quotation of the appropriate paragraphs of 35
`
`U.S.C. 102 that form the basis for the rejections under this section madein
`
`this Office action:
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`A personshall be entitled to a patent unless —
`
`Page 8
`
`(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 effectivefiling date of the claimed
`invention.
`
`Claims 1
`
`- 7, 11-13, and 15 are rejected under 35 U.S.C. 102(a)(!)
`
`as being anticipated by U.S. Pub. No. 2017/0186251 Ai to Lee “Lee").
`
`Regarding claim 1, Lee teaches a vehicie, comprising: a first
`
`operation section Ggnition key hole-inherent feature of figs. 1-2) that allows
`
`operation of the vehicie without software (ypical vehicle keys require no
`
`soltware — note also 40005); a second operation section capable of
`
`aperating the vehicle by using software (secand [access] operation allows
`
`for use of smart keys which require software — note aiso 740005, 0016,
`
`0086); a communicator (250) that communicates with an apparatus outside
`
`(external) of ihe vehicle (see fig. 3; 70053 al least); and a stop switch that
`
`is provided physically and operable fo stop operation Qvnen inserted in the
`
`key hole} of the second operation section without sofiware (#40005 at
`
`least).
`
`Regarding claim 2, Lee’s teaching, wherein the stop switch is a start
`
`switch of the vehicle, the stop switch functions as the start switch in a first
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 9
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`operation mode of the starl switch, and the stop switch functions as the
`
`stop switch in a second operation mode of the start switch (40005 at least).
`
`Regarding claim 3, Lee teaches of the imitations including the switch
`
`being two-stage (70095 at least}.
`
`Regarding claim 4, Lee’s teaching, wherein how to cause the start
`
`switch to function Ghrough user manipulation) as the stop swiich is
`
`displayed on a display (2714) mounted on ine vehicle (ig T0053, G055,
`
`0070, 0074).
`
`Regarding claim 5, Lee’s teaching, wherein a part af the second
`
`operation section thal oerforrns an operation which affects a driving
`
`operation of the vehicle is excluded from a part whose operation is fo be
`
`stopped (ihe second operation [with the smart key] operates independenily
`
`ithe first with the ‘anition’ key]; 70005).
`
`RMegarding claim 6, Lee's teaching, wherein the pari of ne second
`
`operation section excluded from the object whose operation is to be
`
`stopped includes af /east one of an internal combustion engine control
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 10
`
`apparatus (ihe engine is not explicitly shown: note however 790005, 000771,
`
`0080 referencing the engine) a headlight control apparatus (headlight
`
`apparatus is Supported by fig. 1 at least}, an airbag control apparatus
`
`(inherent feature of vehicle in fig. 1), a wiper control apparatus aviper
`
`apparatus is supporied by fig. 1}, a hazard jamp contro! apparatus Unherent
`
`feature of vehicle in fig. 1), a power window control apparatus Unherent
`
`feature of vehicle in fig. 1), and a door lock control apparatus (Oi 23,
`
`0124).
`
`Regarding claim 7, Lee’s teaching, wherein the second operation
`
`section is capable of operating (starting) the vehicie independently of
`
`aperation by a criver (oy remote control signal or smart keys; {410005,
`
`0077, 0124).
`
`Regarding claim 11, Lee’s teaching, wherein the first operation
`
`section is a steering system including a steering wheel, a sieering shall, a
`
`Hie rod, a pinion gear, 4 rack, a knuckie arm, and a wheel (see fig. 1;
`
`FFO0S2, 0056, G079)}.
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 11
`
`Regarding claim 12, Lee's teaching, wherein the communicator
`
`perfonns radio communication AVCMA) via the Internet connection with the
`
`apparatus outsicie of the vehicle (740053, 0099 at least).
`
`Hegarding claim 13, Lee's teaching, wherein the vehicle is any one
`
`of a gasoline vehicle, a diesel vehicle, a hybrid vehicie (HV), a plug in
`
`nybrid vehicle (PH), @ plug in hybrid electric vehicle (PHEV), and an
`
`electric vehicle (EV) ~ (70040).
`
`Regarding claim 15, Lee teaches a stop switch apparatus to be
`
`mounted on a vehicie, the vehicle including a first operation section
`
`Ganition key hoale-inherent feature of figs. 1-2) that allows operation of a
`
`vehicie wilhoul software (lypical vehicle keys require no software — note
`
`also (0005), a second operation section capable of operating ine venicie
`
`by using software (second [access] operation allows for use of srnart keys
`
`which require software ~— note also H#O005, 0016, 0086), and a
`
`communicator (259) that cormmunicates with an apparatus outside of the
`
`vehicle (see fig. 3: (0056 al least}, ine stop switch apparalus comprising: a
`
`stop switch provided physically and a hardware logic circuit Gvwhnen inserfec
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 12
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`in the key hole) thal stoos operation of the second operation section
`
`without software when the stop switch is operated (@0005).
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as
`
`subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C.
`
`102 and 103)is incorrect, any correction of the statutory basis for the
`
`rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis
`
`for all obviousnessrejections 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.
`
`The factual inquiries for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized asfollows:
`
`1. Determining the scope and contents ofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at
`
`issue.
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 13
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`3. Resolving the level of ordinary skill in the pertinentart.
`
`4. Considering objective evidence presentin the application indicating
`
`obviousness or nonobviousness.
`
`This application currently namesjoint inventors. In considering
`
`patentability of the claims the examiner presumesthat the subject matter of
`
`the various claims was commonly ownedasofthe effectivefiling date of
`
`the claimed invention(s) absent any evidenceto 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 ownedasof the
`
`effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 835 U.S.C. 102(b)(2)(C) for any potential 35
`
`U.S.C. 102(a)(2) prior art against the later invention.
`
`Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over
`
`Lee as applied to claim 1 above, and further in view of U.S. Pub. Mo.
`
`20180328269 A1 to Aoyagi et al (“Aoyagi”).
`
`As discussed above, Lee teachesall of the limitations of the base
`
`claim including those of the dependent claim exceptfor the explicit
`
`inclusion of a negative pressure electric pump.
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 14
`
`However, Aoyagi teaches, in a vehicular environment (40023),
`
`including a negative pressure electric pump (40028, 0031, 0032).
`
`It would have been obvious to one of ordinary skill in the art before
`
`the effective filing date of the invention to have modified Lee’s teaching by
`
`including a negative pressure electric pump as evidenced by Aoyagi in
`
`order to ensure supercharging responsiveness.
`
`Claims 9 and 10 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Lee as applied to claims 1 and 3 above and further in
`
`view of U.S. Pub. No. 20160124579 A1 to Tokukate (“Tokukate’).
`
`As discussed above, Lee teachesall of the limitations of claims 1 and
`
`3, but is not explicit on the second stage pressing operation being larger
`
`than the first stage operation.
`
`However, Tokukate teaches, in an analogous art of two-stage switch,
`
`such a switch is known to operate wherein a second stage pressing
`
`operation being larger (based on predetermined pressing time) than the
`
`first stage operation (¢§0054, 0072, 0074).
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 15
`
`It would have been obvious to one of ordinary skill in the art before
`
`the effective filing date of the invention to have modified Lee’s teaching by
`
`including second stage pressing operation being larger than the first stage
`
`operation as evidenced by Tokukatein order to allow for proper operation
`
`with a specific time interval.
`
`Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over
`
`Lee over claims 1 and 3 above.
`
`As best understood, the limitations of claim 14 would have been
`
`obvious to one of ordinary skill in the art before the effectivefiling date of
`
`the invention as Lee has been shown to teach all of the structural features
`
`of a two-stage switch that would perform the claimed operation.
`
`Conclusion
`
`The prior art made of record and not relied upon is considered
`
`pertinent to applicant's disclosure. As per attached PTO-892.
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
`
`Page 16
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`Any inquiry concerning this communication or earlier communications
`
`from the examiner should be directed to YONEL BEAULIEU whose
`
`telephone number is (571)272-6955. The examiner can normally be
`
`reached on M-R 0530-1600.
`
`Examiner interviewsare available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To
`
`schedule an interview, applicant is encouraged to use the USPTO
`
`AutomatedInterview Request(AIR) at
`
`
`
`If attempts to reach the examiner by telephone are unsuccessful, the
`
`examiner’s supervisor, Fadey S. Jabr can be reached on 571-272-1516.
`
`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 applicationsis
`
`

`

`Application/Control Number: 16/596,307
`Art Unit: 3668
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`Page 17
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`available through Private PAIR only. For more information about the PAIR
`
`system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have
`
`questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like
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`assistance from a USPTO Customer Service Representative or access to
`
`the automated information system, call 800-786-9199 (IN USA OR
`
`CANADA) or 571-272-1000.
`
`/YONEL BEAULIEU/
`Primary Examiner, Art Unit 3668
`
`