Appeal 2007-1454
Application 11/088,528
1 light to the circumstances surrounding the origin of the subject matter sought
2 to be patented. [Id., at 17-18, 148 USPQ at 467.]
3
3 “While the sequence of these questions might be reordered in any particular case,
4
5 the factors continue to define the inquiry that controls. If a court, or patent
6 examiner, conducts this analysis and concludes the claimed subject matter was
7 obvious, the claim is invalid under § 103.” KSR Int’l v. Teleflex Inc., 127 S.Ct.
8 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
9
10 ANALYSIS
11 Turning first to the enablement rejection on page 4 of the Examiner’s
12 Answer, we note that the Examiner has stated the wrong test. “The examiner is
13 unable to determine if the disclosure clearly provides support for how the brake
14 control system is operative to determine a target position of a brake component
15 . . . .” However, the test for enablement is an objective test based on persons
16 skilled in the art rather than a subjective test based on the understanding of an
17 Examiner. Turning to page 8 of the Answer, we note that the Examiner articulates
18 the correct standard and that is whether undue experimentation would be required
19 by the artisan to make and use the claimed invention. The Examiner states that the
20 claim recitation of determining a targeted position of the at least one movable
21 brake component based at least in part on a relationship between an actual tire/road
22 friction force and a targeted tire/road friction force is not enabled without undue
23 experimentation. We do not credit this argument of the Examiner. We are in
24 agreement with the Appellants that this subject matter is found in the prior art. In
25 fact, Appellants admits that Matsumoto discloses this claimed step. We agree.
26 The Examiner also states that the determination of the actual tire/road
27 friction force and targeted road/friction force would vary with each and every
6
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Last modified: September 9, 2013