Sometimes when looking for amendments during prosecution, applicants can focus only on additional elements that are believed to be inventive over the cited art. While of course it is natural and generally effective to pursue such amendments, sometimes adding only well-known features, even features in the cited art, can be helpful. While that seems crazy, consider the following example from a Honda application related to a system and method for responding to driver behavior.

In particular, the Honda application (15/720,597) addresses ways to asses driver behavior to accommodate for a driver's slow reaction time, attention lapse and/or alertness. When it is determined that a driver is drowsy, for example, the response system may modify the operation of one or more vehicle systems.

Claim 26 on appeal is reproduced below (where the underlined elements are at issue in the appeal and discussed further below):

26. A method of controlling a vehicle system in a vehicle, comprising:
receiving monitoring information about a state of a driver from a monitoring system of the vehicle; receiving vehicle operating information about the vehicle system and the state of the driver from the vehicle system; calculating a driver state index comprising the monitoring information about the state of the driver and the vehicle operating information about the vehicle system and the state of the driver;
determining a control coefficient using the driver state index;
changing a control parameter of the vehicle system using the driver state index and the control coefficient, wherein the control parameter is a system status of the vehicle system; and
modifying control of the vehicle system using the control parameter.

The examiner had rejected claim 26 based on a combination of three references, and specifically cited a particular reference (Tokoro) as showing the underlined portions. However, the examiner essentially cited the same teaching as showing both the control coefficient and the control parameter of claim 26. As explained by the PTAB, the cited disclosure could be either one, but not both:

Turning to the rejection, while Tokoro’s disclosure of shifting to promotion side by “little amount” (Tokoro Fig. 3B) describes a value and that value can teach either the claimed “control coefficient” or “control parameter of the vehicle system,” it cannot teach both claim terms. Since the Examiner has not shown Tokoro teaches both the claimed “control coefficient” and “control parameter of the vehicle system,” the Examiner has not shown the cited references collectively teach “determining a control coefficient using the driver state index; changing a control parameter of the vehicle system using the driver state index and the control coefficient,” as required by claim 26 (emphases added).

So, when an examiner cites the same teaching as disclosing two separate claim elements, the applicant can usually make a strong case for an error in the rejection. However, applicants can also consider amendments that would force the examiner to be stuck in a situation where they would have to rely on the same teaching in the prior art for two separate elements. This brings us back to the beginning of this post - sometimes that can be done by merely adding well-known elements to the claim. For example, when the examiner cites a teaching that actually maps to a different part of the specification (maybe even to well-known elements) better than the claim elements for which it is cited, adding the additional feature from the specification to the claim can force the examiner into a conundrum.