AUDI AG

Patent Trials and Appeals Board

Mar 17, 2022

2021000630 (P.T.A.B. Mar. 17, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/888,696 02/05/2018 Juergen LERZER 4557.0560001 2654 26111 7590 03/17/2022 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER TRAN, NAM T ART UNIT PAPER NUMBER 2452 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): e-office@sternekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUERGEN LERZER, MATTHIJS PAFFEN, and HANS-GEORG GRUBER _____________ Appeal 2021-000630 Application 15/888,696 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and ERIC S. FRAHM, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 16-34, and 36. See Appeal Br. 1. Claims 1-15 and 35 are canceled. In the Answer (p. 5), the Examiner withdrew the rejection of claim 36. Therefore, the rejections of claims 16-34 are before us on appeal. We have jurisdiction over these pending claims 16-34 under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is Audi AG. See Appeal Br. 3. Appeal 2021-000630 Application 15/888,696 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate generally to “a method for operating a motor vehicle, which has at least one computing device providing computing power and a communication device for communicating at least with vehicle-external clouds provided with at least one server device.” See Spec. ¶ 2. Representative Independent Claim 16 16. A method for operating a motor vehicle comprising at least one computing device providing computing power, a communication device for communicating with at least one vehicle-external cloud each provided with at least one server device, and a control device, wherein the method comprises: performing, by the control device, an availability check to determine the availability of free computing power of the motor vehicle; indicating, by the control device, for the availability check returning a positive result, the existence of the free computing power for executing a computing task provided by the at least one vehicle-external cloud; determining, by the control device, at least one vehicle- external cloud is reachable via the communication device; selecting, by the control device, the at least one vehicle- external cloud reachable via the communication device, wherein the selected vehicle-external cloud is in need of the 2 We herein refer to the Final Office Action, mailed November 22, 2019 (“Final Act.”); the Appeal Brief, filed June 22, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed September 1, 2020 (“Ans.”); and the Reply Brief (“Reply Br.”), filed November 2, 2020. Appeal 2021-000630 Application 15/888,696 3 computing power; establishing, by the control device, a communication link with the selected vehicle-external cloud via the communication device; and logging, by the control device, the motor vehicle into the selected vehicle-external cloud as a provider of the computing power. Appeal Br. 14 (Claims App.) (emphasis added regarding disputed dispositive “performing” step). Prior Art Evidence Relied Upon by the Examiner 3 Name Reference Date Reber US 2013/0304863 A1 Nov. 14, 2013 Gunter US 2015/0088352 A1 Mar. 26, 2015 Table of Rejections Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis A 16-25, 28-34 102(a)(1), (2) Reber B 26, 27 103 Reber, Gunter 3 All reference citations are to the first-named inventor only. Appeal 2021-000630 Application 15/888,696 4 ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We review appealed rejections for reversible error based upon the arguments and evidence Appellant provides for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). “[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132.” Jung, 637 F.3d at 1363. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited or waived.4 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv) (2019). Throughout this 4 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (some internal citation omitted): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733-34, and for that reason, it is worth attending to which label is the right one in a particular case. (internal citations omitted). Appeal 2021-000630 Application 15/888,696 5 opinion, we give the claim limitations the broadest reasonable interpretation (“BRI”) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Independent Claim 16 under 35 U.S.C. § 102 over Reber Based on Appellant’s arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of anticipation Rejection A of claims 16-25 and 28-34 on the basis of representative claim 16.5 Based upon Appellant’s arguments in the Briefs, we focus our analysis on the argued claim 16 “performing” step: “ performing, by the control device, an availability check to determine the availability of free computing power of the motor vehicle; (emphasis added). The Examiner finds that Reber: [P]erform[s] an availability check to determine the availability of free computing power of the motor vehicle and indicate[s], for the availability check returning a positive result, the existence of the free computing power for executing a computing task provided by the at least one vehicle-external cloud (§ 0031; The allocation of computational tasks to the vehicle cloud processing device 80 can be based on the 5 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-000630 Application 15/888,696 6 computational power of the device) (§ 0049; The user of the vehicle 88 can enable the vehicle cloud processing device 80 to indicate availability) (Claim 13; Computational capacity of the vehicle cloud processing device is identified); Final Act. 3. Appellant disagrees with the Examiner’s findings. Appellant contends that “Reber does not describe ‘performing . . . an availability check to determine the availability of free computing power of the motor vehicle,’ as recited by independent claims 16 and 28.” Appeal Br. 7. (emphasis omitted). Appellant urges that “Reber describes the availability of the motor vehicle, and not the ‘availability of free computing power of the motor vehicle,’ as recited by independent claims 16 and 28.” Appeal Br. 9 (emphasis omitted). As evidence in support, Appellant cites to Reber: Thus, Reber describes the allocation of a computational task to the vehicle based on factors including computational power and available battery power of the parked vehicle. (Id., ¶ [0031].) (Emphasis added.) While the vehicle is parked, full computational power can be available to perform a computational task, but battery power may not be sufficiently available to perform the assigned computational task. Reber, therefore, contemplated and described checking available battery power before a computational task is assigned to the parked vehicle but not the available computing power or free computing power of the motor vehicle to complete the assigned computational task. (See Id.) (Emphasis added.) Reber does not describe performing an availability check for free computing power of the motor vehicle because for a vehicle in parked position, the entire computational power of the computing device is available for completing the assigned computational task. Therefore, Reber is silent on “performing, by the control device, an availability check to determine the availability of free computing power of the motor vehicle,” as Appeal 2021-000630 Application 15/888,696 7 recited by independent claim 16, and similarly recited by independent claim 28. Appeal Br. 9 (emphasis omitted). Appellant further avers that “independent claims 16 and 28 under Appeal require indication of availability of free computing power and not just computing power. However, a relevant portion of paragraph [0049] of Reber . . . only indicates availability of the motor vehicle, and not the free computing power.” Appeal Br. 9-10. Appellant essentially restates the same argument on page 11 of the Appeal Brief, regarding the Examiner’s additional reliance on claim 13 of Reber as evidence in support of anticipation Rejection A of independent claim 16. In the Reply Brief, Appellant again refers to Reber at paragraph 31, and restates essentially the same argument from the Appeal Brief: “Reber emphasized [(at paragraph 31)] that before the computational task can be allocated to the vehicle cloud processing device 80, the available battery power needs to be checked, but not ‘the availability of free computing power.’” Reply Br. 2. Appellant’s arguments in the Briefs present the following issue. Issue: Under 35 U.S.C. § 102, did the Examiner err by finding that Reber expressly or inherently discloses the disputed step of: performing, by the control device, an availability check to determine the availability of free computing power of the motor vehicle; Claim 16 (emphasis added). Appeal 2021-000630 Application 15/888,696 8 Turning to the evidence, we reproduce paragraph 31 of Reber below: As discussed above, the allocation of computational tasks to the vehicle cloud processing device 80 can be based on the computational power, memory space, link data rate, available battery power, etc. of the device. In circumstances where a computational task is allocated to the vehicle cloud processing device 80 that involves the execution of an application that is not resident to or otherwise loaded on the vehicle cloud processing device 80, the network control device 47 transfers the application in the form of software or other operational instructions to be executed by the vehicle cloud processing system 80. Reber ¶ 31 (emphasis added). We note that claim 13 of Reber, as also cited by the Examiner (Final Act. 3), recites, in pertinent part: 13. A vehicle cloud processing device for use in a vehicle, the vehicle cloud processing device comprising: a wireless transceiver at a vehicle aggregation location for engaging in communication with a network control device, the communication including system identification data that indicates at least one of, the computational capacity of the vehicle cloud processing device and the data capacity of the vehicle cloud processing device; Reber, claim 13, pages 9-10 (emphasis added). A determination that a claim is anticipated under 35 U.S.C. § 102 involves two analytical steps. First, we must interpret the claim language, where necessary. Because the PTO is entitled to give claims their broadest reasonable interpretation, a court’s review of the Board’s claim construction is limited to determining whether it was reasonable. Morris, 127 F.3d at 1055. Secondly, the Board must compare the properly construed claim to a prior art reference and make factual findings that “each and every limitation Appeal 2021-000630 Application 15/888,696 9 is found either expressly or inherently in [that] single prior art reference.” In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999). Claim Construction of the claim 16 term “free computing power” As an initial issue of claim construction, we turn to the support cited by Appellant for context as to the intended meaning of the claim 16 term “free computing power.” Appellant cites to support found in the Specification in the “Summary of the Claimed Subject Matter” section of the Appeal Brief: If an availability check indicates “the existence of at least a free computing power for executing a computing task provided by a cloud,” the motor vehicle is “logged into the cloud as a provider of computing power” using “a communication link [] established with the cloud.” (Id., ¶¶ [0013], [0016], [0017].) (Emphasis added.) Appeal Br. 3. We turn to the cited paragraphs of the Specification for context: [0013] - In the method disclosed herein, if an availability check yields a positive result, indicating the existence of at least a free computing power for executing a computing task provided by a cloud, [0016] - a communication link is established with the cloud, and [0017] - the motor vehicle is logged into the cloud as a provider of computing power. Appeal 2021-000630 Application 15/888,696 10 Spec. ¶¶ 13, 16, and 17 (emphasis added). Our reviewing court guides that any special meaning assigned to a claim term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”). Here, based upon our review of the above cited portions of the Specification (paragraphs 13, 16, and 17), we find no limiting definition for the claim 16 term “free computing power” in the Specification, or in claim 16. We merely find a non-limiting description of an exemplary embodiment at paragraphs 13, 16, and 17 of the Specification, as cited by Appellant for written description support. See Appeal Br. 3. Given the absence of a limiting definition for the claim 16 term “free computing power” in the Specification, or in claim 16, on this record, we are not persuaded that the Examiner’s broader claim interpretation of the claim 16 term “free computing power” is overly broad, unreasonable, or inconsistent with the Specification. See Morris, 127 F.3d at 1054. Further, the disputed “performing” step of claim 16 includes a statement of intended use or purpose: “performing, by the control device, an availability check to determine the availability of free computing power of the motor vehicle;” (emphasis added regarding the “to determine” statement of intended use or purpose). Appeal 2021-000630 Application 15/888,696 11 However, “[a]n 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. Moreover, we find Appellant’s focus on “battery power” in the Briefs fails to persuasively rebut the Examiner’s specific findings regarding Reber’s computational power, as allocated among the vehicle cloud processing device 80 (i.e., VCPD 80 on each vehicle) and the networked cloud computing system 50, as described in paragraph 31 of Reber, and as depicted, for example in Reber’s Figure 1. We find the additional description in Reber at paragraph 23 buttresses the Examiner’s finding of anticipation: A network control device 47 receives requests for cloud computing services from users of client devices 30 via the IP network 40 and facilitates the cloud computing service via the bidirectional communication with the plurality of vehicle cloud processing devices 80. In particular, the network control device 47 utilizes the computing resources of the vehicle cloud processing devices 80 to create a cloud computing environment that fulfills the requests for cloud computing services. Reber ¶ 23. Therefore, on this record, and to the extent consistent with our analysis above, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3), and, (2) the reasons set forth by the Examiner in the Examiner’s Answer in Appeal 2021-000630 Application 15/888,696 12 response to Appellant’s Appeal Brief.6 We find a preponderance of the evidence supports the Examiner’s finding of anticipation, essentially for the reasons articulated on page 4 of the Answer: [Appellant’s] argument should be found unpersuasive because Reber, in [0031], discloses that the allocation of computational tasks to the vehicle cloud processing device 80 is based on the computational power of the device. It follows that the disclosed “computational power” is available/free computing power because it would not make sense to allocate computational tasks to the device without any available/free computing power. Interpreting Reber’s “computational power” as not being available/free would render his invention inoperable because if there was no available/free computing power, the allocated computational tasks would not be able to execute. Ans. 4. Accordingly, on this record, and based upon a preponderance of the evidence, we sustain the Examiner’s anticipation Rejection A of independent representative claim 16. The remaining grouped claims 17-25 and 28-34, also rejected under Rejection A, and not argued separately, fall with claim 16. See 37 C.F.R. § 41.37(c)(1)(iv). 6 See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2021-000630 Application 15/888,696 13 Rejection B of Remaining Dependent Claims 26 and 27 Appellant advances no separate, substantive arguments rebutting the Examiner’s legal conclusion of obviousness for remaining dependent claims 26 and 27, as rejected under Rejection B over the collective teachings and suggestions of Reber and Gunter. See Appeal Br. 12 (“Claims 26 and 27 either directly or indirectly depend from independent claim 16 and are patentable over the cited references for at least the same reasons as claim 16, as well as for their additional distinguishing features.”). Arguments not made are waived or forfeited. See, e.g., 37 C.F.R. § 41.37(c)(1)(iv); see also Google Tech. Holdings, 980 F.3d at 862. CONCLUSIONS The Examiner did not err in finding that claims 16-25 and 28-34 are anticipated by Reber under 35 U.S.C. § 102(a)(1), (2). The Examiner did not err in concluding that claims 26 and 27 are obvious over the cited combination of Reber and Gunter under 35 U.S.C. § 103. Appeal 2021-000630 Application 15/888,696 14 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16-25, 28-34 102 Reber 16-25, 28-34 26, 27 103 Reber, Gunter 26, 27 Overall Outcome 16-34 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED