AUDI AG

Patent Trials and Appeals BoardMar 11, 2021

2020005107 (P.T.A.B. Mar. 11, 2021)

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. 15/736,145 12/13/2017 Andreas NOLL 07780249US 4050 62008 7590 03/11/2021 MAIER & MAIER, PLLC 345 SOUTH PATRICK STREET ALEXANDRIA, VA 22314 EXAMINER KAZIMI, MAHMOUD M ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 03/11/2021 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): docket@maierandmaier.com maierandmaier_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREAS NOLL and BODO KLEICKMANN Appeal 2020-005107 Application 15/736,145 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and AMEE A. SHAH Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 13, 15–20, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Audi AG. Appeal Br. 2. Appeal 2020-005107 Application 15/736,145 2 BACKGROUND The Specification discloses that “[t]he invention relates to a method for transmitting a contour profile of a road to a vehicle.” Spec. 1, l. 4. CLAIMS Claims 13 and 20 are the independent claims on appeal. Claim 13 is illustrative of the appealed claims and recites: 13. A method for transmitting information between a motor vehicle and a vehicle-external server, the method comprising: providing a contour profile for a road to be traveled along by the vehicle, the contour profile being stored on the server; retrieving, by the vehicle via a vehicle-server interface, the contour profile; wherein contour values of the contour profile lying ahead of the vehicle are transmitted by the server to the vehicle cyclically, at a definable time interval, wherein one contour value is transmitted per cycle, said transmitted contour value being a contour value provided at a predetermined distance ahead of the vehicle, said predetermined distance determined based on a speed of the vehicle; wherein the vehicle is provided with a left portion of a driving lane and with a right portion of the driving lane and the contour value to be transmitted by the server to the vehicle includes in each case a left contour value for the left portion of the driving lane and a right contour value for the right portion of the driving lane of the motor vehicle; measuring, with at least one left lane sensor, a measured left contour value of the left portion of the driving lane, and measuring, with at least one right lane sensor, a measured right contour value of the right portion of the driving lane; generating a fused left profile by fusing the left contour value and the measured left contour value, and generating a fused right profile by fusing the right contour value and the measured right contour value; and Appeal 2020-005107 Application 15/736,145 3 adjusting a vehicle chassis based on the contour value. Appeal Br. 11. REJECTIONS 1. The Examiner rejects claims 13, 15–18, 20, and 22 under 35 U.S.C. § 103 as unpatentable over Choi2 in view of Smith3 and Schindler.4 2. The Examiner rejects claims 19 under 35 U.S.C. § 103 as unpatentable over Choi in view of Smith, Schindler, and Kazuyuki.5 DISCUSSION New Ground of Rejection We enter a new ground of rejection and reject claims 13, 15–20, and 22 under 35 U.S.C. § 112(b) as indefinite. Independent claim 13 recites the limitation “adjusting a vehicle chassis based on the contour value.” Appeal Br. 11. Similarly, independent claim 20 recites the limitation “adjusting a chassis based on the contour value.” Id. at 13. The independent claims also include several references to contour values including “contour values of the contour profile,” “said transmitted contour value,” “a left contour value,” “a right contour value,” “a measured left contour value,” and “a measured right contour value.” Id. at 11–13. These recitations of different contour values make it unclear as to which value is being used as the basis for “adjusting a vehicle chassis” or “adjusting a chassis” in claims 13 and 20, respectively. Thus, we determine that it is not reasonably possible to interpret the claims with sufficient clarity to satisfy 35 U.S.C. § 112(b). See In re 2 Choi et al., US 2012/0203428 A1, pub. Aug. 9, 2012. 3 Smith et al., US 6,763,292 B1, iss. July 13, 2004. 4 Schindler et al., US 2014/0039758 A1, pub. Feb. 6, 2014. 5 Kazuyuki et al., JP 2000090395 A, pub. Mar. 31, 2000. Appeal 2020-005107 Application 15/736,145 4 Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (per curiam). In particular, we determine that this claim language is amenable to at least two plausible interpretations, and the written portion of the Specification does not provide further clarity to determine the specific scope of the claims. See Ex parte Miyazaki, 2008 WL 5105055, at *5 (BPAI Nov. 19, 2008) (precedential) (“[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 . . . as indefinite.”). The claim language might be plausibly interpreted to include any one of, or all of, the previously recited “contour values” or some other parameter listed in the claim, including the “contour profile” or the left or right “fused” profiles. Further, the Specification provides no additional clarity as to what the claim is referring. For example, the Specification discloses adjustments based on “received contour values,” “contour profile,” and left and right “contour value.” Spec. 3, ll. 29–31; 4, ll. 24–26; 7, ll. 15–19. Accordingly, we conclude that claims 13 and 20 are indefinite under 35 U.S.C. § 112(b). We also conclude that dependent claims 15–19 and 22 are indefinite for the same reasons. Rejections on Appeal In view of our determination that claims 13, 15–20, and 22 are indefinite, and because we find that an analysis of the Examiner’s rejections would necessarily be based on a speculative assumption as to the meaning of the claims, we do not sustain the rejections under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). However, it should be understood that our decision in this regard is pro forma and based solely on Appeal 2020-005107 Application 15/736,145 5 the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the Examiner’s analysis in rejecting the claims. CONCLUSION We pro forma reverse the Examiner’s rejections of claims 13, 15–20, and 22. In a new ground of rejection, we reject claims 13, 15–20, and 22 under 35 U.S.C. § 112(b) as indefinite. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 13, 15–18, 20, 22 103 Choi, Smith, Schindler 13, 15–18, 20, 22 19 103 Choi, Smith, Schindler, Kazuyuki 19 13, 15–20, 22 112(b) Indefiniteness 13, 15–20, 22 Overall Outcome 13, 15– 20, 22 13, 15–20, 22 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-005107 Application 15/736,145 6 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. REVERSED 37 C.F.R. § 41.50(b)