AUDI AG

Patent Trials and Appeals Board

Mar 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.
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Application 15/736,145

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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
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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.
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Application 15/736,145

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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
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Application 15/736,145

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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:
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(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)