Ex Parte Scherl et al

Patent Trial and Appeal Board

Sep 11, 2013

11186843 (P.T.A.B. Sep. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/186,843 07/20/2005 Michael Scherl 10191/4319 6919
26646 7590 09/11/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
ALGAHAIM, HELAL A
ART UNIT PAPER NUMBER
3665
MAIL DATE DELIVERY MODE
09/11/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MICHAEL SCHERL, MICHAEL WEILKES,
LUTZ BUERKLE and TOBIAS RENTSCHLER
________________

Appeal 2011-010241
Application 11/186,843
Technology Center 3600
________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
CARL M. DeFRANCO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-27. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a method for adapting a
steering wheel torque, which is exerted driver-independently on the steering
wheel, in a lane-keeping support system of a motor vehicle.” Spec. 1:2-5.
Independent claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A method for exerting a driver-independent steering-
wheel torque on a steering wheel of a motor vehicle traveling in
a lane, using a lane-keeping support system, comprising:
determining a width of the lane;
determining a deviation variable characterizing one of a
lateral vehicle deviation from an ideal line and a lateral
deviation of a vehicle trajectory from the ideal line; and
applying a steering-wheel torque to the steering wheel of
the motor vehicle that is dependent on the deviation variable
and the width of the lane.

REFERENCES RELIED ON BY THE EXAMINER
Kawagoe US 6,212,453 B1 Apr. 3, 2001
Matsumoto US 7,058,494 B2 Jun. 6, 2006
Terada1 JP 2000198458 Jul. 18, 2000

THE REJECTIONS ON APPEAL
1. Claims 1-8, 10-14 and 18-27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kawagoe and Terada. Ans. 3.

1 We reference the English –language translation of October 2009.
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2. Claims 9 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawagoe, Terada and Matsumoto. Ans. 6.
3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kawagoe and Terada. Ans. 7.
4. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kawagoe, Terada and Matsumoto. Ans. 7.

ANALYSIS
The rejection of claims 1-8, 10-14 and 18-27
as being unpatentable over Kawagoe and Terada
Appellants present separate arguments for independent claim 1 and
dependent claim 4. App. Br. 8-11, Reply Br. 2-5. We address claims 1 and
4 separately with claims 2, 3, 5-8, 10-14 and 18-27 standing or falling with
their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1
The preamble to claim 1 specifies “[a] method for exerting a driver-
independent steering-wheel torque on a steering wheel.” The Examiner
finds that Kawagoe discloses such a method. Ans. 3. Appellants disagree
stating that “the Kawagoe reference is not driver-independent. Rather, it
merely assists the driver by adjusting torque with direct dependence on the
driver’s actions.” App. Br. 8, Reply Br. 2. Appellants reference multiple
locations in Kawagoe in support of their contention (App. Br. 8-9; Reply Br.
2-3) but the “Examiner point[s] out that appellant did not claim an
autonomous vehicle where there is no input from the driver.” Ans. 11
(emphasis added). The Examiner notes that Appellants’ own Specification,
at Paragraph 22, states that the present invention is used to “provid[e] the
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driver” with control or, in other words, Appellants’ “method provide[s]
assistance to the driver” and hence “it’s not completely driver independent.”
Ans. 11.
Kawagoe illustrates at Figure 3 an SAS electronic control unit 74 that
receives input from camera 74 whose lane images are processed along with
other inputs (that do not originate with the driver) to generate a lane-keeping
or assist torque TLK. Kawagoe 5:3-27. Kawagoe also illustrates at Fig. 3 a
separate EPS electronic control unit 76 that receives driver input in the form
of a power-steering assist torque TPS. Kawagoe 5:28-33. Kawagoe states
that “the two kinds of assist torques TLK, TPS are simply added together.”
Kawagoe 5:49-50. However, and importantly for the matter at hand,
Kawagoe also states that in the situation where “the vehicle driver can enjoy
running along the center of [the] lane using only a light touch to the steering
wheel . . . . the power-steering torque assist control [i.e., driver-input TPS] is
not carried out.” Kawagoe 5:54-60 (emphasis added). Granted, other
situations “cause[] the introduction of the assist torque TPS” based on driver
input (Kawagoe 5:61-64), but as indicated above, Kawagoe also
contemplates steering situations where the contribution of driver-input
torque TPS is not involved. In view of the above, Appellants’ contention
regarding Figure 3 and Appellants’ assertion that “Kawagoe makes clear that
its torque assist specifically depends on the driver input” are not persuasive
since the input of TPS is not always carried out. App. Br. 8, Reply Br. 3-4.
Accordingly, “Applicants' point regarding the fact that Kawagoe does
not disclose or suggest the feature of ‘exerting a driver-independent
steering-wheel torque’” (Reply Br. 3) is contrary to Kawagoe’s express
disclosure, and as such, does not convince us that the Examiner’s findings
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were in error. We sustain the Examiner’s rejection of claim 1 and dependent
claims 2, 3, 5-7, 12-14 and 18-27.
Claim 4
Claim 4 includes the limitation “wherein no steering-wheel torque is
exerted when the deviation variable does not exceed a first limiting value,
and wherein the steering-wheel torque is exerted when the deviation variable
exceeds the first limiting value.” The Examiner relies on Terada for
teaching this limitation. Ans. 3-4. The Examiner supplements this finding
by also indicating that Kawagoe discloses this limitation as well. Ans. 12.
Appellants address the Kawagoe reference in detail in their briefs (App. Br.
10-11, Reply Br. 4-5) and simply assert that “[t]he secondary Terada
reference does not cure and is not asserted to cure this critical deficiency.”
App. Br. 10, Reply Br. 4.
Terada states that when the deviation in a transverse direction is small,
“compensation is not carried out.” Terada para. [0008]. More specifically,
Terada describes a “dead zone” which “means that when future transverse
deviation amount y1 is within the range of the prescribed dead zone s to the
left and right from 0, a steering reaction T1 is not provided.” Terada para.
[0016] (emphasis added), see also Figs. 6-8. Terada’s Paragraph [0017]
further states that when the deviation is great, such deviation is compensated
for. See also Terada Fig. 4 and question block 4, and Fig. 5 and question
blocks 11-13. Accordingly, and in view of Figure 6 of Terada, when the
deviation amount is less than the value s or y1, no steering reaction is
provided; however, if the deviation amount is greater than s or y1, then a
steering reaction is provided. In view of these teachings, Appellants do not
persuade us that the Examiner’s combination of Kawagoe and Terada fails to
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“disclose the method as set forth above.” Ans. 4. We sustain the
Examiner’s rejection of claims 4, 8, 10 and 11.

The rejection of claims 9 and 16
as being unpatentable over Kawagoe, Terada and Matsumoto
Appellants argue claims 9 and 16 together. App. Br. 11-12. We
select claim 9 for review with claim 16 standing or falling with claim 9.
Claim 9 indirectly depends from claim 4 and more specifically adds the
limitation that “the first limiting value increases with an increase in the
width of the lane.”2 The Examiner relies on Matsumoto for disclosing this
more specific focus on lane width and concludes that it would have been
obvious to adopt Matsumoto’s “algorithm in the combination of Kawagoe
and Terada . . . to determine the desire[d] steering torque.” Ans. 6.
Appellants contend that the Examiner’s “assertion is simply not
properly supported” and further that the reason “‘to determine the desire[d]
steering torque’ doesn’t provide any meaningful reasoning as to why one of
ordinary skill in the art would have been motivated to make the asserted
modification.” App. Br. 12, Reply Br. 6.
There is no dispute that Matsumoto teaches that “lane width L of each
of driving lanes is not fixed constant.” Matsumoto 27:45-46. Further,
Matsumoto teaches that “predetermined lane-deviation criterion XC may be a
variable, which is determined depending on lane width L of each of [the]
driving lanes.” Matsumoto 27:46-49. Hence, there is no dispute that
Matsumoto discloses a variable based on a changing lane width. Appellants
do not deny Matsumoto’s teachings; instead, Appellants dispute the

2 Appellants acknowledge that “[c]laim 16 includes similar features.” Reply
Br. 5.
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Examiner’s reason for combining Matsumoto with Kawagoe and Terada.
App. Br. 12, Reply Br. 6.
Appellants are correct in that the Supreme Court has provided
instructions that “it is ‘important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
[prior art] elements’ in the manner claimed.” App. Br. 11, Reply Br. 6 (both
quoting KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)). However, an
express teaching or motivation in the references is not required; instead, the
Examiner need only articulate a reason to combine the references with some
rational underpinning to support the legal conclusion of obviousness. See
Ans. 10-11, 13. In other words, the presence of a teaching, suggestion, or
motivation to combine the prior art that is found either in the references
themselves or in the knowledge generally available to one of ordinary skill
in the art may provide helpful insight in an obviousness analysis. Here, the
Examiner explicitly stated that the reason to combine the references was “to
determine the desire[d] steering torque.” Ans. 6. Appellants do not indicate
how this reasoning is wrong or is contrary to the additional teachings of
Matsumoto or explain how this stated reason to combine directed to a
change in lane width “is simply not properly supported” as Appellants’
assert. App. Br. 12, Reply Br. 6.
Appellants further contend that the Examiner relied on an “obvious to
try” rationale, but this is a misreading of the Examiner’s rejection and is not
persuasive. App. Br. 12, Reply Br. 6. Appellants also challenge the
Examiner’s additional reliance on Kawagoe for disclosing this lane width
limitation (Reply Br. 6-7, Ans. 12) but Appellants do not show where the
Examiner’s initial reliance on Matsumoto for this teaching is faulty.
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Accordingly, and based on the record presented, we sustain the Examiner’s
rejection of claims 9 and 16.

The rejection of claim 15 as being unpatentable over Kawagoe and Terada
and the rejection of claim 17 as being unpatentable over Kawagoe, Terada
and Matsumoto
Appellants do not present separate arguments for the rejection of these
two dependent claims other than to state that the secondary reference to
Terada does not cure the perceived defect with respect to their parent claim
1. App. Br. 12-13, Reply Br. 7. This argument is not persuasive for reasons
previously addressed and accordingly, we sustain the Examiner’s rejection
of claims 15 and 17.

Additional arguments by Appellants
Appellants also submit additional arguments not directed to any one
particular claim. App. Br. 13-16, Reply Br. 7-10. Here, Appellants repeat
the contention that the Examiner relied on an “obvious to try” rationale
which, as indicated supra, is not the case. App. Br. 13, Reply Br. 6-8.
Appellants also contend that the Examiner did not satisfy the burden of
presenting a prima facie case with respect to the rejections made. App. Br.
13-16, Reply Br. 8-10. We disagree as our reviewing court has provided
instructions that “all 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.”
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). In other words, the PTO
satisfies its initial procedural burden of establishing a prima facie rejection
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by adequately explaining the shortcomings it perceives so that the applicant
is properly notified and able to respond. Jung, 637 F.3d at 1362. Here, and
as previously discussed, we are of the opinion that the Examiner has set
forth the references relied upon in a sufficiently articulate and informative
manner as required, and further, Appellants do not contend that the
Examiner’s rejection was so insufficient that Appellants were unable to
respond. Accordingly, Appellants’ contention that the Examiner failed to
provide a proper prima facie case is not persuasive.
Regarding Appellants’ general hindsight assertion (App. Br. 14, Reply
Br. 8-9), Appellants do not indicate what finding by the Examiner was
gleaned only from Appellants’ disclosure. Accordingly, this assertion is not
persuasive. Regarding Appellants assertion that the Examiner “offer[s] no
evidence” in support of the stated rejections (App. Br. 14, Reply Br. 8), we
are instructed that when an Examiner establishes a prima facie case of
obviousness, the burden shifts to the applicant to show non-obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). See also In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (once the Examiner presents a
prima facie case “the burden of coming forward with evidence or argument
shifts to the applicant.”). In view of the above, Appellants do not persuade
us that the Examiner’s findings are improper or are so insufficient that the
burden to show error failed to shift to Appellants. See App. Br. 14, Reply
Br. 8.
Regarding Appellants’ argument concerning “Official Notice” (App.
Br. 13, Reply Br. 9), Appellants do not indicate where such Official Notice
was made by the Examiner.
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Accordingly, and based on the record presented, Appellants’
contentions are not persuasive whether presented specifically with respect to
a certain claim or presented generally. As such, we sustain the Examiner’s
rejections of claims 1-27.

DECISION
The Examiner’s rejections of claims 1-27 are affirmed.
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).

AFFIRMED

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