Robert Bosch GmbH

Patent Trials and Appeals Board

Dec 1, 2020

2020003753 (P.T.A.B. Dec. 1, 2020)

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.
15/543,894 07/14/2017 Carsten Hasberg BOSC.P10416US/1000194890 5724
24972 7590 12/01/2020
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
KISWANTO, NICHOLAS
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
12/01/2020 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARSTEN HASBERG, MICHAEL HELMLE,
OLIVER PINK, and SYBILLE EISELE

Appeal 2020-003753
Application 15/543,894
Technology Center 3600
____________

Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 12, 15–18, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 “ROBERT
BOSCH GmbH.” Appeal Br. 2.
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Application 15/543,894

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BACKGROUND
The Specification discloses that “[t]he present invention relates to a
method for operating a control device of a motor vehicle driving by
automation. The invention also relates to a control device for a motor
vehicle drivable by automation.” Spec. 1.
CLAIMS
Claims 12, 18, and 22 are the independent claims on appeal. Claim 12
is illustrative of the appealed claims and recites:
12. A method for operating a control device of a motor vehicle
driving by automation, comprising:
determining a location of the motor vehicle;
acquiring driving-environment data of the motor vehicle;
acquiring influencing data that correlates an action of the
motor vehicle to be implemented in automated fashion by the
control device with an expected driving behavior of at least one
other road user, the driving behavior of the at least one other user
depending on a traffic practice characteristic of a geographic
region as indicated by the determined location of the motor
vehicle;
forming, in response to the influencing data, a control
characteristic of the control device of the motor vehicle; and
controlling an operation of the motor vehicle in
accordance with the control characteristic in such a way as to
present to the at least one other road user a driving behavior of
the motor vehicle that is associated with the driving behavior of
the at least one other road user coming into conformity with the
traffic practice.
Appeal Br., Claims App. 1.
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REJECTION2
The Examiner rejects claims 12, 15–18, 21, and 22 under 35 U.S.C.
§ 102(a)(2) as anticipated by Boatright.3, 4
DISCUSSION
We are persuaded of error in the rejection of each of the independent
claims by Appellant’s argument that the Examiner has not established that
Boatright discloses acquiring “influencing data that correlates an action of
the motor vehicle to be implemented in automated fashion by the control
device with an expected driving behavior of at least one other road user” as
required by each of claims 12, 18, and 22.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
With respect to the limitation at issue, the Examiner finds that
Boatright’s disclosure of “locality data” discloses the claimed influencing
data that is correlated as claimed. Final Act. 3 (citing Boatright ¶ 25). In the
Answer, the Examiner further explains:

2 The Examiner has withdrawn the rejection under 35 U.S.C. § 101. See
Ans. 3.
3 The heading for this rejection includes claim 20, but that claim has been
cancelled. See Amendment, filed March 20, 2019.
4 US 2012/0310465 Al, pub. Dec. 6, 2012.
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Boatright teaches the influencing data, i.e. locality data,
correlates, i.e. matches, an action of the motor vehicle to be
implemented in automated fashion by the control device, i.e.
activate turn signal, with an expected driving behavior of at
least one other road user, i.e. activation of her turn signal before
a turn. In other words, Boatright’s vehicle adjusts when to
activate its turn signal based on the present locality regulations,
see paragraph [0031]. The “expected driving behavior of at
least one other road user” is the expected distance or time
before the actual turn itself when at least one other road user
turns on her turn signal. The distance or time that the at least
one other road user activates her turn signal before a turn is
“expected” because drivers tend to follow local regulatory
guidelines, thus to know the local regulations is to know the
expected driving behavior of at least one other road user. It
could even be argued that the act of turning on the turn signal
itself, no matter the distance or time from a turn, is “an
expected driving behavior of at least one other road user” since
it is generally expected that a “road user” turns on a turn signal
before turning.
Ans. 3–4 (citing Boatright ¶¶ 25–40). Thus, the Examiner finds that
Boatright’s “locality data” relates to locality regulations, and the Examiner
explains that an expected driving behavior is based on the expectation that
drivers follow local regulatory guidelines.
Appellant argues that Boatright’s “locality data simply pertains to
‘regulatory limits,’ [and as] far as the locality data is concerned, Boatright
simply wishes to supply to turn control device 170 whatever happens to be
the legislated limit for signaling.” Reply Br. 2. Appellant further asserts
When tum control device 170 takes into account the regulatory
limit communicated by the locality data, it is not taking into
account a correlation between the tum the vehicle that
implements device 170 is about to take and an expected driving
behavior of another driver because taking into account of
whatever happens to be the law in a particular jurisdiction
(which is all that locality data does) is not tantamount to
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Application 15/543,894

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correlating the expected automated act of that the vehicle is to
take with the expected behavior of another road user.
From the perspective of tum control device 170, it does
not care what the expected driving behavior of another road
user happens to be. The locality data supplied to device 170
simply informs, without correlating with another driver's
expected behavior, the device 170 on the particular regulatory
limit. Whether other road users are expected to conform to this
limit is irrelevant as far as the operation of device 170 is
concerned. The Examiner appears to assume that the mere
existence of locality data intrinsically signifies a correlation
with expected driving behavior of other road users, but again,
device 170 does not operate on the basis of any expectation of
driving behavior by other road users.
Id. at 3.
We agree with Appellant that Boatright does not explicitly disclose a
correlation between the locality data and an expected driving behavior of
another driver. We do note that the claim does not actually require an active
step of correlating data, i.e., the claim only requires that data acquired is
correlated and does not require an actual determination that that is the case.
Nonetheless, we agree with Appellant that the Examiner has not established
that Boatright discloses that the locality data used is necessarily correlated to
the expected driving behavior of another user. Because Boatright does not
expressly disclose a correlation between locality data and an expected
driving behavior of another user, we find that the rejection is relying on a
finding based on inherency. More specifically, the Examiner is finding that
because locality data defines regulatory guidelines and because other road
users are expected to follow such guidelines, the locality data is necessarily
correlated with an expected action of at least one other road users. However,
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as noted above, inherency cannot be established by possibilities or
probabilities.
Here, we agree with Appellant that Boatright only discloses the use of
locality data in defining turning actions of the vehicle and does not explain
that this relates in any way to an expected driving behavior of another user.
And, the Examiner merely speculates, without providing evidence, that such
locality data correlates to expected driving behavior. The fact that it is
possible or even probable that another user might follow the regulations
included in the locality data is not sufficient to show that the locality data
necessarily correlates to an expected driving behavior of another user in
Boatright’s device, as required by the claim. Thus, on the record here, we
agree with Appellant that the Examiner has not adequately established that
Boatright anticipates the claim limitation at issue. Accordingly, we do not
sustain the rejection of independent claims 12, 18, and 22. We also do not
sustain the rejection of the dependent claims for the same reasons.
CONCLUSION
We REVERSE the rejection of claims 12, 15–18, 21, and 22.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
12, 15–18,
21, 22
102(a)(2) Boatright 12, 15–
18, 21,
22

REVERSED