AUDI AG

Patent Trials and Appeals Board

Sep 21, 2021

2021002386 (P.T.A.B. Sep. 21, 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.
15/562,243 09/27/2017 Erwin ROTH 4557.0490001 9996
26111 7590 09/21/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
JEN, MINGJEN
ART UNIT PAPER NUMBER
3666
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERWIN ROTH, FLORIAN SCHULLER,
DAVID LENZ, PASCAL MINNERUP,
and CHAO CHEN

Appeal 2021-002386
Application 15/562,243
Technology Center 3600
____________

Before JOHN C. KERINS, KEVIN F. TURNER, and
EDWARD A. BROWN, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–24.2 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Audi AG as the real party in interest.
Appeal Br. 3.
2 The Office Action Summary dated June 24, 2020, erroneously indicates
that claims 11–25 are pending in the application. Claim 25, depending from
claim 11, was proposed as a new claim in an “Amendment and Reply Under
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method for identifying a parking
space and a route leading thereto. Claim 11 is illustrative, and is reproduced
below:
11. A method for identifying an appropriate parking space for a
motor vehicle and a route leading thereto, comprising:
requesting, by a navigation system in the motor vehicle, of a
piece of information regarding a parking place search from an
external server that manages a parking lot having at least one
parking space, before the parking lot is reached, wherein the
parking lot is selected based on geographic proximity of the
motor vehicle to the parking lot;
sending the piece of information requested from the external
server to the navigation system in the motor vehicle;
executing, by the navigation system, a route search from a start
node to a destination node, in which an initial basic reachability
verification for the destination node from the start node is
determined;
identifying a route section that is required in order to reach the
destination node from the start node;
executing a second reachability verification, and a specific
suitability test of the at least one parking space in the parking
lot based on at least one parameter of the motor vehicle,
wherein the second reachability verification is different from
the initial basic reachability verification, and wherein the
second reachability verification comprises assessing dimensions
of the motor vehicle;
loading a detailed route section identified from the external
server to the navigation system in the motor vehicle; and

37 C.F.R. § 1.116,” dated November 13, 2019. An Advisory Action in
response to this paper, dated November 22, 2019, indicated that the
proposed amendments, which included the proposal to add claim 25, would
not be entered. Claim 25 was not thereafter introduced by Appellant.
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Application 15/562,243

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calculating a collision-free route from the start node to the
destination node.
Appeal Br. 18, Claims App.
THE REJECTION
The Examiner rejects claims 11–24 under 35 U.S.C. § 103 as being
unpatentable over Min (US 2012/0188100 A1, published July 26, 2012) in
view of Gerlach (US 9,222,795 B1, issued Dec. 29, 2015) and Penilla (US
9,581,997 B1, issued Feb. 28, 2017).

ANALYSIS
Claims 11–20
The Examiner finds that Min discloses a number of the limitations set
forth in claim 11, but “is silent regarding identifying a route section that is
required and the parking lot is selected based on the geographic proximity of
the motor vehicle to the parking lot.” Non-Final Act. 5–7. The Examiner
relies on Gerlach as disclosing a step of identifying a required route section,
and concludes that it would have been obvious to employ this step in the
Min system and method. Id. at 7. The Examiner acknowledges that Min in
view of Gerlach “does not further specify that the parking lot is selected
based on the geographic proximity of the motor vehicle to the parking lot.”
Id.
The Examiner maintains that Penilla discloses a system in which the
parking lot is selected based on the geographic proximity of the motor
vehicle to the parking lot, in that it describes, at column 6, lines 51–65, a
vehicle navigating to different auto parking locations or parking lots, and a
downloading of parking lot map information only when the vehicle operator
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elects or selects the lot for parking the vehicle. Id. The Examiner
additionally states that Penilla is used to enhance the operation of the Min
system “by supplying specific parking lot map download utilizing
proximity.” Ans. 9.
Appellant argues that the portions of Penilla relied on by the
Examiner do not disclose the selection of a parking lot based on geographic
proximity of the motor vehicle to the parking lot, but instead operates to
download parking map information on the premise that the vehicle has
already reached, or is proximate, the garage or parking lot. Appeal Br. 12.
Appellant thus maintains that Penilla does not describe selecting a parking
lot, because the vehicle is already at the parking lot, and the Examiner does
not explain how Penilla is otherwise being interpreted. Id. at 12–13.
Appellant sums up additional points made relative to the Penilla disclosure,
saying, “[i]n fact, Penilla is similar to Min in that Penilla does not concern
itself with why or how a vehicle has arrived at the parking structure–
Penilla’s concern is with auto-park within the parking structure,” by
providing slot map information once the vehicle arrives. Reply Br. 7.
In reply, the Examiner shifts focus back to Min as disclosing
operation of the system prior to the vehicle having reached the parking
garage or lot, citing paragraph 49 as setting forth that “the server device 200
generates a route to final parking slot using the information about the final
parking slot, . . . the vehicle 300 performs autonomous driving up to the
nearby area.” Ans. 8–9 (emphasis omitted).
Appellant has the better position here. As to the Examiner’s above
quotation from Min, Appellant accurately responds that the disclosure is
directed to the automated two-step parking process once the vehicle is within
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the parking lot or garage, and the “driving up to the nearby area” is in
reference to the area within the garage nearby the selected slot. The
Examiner’s reliance on Min as teaching operation prior to vehicle arrival at
the parking location is misplaced.
Although both Appellant and the Examiner discuss the limitation
“parking lot is selected . . .” in a somewhat shorthand manner, the step at
issue in claim 11 involves “requesting, by a navigation system . . . a piece of
information regarding a parking place search . . . before the parking lot is
reached, wherein the parking lot is selected based on geographic proximity
of the motor vehicle to the parking lot.” Appeal Br., Claims App. The
portions of Penilla relied on by the Examiner describe that, once at a
particular parking lot, either a proximity sensor of some type or an operator
selection of some type, triggers the download of parking slot map
information so that the vehicle may be parked autonomously. Penilla, col. 6,
ll. 51–65; Fig. 7.
We note that other portions of Penilla appear to suggest a pairing of a
vehicle with a self-park location, such as a garage or lot, based on
geographic proximity of the two, but the system operates on determining
whether the vehicle is proximate to the self-park location for a threshold
period of time “indicative of the vehicle desiring to enter the self-park
location.” Penilla, col. 21, ll. 49–67; Fig. 18. Passages such as this also
seem to suggest that the self-park location has already been selected by the
vehicle operator. In any event, without having the benefit of a claim
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construction and application of such other teachings by the Examiner, we do
not find it advisable to attempt to apply such teachings to the claims.
The rejection of claim 11 as being unpatentable over Min, Gerlach,
and Penilla is not sustained. Independent claim 19 includes essentially the
same limitation at issue relative to claim 11, and the rejection of claim 19 is
also not sustained. The rejection is also not sustained as to claims 12–18 and
20, which depend from one of these independent claims.
Claims 21–24
Independent claim 21 is similar in several respects to independent
claims 11 and 19. The limitation at issue for those claims involving
selection of a parking lot based on geographic proximity is instead, in claim
21:
receiving from the navigation system of the motor vehicle a
request for a piece of information regarding a parking place
search before the parking lot is reached by the motor vehicle,
wherein the parking lot is selected based on an input to the
navigation system.
Appeal Br., Claims App.
The Examiner relies on Penilla as disclosing the selection of the
parking lot based on an input to the navigation system. Non-Final Act. 14.
The Examiner again relies on the discussion in Penilla at column 6, lines 51–
65, and additionally relies on a discussion at column 6, lines 4–18, directed
to use of portable electronics or smart devices as being synchronized with
the vehicle electronics for use with the Penilla system. Id.
Appellant points out that the additional disclosure relied on by the
Examiner does not particularly involve any manner in which a selection of a
parking lot is made, and essentially repeats the arguments that the disclosure
also relied on by the Examiner in the rejection of claims 11 and 19 does not
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involve receiving information regarding a parking place before a parking
place is reached, because Penilla assumes that the vehicle has already
reached the parking lot. Appeal Br. 15–16.
For essentially the same reasons discussed above relative to claims 11
and 19, we do not sustain the rejection of independent claim 21 as being
unpatentable over Min, Gerlach, and Penilla. The same applies for
dependent claims 22–24.

CONCLUSION
The rejection of claims 11–24 under 35 U.S.C. §103 is reversed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–24 103 Min, Gerlach, Penilla 11–24

REVERSED