VOLKSWAGEN AKTIENGESELLSCHAFT

Patent Trials and Appeals Board

May 27, 2021

2020001507 (P.T.A.B. May. 27, 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.
15/503,295 05/16/2017 Holger WILD VW-1017US (K
20598 WO/US)
4983
130217 7590 05/27/2021
LOZA & LOZA, LLP
Peter Zura, Esq.
305 N. Second Ave. #127
Upland, CA 91786
EXAMINER
CHOWDHURY, AFROZA Y
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
05/27/2021 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):
docketing@lozaip.com
peter@lozaip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOLGER WILD and MARK PETER CZELNIK

Appeal 2020-001507
Application 15/503,295
Technology Center 2600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16, 18–24, 26–32, 34, and 35. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as New Grounds of Rejection
under 37 C.F.R. § 41.50(b).

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Volkswagen AG.” Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
“The present invention relates to . . . contactlessly operating a
hardware operating element (button, slide control, rotary/push adjuster, etc.)
of a user interface” via a “gesture operation in free space.” Spec. 1 (internal
quotation marks omitted). Claim 16, reproduced below, is illustrative of
argued subject matter.
16. A user interface for a vehicle, comprising
a processing apparatus;
a hardware operating element, operatively coupled to the
processing apparatus, wherein the hardware operating element
activates and/or controls at least one function of the vehicle;
a sensor, operatively coupled to the hardware operating
element, the sensor being configured to detect hand gestures
that are performed in three-dimensional (3D) space in a
detection area in proximity to the sensor; and
an evaluation unit, operatively coupled to the sensor, wherein
the evaluation unit is configured to recognize at least one of a
plurality of detected hand gestures, assigned to the hardware
operating element, by the sensor, and to recognize another one
the plurality of detected hand gestures,
wherein the processing apparatus is configured to (i) generate
one or more suggestions in response to the evaluation unit
recognizing the at least one of a plurality of detected hand
gestures, and wherein the suggestion comprises one or more
visual and/or audible indicia relating the hardware element
and the at least one function, and (ii) execute the at least one
or more functions in response to recognizing the another of
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the at least one of the plurality of detected hand gestures after
the one or more suggestions are generated.
Appeal Br. 3 (emphasis added).2
Rejections3
Claims 16, 18–20, 24, 26–28, 32, 34, and 35 stand rejected under
35 U.S.C. § 103 as being unpatentable over Ito (US 7,437,488 B2;
Oct. 14, 2008) and Scheufler (US 2012/0260164 A1; Oct. 11, 2012).
Final Act. 9–14.
Claims 21–23 and 29–31 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ito, Scheufler, and Platzer (US 2008/0165153 A1;
July 10, 2008). Final Act. 14–16.
OPINION
The same findings and arguments are presented on appeal for each of
claims 16, 18–24, 26–32, 34, and 35. Ans. 3–5; Appeal Br. 11–15.
We address, below, the appeal’s sole issue with reference to claim 1. For the
following reasons, we are unpersuaded of error in the rejection of claim 1
and therefore sustain the rejections of claims 16, 18–24, 26–32, 34, and 35.
However, pursuant to 37 C.F.R. § 41.50(b), we designate our
affirmance of the Examiner’s rejections of claims 16, 18–24, 26–32, 34,
and 35 as new grounds of rejection because our reasons for affirming such
rejections materially differ from those expressed by the Examiner. See
infra 6 (explaining the material difference); see also In re Biedermann,

2 Our citations to claims are to those of Appellant’s Claims Appendix
submitted, on September 20, 2019, by a “Response to Notification of
Non-Compliant Appeal Brief” (i.e., submitted in supplemention and
correction of the Appeal Brief).
3 “35 U.S.C. 112(a) and 112(b) rejections are withdrawn.” Ans. 3.
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733 F.3d 329, 336 (Fed. Cir. 2013) (A board decision cannot raise a
“question . . . [of] whether the Board and the examiner properly relied on the
same . . . factual underpinnings.”); In re Leithem, 661 F.3d 1316, 1319 (Fed.
Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art
references, alone, is insufficient to avoid making a new ground of rejection
when the Board relies on new facts and rationales not previously raised to
the applicant by the examiner.”).
Appellant contends the Examiner’s reliance on Ito is erred.
Appeal Br. 12–13. Specifically, Appellant contends:
. . . The presently claimed features are directed to detecting a
first hand gesture, which generates a suggestion (e.g., light,
audio) relating to a hardware control element to which the first
gesture is assigned to, and then executing a function relating to
the hardware element after a second (“another”) hand gesture is
detected and [thus] after the suggestion is generated. This is
materially different from the disclosure in Ito, which teaches
away from this configuration, since Ito expressly relies on the
use of voice-activated confirmation (and associated
hardware/software) before utilizing hand gesture recognition.
Appeal Br. 13–14 (emphasis reformatted).
The Examiner responds:
. . . Appellant states that [the] instant invention is directed to
detecting a hand gesture followed by the detection of another
hand gesture that causes execution of the function. However,
[the] claim does not require detecting a hand gesture followed
by the detection of another hand gesture. Also there is no
support for this in the originally filed specification.
Ans. 5 (emphasis added).
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Appellant replies by quoting and emphasizing the claim language as
follows:
[The Examiner] defies the plain language of the [claim]:
an evaluation unit, operatively coupled to the sensor,
wherein the evaluation unit is configured to recognize at
least one of a plurality of detected hand gestures,
assigned to the hardware operating element, by the
sensor, and to recognize another one the plurality of
detected hand gestures,
wherein the processing apparatus is configured to (i)
generate one or more suggestions in response to the
evaluation unit recognizing the at least one of a plurality
of detected hand gestures, and wherein the suggestion
comprises one or more visual and/or audible indicia
relating the hardware element and the at least one
function, and (ii) execute the at least one . . . function[] in
response to recognizing the another [one] of the at least
one of the plurality of detected hand gestures after the
one or more suggestions are generated [in response to
the at least one of a plurality of detected hand gestures].
Reply Br. 4–5 (emphases reformatted).
As Appellant argues (above block quotes), the Examiner incorrectly
construes claim 1 as not requiring detection of two hand gestures in
sequence. Contrary to the Examiner’s claim construction, claim 1 recites
first and second pairs of gestures-responses that relate to a same function
and occur in sequence. Specifically, claim 1 recites: (1) “at least one . . .
gesture[]” (first gesture) that causes the system to “generate . . . visual and/or
audible indicia relating the hardware element and the at least one
function[;]” and (2) “another . . . gesture[]” (second gesture) that causes the
system to “execute the at least one . . . function . . . after” the visual/audible
relating of the hardware and function. In short, the second gesture-response
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executes the function after the first gesture-response relates the hardware
and function.
We appreciate the Examiner’s apparent conclusion that claim 1 does
not explicitly require detection of the first gesture as a precondition of
detecting the second gesture or require the response to the first gesture
(generating the visual/audible indicia) as a precondition of responding to the
second gesture (executing the function). Nonetheless, the claim requires the
above sequencing of gestures and respective responses.
Despite the Examiner’s claim construction, we are unpersuaded the
Examiner erred by reading claim 1 on Ito, as above, because Ito’s system
can implement a first gesture-response and related subsequent second
gesture-response. Namely, the system can: detect a first gesture (e.g.,
“pattern” gesture 3 of Figure 7A or Figure 12B) that identifies an automobile
device (e.g., the left A/C vent); and then detect a second gesture (e.g.,
pointing motion) that identifies an action to be performed by the identified
device (e.g., instructs the left A/C vent to blow air at a particular region of
the automobile). Ito, col. 12, l. 61–col. 13, l. 3; col. 13, ll. 38–59; col. 14,
ll. 16–33. However, we do not view the rejection as relying on Ito’s
teaching of two in-sequence gestures (and we therefore designate our
affirmance as new ground of rejection) because the Examiner does not
expressly address the teaching, does not cite the most pertinent of our above
citations to the teaching (col. 12, l. 61–col. 13, l. 3), and responds to
Appellant’s argument by stating a teaching or suggestion of two in-sequence
gestures is not required by the claim (Ans. 5 (block-quoted at supra 4)).
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OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 16, 18–24, 26–32,
34, and 35 under 35 U.S.C. § 103(a) and designate our decision a new
ground of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection . . .,
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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:
(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 proceeding 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 . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
New
Grounds
of
Rejection
16, 18–20,
24, 26–28,
32, 34, 35
103 Ito, Scheufler
16, 18–
20, 24,
26–28,
32, 34, 35

16, 18–20,
24, 26–28,
32, 34, 35
21–23,
29–31
103
Ito,
Scheufler,
Platzer
21–23,
29–31
21–23,
29–31
Overall
Outcome
16, 18–
24, 26–
32, 34, 35

16, 18–24,
26–32, 34,
35

AFFIRMED; 37 C.F.R. § 41.50(b)