In order to enjoy outdoor activities, sometimes you need to drive your vehicle through some difficult terrain. And while driver-less cars are still not quite here, Audi has developed some driver assistance tools to help navigate the vehicle by determining a friction coefficient of a surface navigable area to maneuver the vehicle away from non-navigable areas. The non-navigable areas address not only road friction, but also obstacles that may be present on the road. Audi filed a US patent application on the concept in 2015, but had to face numerous “obviousness” rejections. An appeal was eventually taken and the decision was just issued by the USPTO Patent Trial and Appeal Board (PTAB).
Audi claimed that their approach was inventive because it was able to exclude portion of the road that the vehicle was allowed to navigate using its unique approach. The appeals judges disagreed, and pointed out one of the main problems with Audi’s position was that the Audi did not explain why someone could not simply follow the combination of references set forth by the Examiner. From the appeal decision, the PTAB explains:
The ordinarily skilled artisan, being “a person of ordinary creativity, not an automaton,” would be able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in a vehicle system determining the friction coefficient for a road surface to thereby steer the vehicle away from a detected insurmountable obstacle, as well as to maneuver the vehicle in conformance with the calculated coefficient for the navigable road surface. Id. at 420–21. Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Unfortunately it is common for examiners to find the various claimed elements in isolation, and then allege it would be obvious to combine them and reach the claimed solution. One way to rebut such arguments is for the patent application to explain some unique challenges addressed by the claimed combination, and to explain why one skilled in the art would have had difficulty following prior approaches. While Audi’s appeal brief tried to point out that the combination would not actually lead to the claimed elements, it did not specifically point out any challenge in doing so. Once the court found the cited references did actually possess each of the claimed elements, it was then easy for them to reach the final conclusion of obviousness.
