Ex Parte Bailey et al

Patent Trial and Appeal Board

Jun 11, 2013

11232510 (P.T.A.B. Jun. 11, 2013)

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.
11/232,510 09/22/2005 Eric A. Bailey DP-313489 7933
22851 7590 06/12/2013
Delphi Technologies, Inc.
M/C 480-410-202
P.O. Box 5052
Troy, MI 48007
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
06/12/2013 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 ERIC A. BAILEY, MONA L. TOMS,
and VICTOR V. CHERNETSKY1
____________________

Appeal 2010-009734
Application 11/232,510
Technology Center 2100
____________________

Before DAVID M. KOHUT, LARRY J. HUME, and JOHN G. NEW,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4-9, and 11-14. Appellants have previously
canceled claims 3 and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Delphi Technologies, Inc. (App. Br. 2.)
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to a graphical user interface, and more
particularly, to a graphical user interface having a rotary knob and a graphics
display that is used with multi-media systems such as those found on
vehicles. Spec. ¶ [0001] (“TECHNICAL FIELD”).
Exemplary Claims
Claim 1, reproduced below, is an exemplary claim representing an
aspect of the invention (emphases added):
1. A graphical user interface for use with a multi-
media system, comprising:
a rotary knob having an output for providing a position
signal generally representative of the rotational position of the
rotary knob and having a plurality of rotational detent positions;
a graphics control circuit having an input coupled to the
rotary knob output for receiving the position signal and having
an output for providing a graphics signal generally
representative of the position signal; and
a graphics display having an input coupled to the
graphics control circuit output for receiving the graphics signal
and having a graphical depiction of at least a position of the
rotary knob, the graphical depiction including a menu wheel
and a plurality of menu items located near a periphery of the

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Feb. 3, 2010); Reply Brief (“Reply Br.,” filed June 22, 2010); Examiner’s
Answer (“Ans.,” mailed May 11, 2010); Final Office Action (“FOA,”
mailed Jul. 8, 2009); and the original Specification (“Spec.,” filed Sep. 22,
2005).
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menu wheel, wherein rotation of the rotary knob causes a
user to feel actual rotational movement between the plurality
of rotational detent positions and causes the graphics display
to simulate a corresponding arcuate movement of the menu
items along the periphery of the menu wheel, where each
menu item corresponds to a rotational detent position; and
wherein the plurality of menu items corresponds to at
least three of the following content sources:
a terrestrial radio network, a satellite radio network, a
navigation system, a terrestrial television network, a satellite
television network, a vehicle mounted electronic component, a
video game system, a wireless internet gateway network and a
wireless local area network.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Sommers US 5,940,076 Aug. 17, 1999
Gregorio US 2005/0001838 A1 Jan. 6, 2005
Pryor US 2005/0276448 A1 Dec. 15, 2005
Shaw US 7,119,789 B1 Oct. 10, 2006
Mere US 7,233,779 B2 Jun. 19, 2007
Rejections on Appeal
1. Claims 1-2, 4-9, 11-12, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Mere, Sommers,
Shaw and Gregorio. Ans. 4.
2. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mere, Sommers, Shaw, Gregorio, and
Pryor. Ans. 11.
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ISSUES
Appellants argue (App. Br. 8-15; Reply Br. 9-12) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Mere, Sommers, Shaw, and Gregorio is in error.3 These
contentions present us with the following issues:
Issue 1:
Did the Examiner err in finding that the combination of Mere,
Sommers, Shaw, and Gregorio teaches or suggests a graphical user interface
for use with a multi-media system that includes, inter alia, “a rotary knob
. . . [and] a graphics display . . . having a graphical depiction of at least a
position of the rotary knob . . . including a menu wheel and a plurality of
menu items located near a periphery of the menu wheel, wherein rotation of
the rotary knob causes a user to feel actual rotational movement between the
plurality of rotational detent positions and causes the graphics display to
simulate a corresponding arcuate movement of the menu items along the
periphery of the menu wheel, where each menu item corresponds to a
rotational detent position,” as recited in claim 1, and as similarly recited in
each of independent claims 11 and 12?

3 Appellants also contend in enumerated arguments 1-6 (Reply Br. 8) that
the Examiner’s Answer “is not in compliance with a number of specific and
explicit requirements of the MPEP, more specifically the requirements set
forth MPEP §1207.02,” based upon the Examiner’s use of the phrase “no
comment” in the Answer. Reply Br. 8-9. While this is a petitionable matter
and not an appealable matter, we note that the Examiner has provided
substantive analysis of the rejections and has responded to each of
Appellants’ arguments in the Answer. Ans. 4 et seq.
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Issue 2:
Did the Examiner err in combining Mere and Sommers in the manner
suggested because the teachings of the prior art combination, when
considered as a whole, teach away from the claimed invention?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Arguments. However,
we highlight and address specific findings and arguments regarding claim 1
for emphasis as follows.
Appellants’ summarize their arguments as follows:
[T]he rejections should be reversed because the primary
reference, the Mere reference, does not disclose a position
signal generally representative of the rotational position of the
knob. The Sommers reference does not use a knob to rotate its
graphic wheel. These two references should not be combined
and even when combined, the combination does not show all
the limitations of Applicants’ claims. The addition of the third,
fourth and fifth references in combination further highlight the
use of hindsight by the Examiner and these combinations still
do not meet the limitations of the rejected claims.
Reply Br. 16.
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With respect to Issue 1, Appellants contend that the Examiner
mischaracterizes Sommers by asserting that it teaches a graphical depiction
of at least a portion of a rotary knob, but that this is incorrect because control
302 is a tilting control button which uses up/down arrows to rotate graphics,
and is not a rotary knob. App. Br. 8. Appellants also contend that the
Examiner further mischaracterizes Sommers by stating that the reference
“teaches a method . . . wherein rotation of the rotary knob causes a
corresponding movement of the menu items . . . ,” but Appellants dispute the
Examiner’s finding because Sommers does not have a rotating knob that
causes corresponding movement and, “[a]t best, Sommers only discloses a
circular or arcuate graphic[,] but it is not associated with any rotary knob
whatsoever.” Id.
Appellants also contend that “[t]he combination with the Shaw device
is equally mischaracterized,” because, “[c]ontrary to what the Examiner
stated . . . , the Shaw device does not relate in any fashion to a graphical
menu display,” because Shaw’s haptic device (i.e., a device relating to or
based on the sense of touch) is used to control video frames where each
haptic click corresponds to advancing or reversing a video recording by one
or more frames, and “[n]o menus are disclosed nor are any arcuate or
circular menus disclosed or discussed where each detent changes the menu
item to a corresponding rotational detent position.” App. Br. 10.
In response, the Examiner agrees that Sommers does not teach a
physical rotary knob, and reiterates that Mere is relied upon as teaching the
physical rotary knob, and that Sommers teaches a graphical depiction of a
portion of a rotary knob so that, “[i]n no way does the Examiner rely on
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Sommers to teach a physical knob as claimed or taught in Mere,” and
“Sommers teaches rotation of the wheel causes the menu to be rotated onto
the screen.” Ans. 12-13 (citing Sommers col. 3:57 – col. 4:5). We agree
with the Examiner’s findings.
Appellants’ contention does not persuade us of error on the part of the
Examiner because Appellants are responding to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As stated by the Examiner, we find that Mere teaches the recited
“rotary knob” (Mere col. 2:49-59; Fig. 1, item 18), and Sommers teaches the
recited “graphical depiction of at least a position of the rotary knob . . .
including a menu wheel and a plurality of menu items located near a
periphery of the menu wheel” (Sommers col. 3:57 – col. 4:13; Figs. 4-5), as
recited in claim 1. We also agree with the Examiner’s stated basis for
motivation to combine Mere with Sommers, i.e., that “it would have been
obvious . . . to combine the menu wheel of Sommers with the interface of
Mere in order to provide accommodation to an electronic device where the
display is small but the number of menu items/options is large.” Ans. 5.
With respect to Issue 2, Appellants contend that, even if the references
are analogous art, that does not mean that a person with skill in the art would
look at the cited art and
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decide to combine the rotary knob, graphics control circuit and
graphics display taught in Mere with: i) the menu wheel shown
in Sommers, ii) the rotational detent positions disclosed in
Shaw, and iii) the content sources disclosed in Gregorio to
exactly arrive at subject matter of amended claim 1. This is a
complicated and non-intuitive combination of various
components and features across a number of different
references (four references).
. . . [T]he Examiner has not provided sufficient reasons for the
combination of the four references apart from using hindsight to
render Applicant [sic] invention obvious.
App. Br. 12 (emphasis omitted). Appellants also contend that the Examiner
has not identified a reason for combining the claimed elements in the
manner proposed by the Examiner, and that the Examiner has not articulated
a reasonable expectation of success resulting from the proposed
combination. Id.
Appellants argue that the Examiner improperly used hindsight to
combine the references.4 App. Br. 9-13. We disagree and add the following
for emphasis. First, as explained in In re McLaughlin and as reiterated by
the Examiner (Ans. 19):
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made

4 Appellants also contend, unpersuasively, that the Examiner’s use of a form
paragraph in the Advisory Action regarding hindsight analysis is an
admission that the Examiner relied upon improper hindsight in making the
rejection and, “[t]o have the Examiner admit that hindsight motivation is
involved should alone be cause for a reversal.” App. Br. 15. We find this
argument to not be persuasive because the Examiner’s statement is a proper
representation of current case law, as discussed herein.
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and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants’ invention and does not include
knowledge gleaned only from the Appellants’ disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 4-6. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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In this case, the Examiner’s conclusions of obviousness are clearly
articulated and based on detailed factual findings supported by the
references of record. See Ans. 4-6 and 12-19. Thus, we agree with the
Examiner’s findings and conclusions.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s rejection of independent claim 1. As Appellants
have not provided separate, substantive arguments with respect to
independent claims 11 and 12, which recite the disputed limitation in
commensurate form (App. Br. 14), we similarly sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 103(a).
Further, Appellants state the Examiner did not respond to their
arguments in the Appeal Brief concerning the rejection of claim 13, “and
Applicants maintain reliance on his argument regarding claim 13 . . .
[because t]he combination of five references even with the benefit of
hindsight does not disclose all the features or render obvious claim 13 as
now pending and such a rejection based on this combination should not be
allowed to stand.” Reply Br. 15.
We find that, while Appellants appear to offer a separate argument for
patentability of dependent claim 13, Appellants merely argue that:
As to claim 13, these complexities and difficulties are
further exacerbated by the additional inclusion of the Pryor
reference, which is used to arrive at the Mere-Sommers-Shaw-
Gregorio-Pryor combination that forms the basis of the
rejection of claim 13. Five references are now combined. The
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addition of the Pryor reference does not alleviate the
deficiencies of the previously discussed references. While
Pryor may disclose a rotatable knob, its menu in figs. 4a and 4b
do not move. It is only the knob that rotates.
App. Br. 14. We disagree with Appellants, as discussed below.
With respect to claim 13, the Examiner finds that the combination of
Mere-Sommers-Shaw-Gregorio does not teach or suggest that the graphical
depiction of the portion of the rotary knob is concentric with the rotary knob.
Ans. 13. However, the Examiner goes on to find that Pryor teaches the
missing limitation of Mere-Sommers-Shaw-Gregorio, i.e., a graphical
depiction of the portion of the rotary knob that is concentric with the rotary
knob. Ans. 13-14 (citing Pryor Figs. 4a-4b).
We agree with the Examiner because Appellants’ contention does not
persuade us of Examiner error, as Appellants are again responding to the
rejection by attacking the references separately, even though the rejection is
based on the combined teachings of the references. Thus, we find no error
in the Examiner’s rejection of claim 13.
Further, while Appellants raised additional arguments for patentability
of various other dependent claims (App. Br. 13-15), we find that the
Examiner has rebutted those arguments in the Answer by a preponderance of
the evidence. Ans. 6-8 and 11-12. Therefore, we adopt the Examiner’s
findings and underlying reasoning, which we incorporate herein by
reference.
Consequently, we find no error in the Examiner’s rejections of claims
2, 4-9, and 13-14.
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CONCLUSION
The Examiner did not err with respect to the unpatentability rejections
of claims 1, 2, 4-9, and 11-14, and the rejections are sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, 4-9, and 11-14 is
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) (2011).
AFFIRMED

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