Ex Parte Brodersen et al

Patent Trial and Appeal Board

Aug 23, 2016

11549085 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111549,085 10/12/2006
26183 7590 08/25/2016
FISH & RICHARDSON P,C (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Rainer Brodersen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
18814-0028001/P4428US1 6385
EXAMINER
HARRIS, DOROTHY H
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER BRODERSEN, RACHEL CLARE GOLDEEN,
MIHNEA CALIN P ACURARIU, and JEFFREY MA
Appeal2014-008186
Application 11/549,085
Technology Center 2600
Before CARL W. WHITEHEAD JR., BRUCE R. WINSOR, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15, 21-26, 31-35, 38, and 39, which constitute all of
the claims currently pending in the application. An oral hearing was
conducted on August 16, 2016. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 A transcript of the oral hearing will be forthcoming.
Appeal2014-008186
Application 11/549,085
EXEMPLARY CLAIM
Claim 1 is exemplary of the subject matter on appeal:
1. A method, comprising:
displaying a video image in a video environment on a
display of a device;
receiving a first command to display a navigation menu;
in response to the first command:
rotating in depth about an axis that lies in a plane of
the video image a portion of the video environment
containing the video image, where the rotating causes the
video image as a whole to rotate about the axis and
removes presentation of the video image from a portion of
the display; and
while presenting the rotated video image,
concurrently presenting at least a portion of a navigation
menu in the portion of the display where presentation of
the video image was removed due to the rotating.
REJECTIONS ON APPEAL
Claims 1-12, 15, 31-34, 38, and 39 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Reynolds (US 6,563,515
Bl; May 13, 2003) and Nagahara (US 5,898,435; Apr. 27, 1999).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Reynolds, Nagahara, and Krakirian (US
2006/0149709 Al; July 6, 2006), and Rosin (US 6,028,600; Feb. 22, 2000).
Claims 21-25 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Reynolds, Nagahara, and Branton (US
2006/0028454 Al; Feb. 9, 2006).
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Appeal2014-008186
Application 11/549,085
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Reynolds, Nagahara, Branton, Krakirian, and Rosin.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Reynolds, Nagahara, and Krakirian.
ISSUE
Appellants' contentions present us with the following dispositive
issue: 2 Did the Examiner set forth sufficient articulate reasoning, with
rational underpinnings, to support combining the teachings of Reynolds and
Nagahara?
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellants' contentions and the evidence of record. Appellants have
persuaded us the Examiner has failed to establish the claims are unpatentable
over the cited prior art.
The Examiner's 35 U.S.C. § 103(a) rejections of aH of the claims
relies on the combination of Reynolds and Nagahara. See Final Act. 3-25.
The Examiner concludes one of ordinary skill in the art would have been
motivated to modify the teachings of Reynolds to include Nagahara's
teaching of an animation of an initial image to simulate opening a door in
order to provide the user with a visual transitional connection of the
response to the user input. See Final Act. 5. The Examiner further
concludes that Appellants' claim a combination that is no more than the
predictable use of prior elements according to their established functions
2 We do not reach the additional contentions presented by Appellants
because the identified issue is dispositive of the appeal.
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Appeal2014-008186
Application 11/549,085
resulting in the simple substation of one known element for another or the
mere application of a known technique to a piece of prior art ready for
improvement. Ans. 4.
Appellants contend the Examiner fails to provide a proper motivation
to combine Reynolds and Nagahara. App. Br. 20-24; Reply Br. 1---6.
Specifically, Appellants argue that Reynolds already provides a visual
transitional connection; therefore, there is no reason to further modify
Reynolds to provide such a transition. App. Br. 21. Appellants additionally
argue such a modification would amount to extra work for no apparent
reason. Id. Appellants further argue the claimed feature does not result
from the simple substitution of one known element for another or the mere
application of a known technique because a "simple substitution" of
Nagahara's disclosed feature into Reynolds would not result in the claimed
invention. Reply Br. 5---6.
"[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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
agree with Appellants that the Examiner's reason to combine does not have
the requisite rational underpinning required to support the legal conclusion
of obviousness. As the Appellants note, Reynolds already describes a visual
transition responsive to user input-re-proportion (i.e., shrink) the amount
of screen used by current channel 77 such that the main display screen 72
displays both program guide display 70 and current channel 77. See
Reynolds 7:41--46. The Examiner's rationale does not adequately explain
why one skilled in the art would have had reason to further modify Reynolds
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Appeal2014-008186
Application 11/549,085
to provide the transition taught by Nagahara. Nor does the Examiner
establish the combination is merely a simple substitution of one element for
another. Nagahara describes a transition from a selected menu item to the
next level of the menu hierarchy; the transition displays a zoomed-in image
of the selected menu item as a double door opening. See Nagahara Figs. 19,
20, 7:54--67. We agree with Appellants that it would require more than a
simple substitution of Reynold's transition of shrinking of an amount of
screen used by a current channel with Nagahara's transition of a display of
an image of a double door opening on a selected menu item to arrive at the
claimed rotating a video image as a whole about an axis that lies in a plane
of the video. The Examiner's reasons to combine the references essentially
amount to a conclusion that one skilled in the art could combine the
teachings to result in the claimed invention and is insufficient to explain why
one skilled in the art would have combined the teachings of the references.
For the reasons stated above, AppeUants persuade us of error in the 3 5
U.S.C. § 103(a) rejections of claims 1-15, 21-26, 31-35, 38, and 39, which
all rely on the combination of Reynolds and Nagahara. Accordingly, we do
not sustain these rejections.
DECISION
We reverse the Examiner's decision to reject claims 1-15, 21-26, 31-
35, 38, and 39.
REVERSED
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