Ex Parte Carvajal et al

Patent Trial and Appeal Board

Aug 5, 2016

13414259 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/414,259
71016 7590
Bose Corporation
Patent Group
FILING DATE
03/07/2012
08/09/2016
Mountain Road, MS 3B 1
Framingham, MA 01701
FIRST NAMED INVENTOR
Santiago Carvajal
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.
H-09-019-US3 6906
EXAMINER
BHARGA VA, ANIL K
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
docket@bose.com
designs@bose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANTIAGO CARVAJAL, ERICE. DOLECKI,
NEIL W. GRIFFITHS, JOHN MICHAEL SAKALOWSKY,
CONOR SHEEHAN, and BENJAMIN DOUGLASS BURGE 1
Appeal 2015-000136
Application 13/414,259
Technology Center 2100
Before CAROLYN D. THOMAS, KRISTEN L. DROESCH, and
KEVIN C. TROCK, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-12 and 14--30. Claim 13 has been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants indicate the real party in interest is Bose Corporation. Br. 2.
Appeal 2015-000136
Application 13/414,259
BACKGROUND
The disclosed inventions relate to a user interface for an audio/visual
device. Spec. i-f 7, Abstract. Representative independent claims 1, 14, and
20, reproduced from the Claims Appendix of the Appeal Brief, read as
follows (disputed limitations in italics):
1. An apparatus capable of causing a visual portion of an
audio/visual program received from one of a plurality of input
sources to be displayed on a display element, the apparatus
compnsmg:
a remote control comprising:
a casmg;
a first manually-operable control disposed on the casing,
wherein the first manually-operable control is
associated with a first menu having a first plurality of
menu items, and wherein the first manually-operable
control is operable to enable selection of one menu item
of the first plurality of menu items; and
a second manually-operable control disposed on the casing,
wherein the second manually-operable control is
associated with a second menu having a second
plurality of menu items, and wherein the second
manually-operable control is operable to enable
selection of one menu item of the second plurality of
menu items;
a processing device able to receive indications from the remote
control of either of the first or second manually-operable
controls being operated, and able to cause the visual portion
to be displayed on the display element; and
a storage accessible to the processing device and storing a
sequence of instructions that when executed by the
processing device, causes the processing device to cause the
first menu to be displayed on the display element and cause
the second menu to be displayed on the display element in a
manner in which the arrangement of the first and second
menus corresponds to the arrangement of the first and
second manually-operable controls as disposed on the
casing.
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Application 13/414,259
14. An apparatus capable of causing a visual portion of an
audio/visual program received from one of a plurality of
sources to be displayed on a display element, the apparatus
compnsmg:
a remote control comprising:
a casing; and
a first manually-operable control disposed on the
casing, wherein the first manually-operable control is
associated with a first menu having a first plurality of
menu items, and wherein the first manually-operable
control is operable to enable selection of one menu item of
the first plurality of menu items;
a processing device able to receive indications from the
remote control of the first manually-operable control being
operated, and able to cause the visual portion to be played on the
display element; and
a storage accessible to the processing device and storing a
sequence of instructions that when executed by the processing
device, causes the processing device to:
cause the visual portion of the audio/visual program to
be displayed on the display element; and
cause the first menu to be displayed on the display
element in a manner in \vhich the first menu is positioned
on the display element about substantially all of the
periphery of the display element, and in a manner in which
the shape of the first menu corresponds to the shape of the
first manually-operable control as disposed on the casing.
20. An apparatus comprising:
a data processor;
a non-transitory computer-readable medium storing
instructions executable by the data processor to:
cause a visual representation of an arrangement of
elements associated with a set of content sources to be
displayed on a visual interface of a multimedia player,
the visual representation of the arrangement of
elements including a visual representation of a first
element associated with a first content source of the set;
cause a visual representation of an element selector to be
moved about the visual representation of the
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Application 13/414,259
arrangement of elements to provide visual feedback
responsive to processing of a first signal received from
a user interface unit that is remotely coupled to the
apparatus, the first signal being representative of a
contact motion that is sensed relative to absolute
locations on a touch-sensitive surface; and
cause a visual portion of an audio/video program
provided by the first content source to be displayed on
the visual inteiface of the multimedia player responsive
to processing of a second signal received from the user
interface unit, the second signal being representative
of a change in contact pressure on the touch-sensitive
surface.
REJECTIONS
Claims 1-3, 8-10, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Matsui et al. (US 2007 /0273649 Al; published Nov. 29,
2007) ("Matsui") and Hirata et al. (US 2008/0204402 Al; published Aug.
28, 2008) ("Hirata").
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Matsui, Hirata, and Skinner (US 2006/0119585 Al; published June 8, 2006).
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Matsui, Hirata, and Nguyen (US 7,036,091 Bl; issued
Apr. 25, 2006).
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Matsui, Hirata, Nguyen, and Kawamura et al. (US 5,371,553; issued Dec. 6,
1994) ("Kawamura").
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Matsui, Hirata, and Segal et al. (US 6,765,557 Bl; issued July 20,
2004) ("Segal").
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Application 13/414,259
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Matsui and Song et al. (US 2007 /0220440 Al; published
Sept. 20, 2007) ("Song").
Claims 16-18, 20, 24, 25, 27, 28, and 30 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Matsui, Song, and Hirata.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Matsui, Song, Hirata, and Nguyen.
Claims 21-23, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Matsui, Song, Hirata, and Segal.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Matsui, Song, Hirata, and Skinner.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Appeal Brief and the Examiner's Answer. We disagree
with Appellants' conclusions, and agree with, and adopt as our own, the
Examiner's findings and conclusions of law. Specific arguments are
highlighted and addressed below for emphasis.
Claims 1-12
We are not persuaded by Appellants' argument that one skilled in the
art viewing Matsui and Hirata would not modify the teachings of Matsui as
suggested by the Examiner. See Br. 5. Appellants' argument is conclusory
and unsupported by objective evidence (e.g., declaration by one skilled in
the art). Argument of counsel cannot take the place of evidence lacking in
the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Also not persuasive is Appellants' argument that Hirata does not
provide a disclosure which would motivate one skilled in the art to modify
how information is presented on Matsui's screen 800, which is completely
separate from the remote controller 4. See Br. 5-6. It is not necessary to
find precise teachings in the prior art directed to the specific subject matter
claimed because inferences and creative steps that a person of ordinary skill
in the art would employ can be taken into account. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). We further are not persuaded by
Appellants' suggestion that Hirata's teachings are limited to a one-piece
display screen integrated with touch sensitive strips (controllers), and
therefore, Hirata's teachings cannot be combined with Matsui's teachings of
a display screen that is separate from the remote controller. Rather "[a]
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect." EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir. 1985) (emphasis omitted). For these reasons, Appellants do not
persuade us of error in the Examiner's rejections of claim 1, and dependent
claims 2-12 not separately argued (see Br. 5---6).
Claims 14-19
Appellants argue that "it is not clear ... how one skilled in the art,
viewing Song, would be motivated to modify Fig[ ure] 24 of Matsui such
that [the] figure would disclose" "the first menu to be displayed on the
display element in a manner in which the first menu is positioned on the
display element about substantially all of the periphery of the display
element," as recited in claim 14. See Br. 6; Matsui Fig. 24; Song Figs. 5-7.
Appellants contend that modifying Matsui's GUI component 2401 in Figure
24 so that it is positioned about substantially all of the periphery of the
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Application 13/414,259
display would at least partially obscure GUI 2402 and the content playback.
See Br. 6. On this basis, Appellants argue that one skilled in the art would
not make the modification. See id.
Appellants' arguments are not persuasive because they are premised
upon modifying Matsui's menu so that it is positioned about substantially all
of the periphery of the display without making any modification to the
content displayed. Contrary to Appellants' arguments, one with ordinary
skill in the art would have also modified the teachings of Matsui by reducing
the size of the content display area to accommodate the menu positioned
about substantially all of the periphery of the display because Song teaches
or suggests a menu positioned about substantially all of the periphery of the
display with content displayed in windows 510, 520 that are smaller than the
entire display area, enabling the display of both the content and the menu.
See Song i-f 45, Figs. 5-7; see also Ans. 4--5 (discussing the teachings of
Song). "A person of ordinary skill is also a person of ordinary creativity, not
an automaton." KSR, 550 U.S. at 421. For this reason, Appellants do not
persuade us of error in the Examiner's rejections of claim 14, and dependent
claims 15-19 not separately argued (see Br. 5---6).
Claims 20-30
Appellants argue that Matsui does not teach or suggest
caus[ing] a visual portion of an audio/video program provided
by the first content source to be displayed on the visual interface
of the multimedia player responsive to processing of a second
signal received from the user interface unit, the second signal
being representative of a change in contact pressure on the touch-
sensitive surface,
as recited in claim 20. See Br. 5---6. Appellants contend that, based on
Matsui's disclosure, a user would be required to press operating member 42
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Application 13/414,259
in order to cause the visual portion of the content channel 8 to be displayed
on the screen 800, but member 42 is separate from member 41 on which a
user slides his finger to select a different channel. See Br. 5-6; Matsui Fig.
2. Appellants further argue Matsui's surface that can be touched and slid
upon to select a channel cannot be operated to cause that channel's visual
content to be displayed on a visual interface. See Br. 6.
Appellants' arguments are not persuasive because they are premised
incorrectly on a requirement that a single touch sensitive surface must be
utilized. The language of claim 20 does not limit "a touch sensitive surface"
to a single touch sensitive surface, and does not require that "the first signal
being representative of a contact motion that is sensed relative to absolute
locations on a touch sensitive surface" and "the second signal being
representative of a change in contact pressure on the touch-sensitive surface"
to be based on the same touch sensitive surface.
[A Jn indefinite article "a" or "an" in patent parlance carries the
meaning of "one or more" in open-ended claims containing the
transitional phrase "comprising.' ... Unless [a] claim is specific
as to the number of elements, the article "a" receives a singular
interpretation only in rare circumstances when the [applicant]
evinces a clear intent to so limit the article. . . . Under this
conventional rule, the claim limitation "a," without more,
requires at least one.
KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)
(citations omitted). Therefore, "a touch sensitive surface" carries the
meaning of one or more touch sensitive surfaces. For this reason, we are not
persuaded of error in the Examiner's rejections of claim 20, and dependent
claims 21-30 not separately argued (see Br. 5-7).
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DECISION
We AFFIRM the rejections of claims 1-12 and 14--30 as unpatentable
under 35 U.S.C. § 103(a) over the applied prior art.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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