Ex Parte Dahl

Board of Patent Appeals and Interferences

Feb 24, 2006

09976683 (B.P.A.I. Feb. 24, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Andrew A. Dahl
____________
Appeal No. 2005-2268
Application No. 09/976,683
____________
ON BRIEF
____________
Before McKELVEY, Senior Administrative Patent Judge, and BARRY and MacDONALD,
Administrative Patent Judges.
BARRY, Administrative Patent Judge.
A patent examiner finally rejected claims 1-13. The appellant appeals therefrom
under 35 U.S.C. § 134(a). We affirm.
I. FINDINGS OF FACT
A. Invention
1. The invention concerns information kiosks.
2. Large billboards are used for advertising in public places such as airports,
malls, and plazas. (Spec., p. 1, ll. 18-19.)
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3. Although electronic displays are sometimes used for the same purpose, (id. at
ll. 19-20), renting space in such places is costly. (Id. at p. 2, ll. 1-2.)
4. Furthermore, according to the appellant's specification ("the specification"), the
hardware necessary to display videos on electronic displays is also expensive. (Id. at ll.
2-3.)
5. The appellant's invention mounts a large electronic screen to an interactive
terminal. The screen normally displays an image for viewing by passersby. (Id. at
ll. 19-20.)
6. The terminal is operated via a touch screen or a key pad. When a person
steps up to the terminal and touches its touch screen or key pad, the lowermost section
of the screen displays a user interface. (Id. at p. 3, ll. 4-7.)
7. When the terminal is in use, furthermore, chromogenic privacy panels are
rendered opaque to block viewing of the user interface by passersby. (Id. at p. 11, ll. 7-
9.)
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8. According to the specification, combining the electronic screen and the
interactive terminal, maximizes usage of display hardware "to improve its cost
effectiveness and to enhance its commercial value by providing other modes of
commercial promotion." (Id. at p. 2, ll. 6-8.)
B. Rejections
1. Claims 1, 2, 4-7, and 9 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent No. 6,543,684 ("White"). The examiner also cites
U.S. Patent No. 6,603,447 ("Ito") to rebut arguments made by the appellant in his
appeal brief.
2. Claims 8, 10, 11, and 13 stand rejected as unpatentable under § 103(a) as
obvious over White and U.S. Patent No. 6,536,658 ("Rantze"). The examiner also cites
Ito to rebut arguments made by the appellant in his brief.
3. Claims 3 and 12 stand rejected as unpatentable under § 103(a) as obvious
over White; Rantze; and U.S. Patent No. 6,239,898 ("Byker"). The examiner also cites
Ito to rebut arguments made by the appellant in his appeal brief.
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C. Representative Claims
1. "[T]o assure separate review by the Board of individual claims within each
group of claims subject to a common ground of rejection, an appellant's brief to the
Board must contain a clear statement for each rejection: (a) asserting that the
patentability of claims within the group of claims subject to this rejection do not stand or
fall together, and (b) identifying which individual claim or claims within the group are
separately patentable and the reasons why the examiner's rejection should not be
sustained." In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir.
2002) (citing 37 C.F.R. §1.192(c)(7)). "If the brief fails to meet either requirement, the
Board is free to select a single claim from each group of claims subject to a common
ground of rejection as representative of all claims in that group and to decide the appeal
of that rejection based solely on the selected representative claim." Id., 63 USPQ2d at
1465.
2. The appellant stipulates, "The claims grouped as in the rejections stand or fall
together." (Appeal Br. at 3.) Accordingly, we select claims 1, 8, and 3 from the groups
as representative of the claims therein.
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3. Claim 1 follows (with references to corresponding element of the appellant's
figures or passages of his specification added thereto):
1. The combination of a display with an interactive terminal
comprising:
a large area electronic display [12] able to exhibit large scale
images poster sized viewable at substantial distances by passers by [sic],
on the order of 42 inches diagonal or larger, said display mounted on a
base [16];
an interactive terminal computer [18] having at least one peripheral
device [28, 30, or 36] enabling interactive access to store data in said
interactive terminal computer;
such display connected to said computer which generates signals
normally producing a display image occupying the complete area of said
electronic display in one mode [p. 5, ll. 10-11], and alternatively in another
mode, generating display images confined to a lower section [32] of said
electronic display [p. 5, ll. 21-22];
said interactive terminal computer having at least one
peripheral [28, 30, or 36] connected thereto enabling interactive use by
reference to said display image confined to said lower section [32] of said
electronic display.
4. Claim 2 follows (with references to corresponding element of the appellant's
figures or passages of his specification added thereto):
2. The combination according to claim 1 further including a pair of
screen panels [14], each mounted on a respective side of said lower
section [32] of said electronic display.
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5. Claim 3 follows (with references to corresponding element of the appellant's
figures or passages of his specification added thereto):
3. The combination according to claim 2 wherein said screen
panels [14] are electronically changeable from a transparent to an opaque
state, said panels electronically controlled by said computer to be opaque
during use of said interactive terminal computer [18].
6. Claim 8 follows (with references to corresponding element of the appellant's
figures or passages of his specification added thereto):
8. The combination according to claim 1 further including a motion-
proximity detector [26] generating a signal upon approach of a passerby to
a predetermined closeness, said computer responsive thereto to switch
between said modes of display to modify a display image normally
exhibited by said electronic display [12].
D. Prior Art
1. White is prior art under § 102(e).
2. White relates to "information retail terminals such as kiosk-type devices. Such
kiosks are generally located throughout the shopping area of the retail store." Col. 1,
ll. 25-27.
3. White describes a "customer service workstation (CSW) 40. . . ." Col. 4, ll. 39-
40. "The CSW 40 includes a display 44. . . . The display 44 is preferably a large,
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high-quality LCD as is known in the art, but can be any type of display." Id. at ll. 55-62
(bolding added).
4. White does not expressly mention that its large display has a width on the
order of 42 inches.
5. According to White, however, the large display can be used for advertising,
i.e., to show "a promotional program, . . . program video, and the like." Col. 8, ll. 1-2
(emphasis added).
6. A display would have to be large enough to be noticed by passersby.
7. 42-inch-wide displays were known in the art. Ito, col. 3, ll. 53-54.
8. Because White invites the use of any type of display, and a 42-inch-wide
display would have made White's advertising promotions noticeable to passersby, we
find that those skilled in the art would have been motivated to employ a display of any
suitable size, including a 42-inch-wide display, with White's workstation.
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9. Figure 2 of White shows that "the display 44 of the CSW 40 ha[s] a display
area 70." Col. 7, ll. 55-57. According to White, [t]he screen depicted in FIG. 2 may be
termed a customer usage mode. The customer usage mode screen is typically shown
when a consumer is ready to use the CSW 40 and when the CSW 40 is in use." Col. 7,
ll. 63-67.
10. White teaches switching between to modes of display, viz., (1) the customer
usage mode and (2) an advertising promotional mode. Regarding the latter mode,
"[w]hen the CSW 40 is not in use, the customer usage mode screen may be replaced by
a promotional program, . . . program video, and the like." Col. 7, l. 67 - col. 8, l. 2.
11. White explains that "[t]he type, size, and number of windows, areas, or
regions [in its display area] are not absolute and may vary according to mode or usage."
Col. 7, ll. 61-63.
12. White does not mention whether the promotional program encompasses its
entire display area.
13. A promotional program would have to be large enough to be noticed by
passersby.
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14. Rantze is prior art under § 102(e).
15. Rantze relates to "information retail terminals such as kiosk-type devices.
Such information retails terminals are generally located throughout the shopping area of
the retail store ." Col. 1, ll. 27-30.
16. Rantze explains that "it is desirable to provide a retail terminal that can be
configured to perform in such various modes depending on the position or distance and
the movement of the customer relative the retail terminal." Col. 2, ll. 54-57.
17. Rantze employs a transmitter and detector, col. 6, ll. 30-31, to operate in
various modes. Specifically, "operation of the transmitter 18 and detector 20 (i.e. the
detection of, proximity or distance to, and/or movement relative the kiosk 10 of a
person) provides the kiosk 10 with information that may change the mode of operation
of the kiosk 10. . . ." Col. 7, ll. 35-38.
18. White's customer usage screen "includes a personal identification
number (PIN) area 84 for entry of [a] [customer] loyalty ID. As well, . . . the PIN area 84
may be used to enter the PIN for a user's credit/debit/ATM card or the like." Col. 10,
ll. 15-19. In the reference's customer usage mode, customers "enter[ ] their loyalty ID or
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PIN as the case may be via the video keypad 86 within the PIN area 84 via the
touch-screen 60, id. at ll. 19-21, of White's display.
19. In White, opaque "barriers 87 and 88 . . . form a physical privacy shield about
the video keypad 86 that blocks a third party from seeing the video keypad 86 and thus
a user's PIN during PIN entry." Col. 11, ll. 39-42.
20. White does not expressly mention that its barriers can be changed between
opaque and transparent states.
21. In its advertising mode, when White's workstation is showing a promotional
program rather than interacting with a user, displaying a video keypad is unnecessary
and would reduce from the space available for the promotional program, which would
make the program less noticeable to passersby.
22. In its advertising mode, when White's workstation is showing the promotional
program rather than interacting with a user, opaque barriers would undesirably obscure
a passerby's view of the program.
23. Byker is prior art under § 102(e).
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24. Byker describes an "electrochromic . . . panel or partition in the interior of a
building. . . ." Col. 3, ll. 25-27. The panel may be transparent or "may be darkened, as
desired, for privacy purposes." Col. 2, ll. 21-22. More specifically, the panel "includes a
thin layer 14 of an electrochromic medium disposed between two glass or plastic
transparent substrates 16 and 18. When electrical potential is applied to the
electrochromic medium 14, the electrochromic medium darkens and begins to absorb
light. The higher the voltage, the darker the [panel] becomes. When the electrical
voltage is decreased to zero, the [panel] returns to its clear state." Id. at ll. 38-45.
25. The references establish the level of ordinary skill in the art. See In re GPAC
Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (finding that the
Board of Patent Appeals and Interference did not err in concluding that the level of
ordinary skill was best determined by the references of record); In re Oelrich, 579 F.2d
86, 91, 198 USPQ 210, 214 (CCPA 1978) ("[T]he PTO usually must evaluate ... the
level of ordinary skill solely on the cold words of the literature.").
II. DISCUSSION
We address the claims in the following order:
• Group 1: claims 1, 2, 4-7, and 9
• Group 2: claims 8, 10, 11, and 13
• Group 3: claims 3 and 12.
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Application No. 09/976,683
A. CLAIMS 1, 2, 4-7, AND 9
The appellant argues, "there is no suggestion that [White's] entire screen area
have a single image displayed in one mode of operation. Each area is described in
White et al. as remaining dedicated to a certain type of image." (Appeal Br. at 4.)
In addressing the point of contention, we conduct a two-step analysis. First, we
construe the representative claim at issue to determine its scope. Second, we
determine whether the subject matter of the construed claim would have been obvious.
1. Claim Construction
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, we "give claims their broadest reasonable
construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir.
2000).
Here, claim 1 recites in pertinent part the following limitations: "normally
producing a display image occupying the complete area of said electronic display in one
mode. . . ." Giving the representative claim its broadest, reasonable construction, the
limitations require showing an image that occupies the entire area of a display.
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2. Obviousness Determination
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Massingill, at *3. The question
of obviousness is "based on underlying factual determinations including . . . what th[e]
prior art teaches explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59
USPQ2d 1693, 1696 (Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-
18, 148 USPQ 459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614,
1616 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995)). "'A prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter to a
person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, because White's display shows a promotional program in its advertising
mode, and a promotional program would have large enough to be noticed by passersby,
we find that teachings from the prior art would appear to have suggested showing
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1We have not overlooked the appellant's argument to the effect that White does
not expressly describe a display having a width of 42-inches. Relying on Ito's 42-inch
display, however, the examiner had a complete response.
promotional images that occupy White's entire display area. Therefore, we affirm the
rejection of claim 1 and of claims 2, 4-7, and 9, which fall therewith.1
B. CLAIMS 8, 10, 11, AND 13
The examiner correctly finds, "White et al. teaches of method of using an
electronic display both as an electronic billboard and as a display for an interactive
terminal, figure 4, column 8 Iines 3-27. . . ." (Examiner's Answer at 6.) He further
correctly finds, "[t]he device of Rantze switches between various mode of operation
based on . . . sensed motion. . . ." (Id. at 7.) The appellant argues, "[w]hile Rantz [sic]
contemplates some change in mode, there is no suggestion of a change in the display
in different areas of a screen." (Appeal Br. at 5.)
1. Claim Construction
Claim 8 recites in pertinent part the following limitations: "a motion-proximity
detector generating a signal upon approach of a passerby to a predetermined
closeness, said computer responsive thereto to switch between said modes of display
to modify a display image normally exhibited by said electronic display." Giving the
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representative claim its broadest, reasonable construction, the limitations include
switching between modes of display in response to detecting the approach of a
passerby.
2. Obviousness Determination
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of references." In re
Merck, 800 F.2d, 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)). "'Rather, the test is what the
combined teachings of the references would have suggested to those of ordinary skill in
the art.'" Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ
881, 886-87 (Fed. Cir. 1985) (quoting Keller, 642 F.2d at 425, 208 USPQ at 881). Of
course, “[w]hen determining the patentability of a claimed invention which combines two
known elements, 'the question is whether there is something in the prior art as a whole
to suggest the desirability, and thus the obviousness, of making the combination.'" In re
Beattie, 974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting
Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1462,
221 USPQ 481, 488 (Fed. Cir. 1984)).
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Here, because White switches between modes of display, and Rantze teaches
the desirability of switching between modes depending on the position or distance and
the movement of a customer, we find that the combined teachings of the references
would have suggested switching between modes of display in response to detecting the
approach of a passerby. In short, the appellant has merely used known elements for
their intended purposes to achieve expected results. Therefore, we affirm the
obviousness rejection of claim 8 and of claims 10, 11, and 13, which fall therewith.
C. CLAIMS 3 AND 12
The examiner correctly concludes, "[i]t would have been obvious to the skilled
artisan at the time of the invention to combine replace the privacy panel of White with
the privacy panel of Byker because the[ privacy panels] solve the same problem of
privacy. . . ." (Examiner's Answer at 8.) The appellant argues, "White et al. provides
screens only for the image of a key pad area 86, which always displays an image of a
key pad. There would thus never be a need for transparent panels to aid in viewing the
image in that area." (Appeal Br. at 5.)
1. Claim Construction
Claim 3 recites in pertinent part the following limitations: "said screen panels are
electronically changeable from a transparent to an opaque state, said panels
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Application No. 09/976,683
electronically controlled by said computer to be opaque during use of said interactive
terminal computer. " Giving the representative claim its broadest, reasonable
construction, the limitations require privacy panels that can be changed between
opaque and transparent states.
2. Obviousness Determination
"The suggestion or motivation to combine references does not have to be stated
expressly; rather it may be shown by reference to the prior art itself, to the nature of the
problem solved by the claimed invention, or to the knowledge of one of ordinary skill in
the art.'" Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1221-22, 68 USPQ2d 1263, 1276 (Fed. Cir.2003) (quoting Beckson Marine, Inc. v.
NFM, Inc., 292 F.3d 718, 728 [63 USPQ2d 1031] (Fed. Cir. 2002)). In other words, one
of ordinary skill in the art knows how to use known devices for their intended purpose to
achieve an expected result.
Here, one of ordinary skill in the art would have recognized the desirability of
forming White's barriers 87 and 88 from electrochromic panels as taught by Byker. In
White's customer usage mode, one of ordinary skill in the art would have known from
the record that the barriers could be darkened to form an opaque privacy shield about
the video keypad of White's workstation. In White's advertising mode, the barriers could
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Application No. 09/976,683
be made transparent so as not to obscure a promotional program being shown on the
display.
Because one of ordinary skill in the art would have recognized that
electrochromic panels could be darkened to form an opaque privacy shield about
White's video keypad to blocks a third party from seeing a user's entry of a PIN, and
such panels could be made transparent so as not to obscure a promotional program
being displayed, we conclude that those skilled in the art would have been motivated to
embody White's barriers as electrochromic panels. Therefore, we affirm the
obviousness rejection of claim 3 and of claim 12, which falls therewith.
III. CONCLUSION
In summary, the rejections of claims 1-13 under § 103(a) are affirmed.

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No time for taking any action connected with this appeal may be extended under
37 C.F.R. § 1.136(a).
AFFIRMED
FRED E. McKELVEY )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN E. MacDONALD )
Administrative Patent Judge )
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JOHN R. BENEFIEL
280 DAINES ST.
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