11559639 (P.T.A.B. Feb. 7, 2013)

Ex Parte Jha et al

Patent Trial and Appeal BoardFeb 7, 2013

11559639 (P.T.A.B. Feb. 7, 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. 11/559,639 11/14/2006 Hemant Jha 7114-86767-US 4426 37123 7590 02/07/2013 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER SONG, DAEHO D ART UNIT PAPER NUMBER 2141 MAIL DATE DELIVERY MODE 02/07/2013 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HEMANT JHA, MANABU SAKAMOTO, and RYUTARO SAKAI ____________________ Appeal 2011-012317 Application 11/559,639 Technology Center 2100 ____________________ Before: JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012317 Application 11/559,639 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 5-8, 11-16, 18-23, and 26-27. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a tuning dial user interface. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A controller to select a command for operating an electronic system, comprising: a display to display a hierarchy of levels to a user, wherein a plurality of options for one level of the hierarchy of levels is displayed at a time, and wherein for each selection of a lower level all higher level hierarchies of the hierarchy of levels are displayed with the plurality of options; a physical dial to select the one of a plurality of options on the one level of the hierarchy of levels in response to a physical movement of the physical dial; a processing device to update the display of the hierarchy of levels in response to selection of the option by the user; and wherein in response to the user selecting the option on the one level, the processing device is adapted to perform one of: display another level of the hierarchy of levels, and generate the command corresponding to the option to be executed by the electronic system; wherein the display is adapted to display all options of the one level around a curved line; and Appeal 2011-012317 Application 11/559,639 3 wherein in response to the display of another level of the hierarchy of levels, the curved line moves inward toward the physical dial, and a new curved line is displayed with new options for the other level. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Reponen Waters Rogers US 2003/0197740 A1 US 2006/0184871 A1 US 2006/0195789 A1 Oct. 23, 2003 Aug. 17, 2006 Aug. 31, 2006 REJECTIONS Claims 1, 2, 5-8, 11, 12, 15, 16, 18, 19, 22, 23, and 26 stand rejected under 35 U.S.C §102(b) as being anticipated by Reponen. Claims 13, 14, 20, and 27 stand rejected under 35 U.S.C §103(a) as being unpatentable over Reponen and Rogers. Claim 21 stands rejected under 35 U.S.C §103(a) as being unpatentable over Reponen and Waters. ANALYSIS We note that the Examiner's Answer restates the statement of rejection from the Final Rejection and does not reformulate the rejection for the combination of dependent claims 3 and 4 into independent claim 1. We will consider the rejection of independent claim 1 as the combination of these separate rejections. Appellants argue that the Examiner has not shown that Reponen discloses or describes the limitation "in response to the display of another Appeal 2011-012317 Application 11/559,639 4 level of the hierarchy of levels, the curved line moves inward toward the physical dial, and a new curved line is displayed with new options for the other level" in independent claim 1. (App. Br. 16-19). We agree with Appellants. We find that the Examiner's statement of the rejection paints with a broad brush in making the anticipation rejection and we are left to speculate as to the precise details of how each argued claim limitation is expressly or inherently described by the portions Reponen identified by the Examiner. We note that the Board is a reviewing body and not a place of initial examination. Moreover, it is our view that the more rigorous requirements of § 102 essentially require a one-for-one mapping of each argued limitation to the corresponding portion of the reference, which the Examiner must identify with particularity. While the database hierarchy display of Reponen is similar to that of the claimed invention, Appellants' contend their claim recites the curved line moves inward towards the physical dial; whereas Reponen describes "expansion of ring 36" (App. Br. 18). We agree with Appellants' contention. Appellants further contend that the Examiner's identification of the decreasing diameter in ring 36 relative to the inner ring 46 refers to an image produced on the display and cannot be equated to the claimed "physical dial." (App. Br. 19). Again, we agree with Appellants' contention. The Examiner's responsive arguments at pages 10-11 again paint with a broad brush. Furthermore, we find error in the Examiner's identification of physical dial 28 which is not located towards the center of the displayed hierarchy as asserted by “the curved line of the inner ring 46 moves into and towards the physical dial 28 from the perspective of the physical dial Appeal 2011-012317 Application 11/559,639 5 28.” (App. Br. 11). Therefore, even if we were to find that Reponen describes moving inward, the physical dial is not located at this position. Therefore, the Examiner's proffered finding would not anticipate the invention as recited in independent claim 1. Therefore, we cannot sustain the rejection of independent claim 1. Appellants make similar arguments with respect to independent claims 7, 15, and 22. (App. Br. 20-32). We find Appellants' argument persuasive of error in the Examiner's finding of anticipation of each of the independent claims. Therefore, we cannot sustain the rejection of these claims and their respective dependent claims Obviousness Appellants rely upon the same arguments with respect to the obviousness rejection. Since the Examiner has not identified how the secondary reference in each of the obviousness rejections remedies the above-noted deficiencies, we cannot sustain the rejection of these claims. CONCLUSIONS OF LAW The Examiner erred in rejecting independent claims 1, 7, 15, and 22, and their respective dependent claims under anticipation. The Examiner erred in rejecting independent claims 13, 14, 20, 21, and 27 under obviousness. Appeal 2011-012317 Application 11/559,639 6 DECISION For the above reasons, the Examiner’s rejections of claims 1, 2, 5-8, 11-16, 18-23, and 26-27 based upon anticipation and obviousness are reversed. REVERSED pgc