Ex Parte Kuenzner

Board of Patent Appeals and Interferences

Feb 1, 2010

11032189 (B.P.A.I. Feb. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Hermann Kuenzner
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Appeal 2009-007559
Application 11/032,1891
Technology Center 2100
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Decided: February 1, 2010
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Before, JAY P. LUCAS, ST. JOHN COURTENAY III, and DEBRA K.
STEPHENS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 11, 2005. Appellant claims the benefit under
35 U.S.C. § 119 of German patent application 102 31 619.8, filed July 12,
2002. The real party in interest is Bayerische Motoren Werks
Aktiengesellschaft.
Appeal 2009-007559
Application 11/032,189

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1, 2, 4, 5, 7, 8, 10,
11, 13, and 14 under authority of 35 U.S.C. § 134(a). Claims 3, 6, 9, and 12
are cancelled (App. Br. 2, middle). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). The Oral
Hearing scheduled January 21, 2010 was waived.

We affirm-in-part the rejections.

Appellant’s invention relates to a method for controlling the amount
of information displayed on an information screen in a motor vehicle. In the
words of Appellant:
A method for controlling a screen display
system in vehicles is provided, including a setting
element or actuator that can be arbitrarily operated,
and information that can be displayed on a screen
according to the setting of the setting element.
According to the invention, the amount of image
information contained in the image information is
set by using the setting element. The method
graphical[ly] displays a hierarchical menu
structure consisting of menus, submenus, functions
and/or a functional value. The assignment of
different menu items to the amounts of image
information assigned to the settings of the setting
element ensues according to the frequency with
which the respective menu item has been selected
during preceding operations.
(Spec. 13).

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Application 11/032,189

Claim 1 is exemplary and is reproduced below:

1. A method for controlling an information
display screen in a motor vehicle using an actuator
operably coupled with the information display
screen, wherein image information is reproduced
on the screen as a function of a setting of the
actuator and wherein an amount of image
information contained in the image information is
set using the actuator, the method comprising the
acts of:

applying a hierarchical menu structure to a
graphic representation on the screen, the
hierarchical menu structure including menus,
submenus, functions and/or function values;

allocating different menu items in relation to
an amount of image information allocated to
settings of the actuator as a function of a frequency
with which a particular respective menu item was
selected during previous operating cases; and

additionally weighting the frequency as a
function of a duration during which a respective
menu item is selected.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Knoll US 5,732,368 Mar. 24, 1998
Blades US 5,420, 975 May 30, 1995
REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 2, 4, 5, 7, 8, 10 and 11 stand rejected under
35 U.S.C. § 102(b) for being anticipated by Knoll.
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Application 11/032,189

R2: Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Knoll in view of Blades.
Appellant contends that the claimed subject matter is not anticipated
by Knoll and that the claimed subject matter is not rendered obvious by
Knoll in combination with Blades, for failure of the references to teach
claimed limitations. The Examiner contends that each of the three groups of
claims is properly rejected.
The rejections will be reviewed in the order argued by Appellant.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). The
issue specifically turns on whether Knoll teaches weighting the frequency
with which a particular menu item was selected as a function of a duration
during which the menu item was selected. It also turns on whether Knoll
teaches altering the optical intensity of a menu item on the screen.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a method of controlling the amount of control
information displayed on a screen by turning an actuator, which can be a
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rotary switch (Spec. ¶¶ [0002], [0011]). Rotating the switch reduces the
number of menu items displayed on the screen, from a full choice to only
those items that the user often selects, in accordance with a statistical
evaluation of past choices (Spec. ¶¶ [0009], [0011]). In addition to the
frequency with which the user made past choices, the evaluation covers
the duration with which the menu item was selected; for example a radio
station listened to for 5 hours carries more weight in the evaluation than
one listened to for 2 hours (Spec. ¶ [0028]).
2. Knoll teaches a method for displaying a variable amount of information
on a motor vehicle display, where only frequently displayed information
may be offered to experienced users (Col. 1, l. 10; col. 2, l. 35). The
speed with which the user presses the keypad selection buttons indicates
the experience of the user (Col. 4, l. 40). The information choices, or the
way in which the information is displayed, are varied depending on the
experience of the user (Col. 4, l. 64).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
35 U.S.C. § 102(b)

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).
[U]nless a reference discloses within the four corners of
the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the
same way as recited in the claim, it cannot be said to
prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign et al., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(emphasis added).

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“This court has held in a number of decisions that a United States
patent speaks for all it discloses as of its filing date, even when used in
combination with other references.” In re Zenitz, 333 F.2d 924, 926 (CCPA,
1964) (internal citations omitted).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his evidence for a conclusion of unpatentability on pages
3 to 8 of the Examiner’s Answer. In opposition, Appellant presents a
number of arguments.

Arguments with respect to the rejection
of claim 1, 2, 5, 7, 8, 11 and 13
under 35 U.S.C. § 102(b)[R1]

The first argument addresses claim 1 and those claims dependent
thereon. Appellant argues that Knoll “fails to teach or suggest a duration
during which a respective menu item is selected.” (App. Br. 6, middle).
The Examiner contends that Knoll teaches the time interval between two
specified instants of actuation of the keypad is the duration as claimed (Ans.
8, bottom).
On analysis, and paraphrasing, the claim requires allocating an
amount of image information to a menu item based on a determination of the
frequency with which the menu item was selected previously. The
Examiner reads that frequency determination on Knoll’s teaching of
evaluating the frequency of the selection of items by pressing on the keypad.
We can accept that reading. However, the claim then requires that the said
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frequency is weighted as a function of the duration during which a menu
item is selected. (See FF #2). The Examiner reads that on the time between
actuations of the keypad in Knoll. We find that those keystrokes were used
to make the selection of the menu item and determine the frequency of its
selection. We do not find in Knoll a teaching of measuring the duration of
the selection of the menu item, when the claim term is fairly interpreted, nor
do we find that the frequency was weighted by the duration, as claimed.
In summary, we find that Appellant has demonstrated error in the
Examiner’s conclusion of unpatentability.

Arguments with respect to the rejection
of claims 4, 10 and 14
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) [R1, R2]

The Examiner has rejected claims 4 and 10 under 35 U.S.C. § 102 for
being anticipated by Knoll and claim 14 for being obvious over Knoll and
Blades. Appellant argues that Knoll fails to teach or suggest the feature of
claim 4 of altering an optical intensity with which a respective menu item is
represented on a screen using the actuator. (App. Br. 7, top).
Claim 4 does not contain the limitation of weighting the frequency as
a function of the duration of the selection of a menu item, discussed above.
It does specify that the optical intensity of a menu item is altered using the
actuator. Claims 10 and 14 are dependent on independent claim 4.
Though the Examiner has focused on Knoll’s teaching of varying the
color of the display, the same paragraph of Knoll teaches offering
alternatives of a continuous display or a periodically interrupted display
(Col. 6, ll. 1 to 9). Further, the duration of the periodic interruption can be
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varied based on fields in the programming. All of this is under the control of
the display processor and can vary based on the speed of actuation (Col. 5, l.
50). We find that varying the period of interruption of the display reads on
altering the optical intensity of claim 4.
We thus decline to find demonstrated error in the rejection of the
noted claims.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1, 2, 5, 7, 8, and 11 (under 35 U.S.C.
§ 102) and claim 13 (under 35 U.S.C. § 103). We do not find error in the
rejections of claims 4, 10, and 14.

DECISION
The Examiner’s rejections of claims 1, 2, 5, 7, 8, 11 (R1) and claim 13
(R2) is reversed. The rejections of claims 4 and 10 (R1) and claim 14 (R2)
are 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).

AFFIRMED-IN PART

peb
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Appeal 2009-007559
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