Ex Parte Kuenzner

Patent Trial and Appeal Board

Jun 28, 2018

12761305 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/761,305 04/15/2010
23911 7590 07/02/2018
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Hermann Kuenzner
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.
080437.62282US 1867
EXAMINER
SADIO,INSA
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERMANN KUENZNER
Appeal2018-001043
Application 12/761,305
Technology Center 2600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellant indicates the real party in interest is Bayerische Motoren W erke
Aktiengesellschaft. App. Br. 1.
Appeal2018-001043
Application 12/761,305
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § I34(a) from a non-final rejection
of claim 1-7 and 12-16. Appellant has cancelled claims 8-11. App. Br.
18-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows ( emphases,
formatting, and bracketed material added):
1. A motor vehicle dialog system comprising[:]
a plurality of control keys arranged in a motor vehicle,
where the plurality of control keys includes a control key
[A.] assigned a/unction from a predefined set of
functions such that the function is executed upon
actuation of the control key, and
[B.] wherein the control key, in addition to the function,
is selectively assigned a particular setting profile
that
[ i.] is not specific to the function and
[ii.] is effective for the execution of a plurality of
different functions, and
[iii.] wherein the setting profile comprises user-
defined setting values that are usable for
each of the plurality of different functions.
App. Br. 17 (Claims Appendix).
Rejection
The Examiner rejected claims 1-7 and 12-16 under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Kuenzner et al. (US
2007/0242050 Al; pub. Oct. 18, 2007) and Kim et al. (US 2006/0056613
Al; pub. Mar. 16, 2006). Non-final Act. 3---6 (July 23, 2014).
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Application 12/761,305
Appellant does not argue separate patentability for claims 2-7 and 12-
16. Except for our ultimate decision, we do not discuss claims 2-7 and 12-
16 further herein.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant's conclusions.
A.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
The prior art combination fails to teach or suggest assigning both
a specific function and a non-function-specific setting profile to
a single control key[.]
App. Br. 7 (Appellant's emphasis omitted; Panel emphasis added).
[NJ either reference teaches or suggest[ s] that both a function and
a setting profile are assignable to a single control key, as is
recited in independent claims 1 and 12. The fact that neither of
the relied-upon references teach or suggest the key inventive
feature of dual-assigning a function and a non-function-specific
setting profile to a single key renders the outstanding rejection
deficient on its face.
App. Br. 8.
Appellant's above contention does not persuade us that the Examiner
erred. Appellant's argument overlooks Appellant's admission that in
Kuenzner both a function and a parameter (i.e., setting) may be assigned to
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Appeal2018-001043
Application 12/761,305
the control key. App. Br. 5; Spec. ,r 3. Also, Appellant acknowledges that
Kim's sub-menu functions are settings. App. Br. 10-12. Further, Kim
describes that multiple of these "settings" are applied simultaneously within
a profile. Kim ,r 42. Furthermore, Kim describes a non-specific setting
profile as using the same profile (e.g., a ring type, a ring tone, a ringer
volume, a message alert, or a key volume) for different modes ( e.g., silent
mode, outdoor mode, or car-kit mode). Kim ,r 10.
Contrary to Appellant's argument, we conclude the combination of
the Kuenzner and Kim prior art references suggests or renders obvious
assigning both a specific function and a non-function-specific setting profile
to a single control key.
B.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
It is important to note that Kim, throughout its disclosure,
refers to settings like ring type, ring tone, a ringer volume,
message alert, key volume, etc. as being "functions," as opposed
to what one of ordinary skill in the art would understand them to
be, namely 'settings.'
App. Br. 10-11.
Appellant's above contention does not persuade us that the Examiner
erred. We agree with Appellant that Kim's sub-menu functions are not
"functions" as Appellant uses the term, but rather are "settings" (i.e.,
parameters) as Appellant describes that term. See Spec. ,r 3 8 ("If a favorite
key 30, which had been assigned a setting profile, is actuated, then all of the
setting parameters to which the setting values contained in the setting profile
relate, may be set to these setting values"). However, as Appellant
acknowledges "the outstanding rejection appears to agree that Kim's
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Appeal2018-001043
Application 12/761,305
'functions' are 'settings."' App. Br. 12. Instead, the Examiner finds the
claimed "function" is taught by Kuenzner at paragraph 21.
Kuenzner teaches ... a plurality of control keys ... where the
plurality of control keys includes a control key assigned a
function from a predefined set of functions . . . such that the
function is executed upon actuation of the control key.
Non-final Act. 3-6 (July 23, 2014). Further, Appellant acknowledges he
understands Kuenzner as providing this teaching. App. Br. 5 ( quoting
Spec. ,r 3).
C.
Further, Appellant argues the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because the rejection is not supported by sufficient
rationale that one of ordinary skill in the art would have been properly
motivated to combine Kuenzner and Kim. App. Br. 13-15.
As to Appellant's above contention, we disagree. We agree with
Appellant's general point of assertion that the motivation statement could
have been clearer. However, it is clear from Appellant's argument, that
Appellant understood Kim's sub-menu functions to be "settings" (App. Br.
10-12). See In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citations removed) (Holding that, although the "opinions in the
present appeal[] are not a model of clarity," the "path may reasonably be
discerned."). Therefore, we conclude Appellant understood the Examiner's
motivation statement (7/23/2014 Non-final Act. 4) to read as follows:
Therefore, it would have been obvious to a[ person ofJ
ordinary skill in the art at the time the invention ha[ d] been made
to combine Kuenzner's operating device with the teaching of
Kim's setting profile to assign [plural settings], so [as] to [a]pply
the [plural settings] to the mobile communication terminal for
sound output ([Kim ,r,r 28-29])).
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Application 12/761,305
Contrary to Appellant's argument, we conclude the Examiner's rationale is
sufficient. See, e.g., Kim ,r 28 (disclosing how Kim's invention allows a
single mode to simultaneously set a plurality of settings values).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-7 and 12-16 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-7 and 12-16 are not patentable.
DECISION
The Examiner's rejection of claims 1-7 and 12-16 is 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)(l )(iv).
AFFIRMED
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