Ex Parte KUENZNER et al

Patent Trial and Appeal Board

May 1, 2018

12983490 (P.T.A.B. May. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/983,490 01/03/2011
23911 7590 05/03/2018
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.
080437.62975US 1474
EXAMINER
CHUNG, ANDREW
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
05/03/2018 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 and ARMIN DISTLER
Appeal2016-007838
Application 12/983,490 1
Technology Center 2100
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
JOSEPH D. LENTIVECH, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was
conducted on April 24, 2018.
We affirm-in-part.
1 Appellants identify the real party in interest as Bayerische Motoren
Aktiengesellschaft (App. Br. 2).
Appeal2016-007838
Application 12/983,490
STATEMENT OF THE CASE
Appellants' invention is directed to "a motor vehicle operating
device" (Spec. i-f 3).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A motor vehicle operating device, comprising:
a display device;
an operating element; and
a control device, the display device, operating element
and control device being operatively configured such that an
operating element symbol, having an outlined shape that
corresponds to a shape of the operating element, is displayed on
each of a plurality of menu levels that are displayed on the
display device, menu items of hierarchical menu structure being
selectable using the operating element, wherein
selection of a menu item from a plurality of menu items
selectable based upon a rotating degree of freedom of the
operating element is displayed with a line extending from the
operating element symbol in a direction of a selected menu item
representation which is part of a plurality of selectable menu
item representations, such that an orientation of the line
between the operating element symbol and each menu item is
different,
an operating degree of freedom, corresponding to
different enabled operations of the operating element that when
executed lead from one menu level or from one hierarchical
menu structure to another menu level or to another hierarchical
menu structure, is displayed within the operating element
symbol, and
multiple menu levels or hierarchical menu structures are
concurrently displayed on the display device.
REFERENCES and REJECTIONS
The Examiner provisionally rejected claims 1---6, 8-13, and 16-18
under the doctrine of non-statutory double patenting over claims 1, 3-5, 7,
2
Appeal2016-007838
Application 12/983,490
12, 14, 15, 17, and 19 of co-pending application US 12/983,498, BMW
Owner's Manual ("BMW"), and Cieler (US 2006/0250577 Al, publ. Nov. 9,
2006) (Non-Final Act. 3-7).
The Examiner provisionally rejected claims 3-6, 8-11, 17, and 18
under the doctrine of non-statutory double patenting over claims 3, 4, 7, 10,
and 19 of co-pending application US 12/983,498, BMW, Cieler, and Audi
A6/A6 Avant Quick Reference Guide, Audi AG, 2007 ("Audi") (Non-Final
Act. 7-10).
The Examiner rejected claims 1-7, 12, 13, and 16-19 under 35 U.S.C.
§ 103(a) based upon the teachings of Audi, BMW, and Cieler (Non-Final
Act. 10-22).
The Examiner rejected claims 8-10, 14, 15, and 20 under 35 U.S.C.
§ 103(a) based upon the teachings of Audi, BMW, Cieler, and Nezu (US
2006/0025920 Al, publ. Feb. 2, 2006) (Non-Final Act. 22-26).
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) based upon
the teachings of Audi, BMW, Cieler, Nezu, and Kim (US 2006/0279541 Al,
publ. Dec. 14, 2006) (Non-Final Act. 26-27).
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) based upon
the teachings of Audi, BMW, Cieler, and Kim (Non Final Act. 27-28).
ANALYSIS
Double Patenting
The Examiner provisionally rejected claims 1---6, 8-13, and 16-18
under the doctrine of non-statutory double patenting over Appellants' co-
pending application US 12/983,498, BMW, and Cieler (Non-Final Act.
3-7). The Examiner also provisionally rejected claims 3-6, 8-11, 17, and
3
Appeal2016-007838
Application 12/983,490
18 under the doctrine of non-statutory double patenting over co-pending
application US 12/983,498, BMW, Cieler, and Audi (Non-Final Act. 7-10).
Appellants have not addressed these issues as co-pending application
US 12/983,498 is pending (App. Br. 36). We therefore summarily sustain
these rejections.
35 u.s.c. § 103
Appellants contend the Examiner erred in finding Audi teaches the
claimed limitation "an operating degree of freedom ... is displayed within
the operating element symbol" (emphasis added) (App. Br. 16-19; Reply Br.
5) and as shown in Appellants' Figures 3 and 4 (App. Br. 13-14). We agree.
The Examiner finds it is unclear whether the operating degree of
freedom is "a physical object located inside the operating element symbol or
a functionality exhibited by the operating element symbol" (Ans. 4). We do
not agree. As Appellants assert, the operating degree of freedom is an
"element of the menu structure displayed within the operating element
symbol," and thus "correspond[ s] to operations that can be actuated by a
user on an operating device" (Reply Br. 4; App. Br. 16-19). Thus, there is
nothing ambiguous about the claim language (Reply Br. 4). We also agree
neither Audi nor BMW, alone or in combination, disclose this feature (App.
Br. 10-25; Reply Br. 2-5).
Therefore, on the record before us, we do not sustain the Examiner's
rejection of independent claims 1, 12, and 16, which contain substantially
the same limitation and were argued together (App. Br. 10-25), and claims
2-11, 13-15, and 17-21, dependent therefrom.
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Appeal2016-007838
Application 12/983,490
DECISION
The Examiner's rejection of claims 1-6, 8-13, and 16-18 under the
doctrine of non-statutory double patenting is affirmed.
The Examiner's rejection of claims 1-21 as obvious under 35 U.S.C.
§ 103 is reversed.
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-IN-PART
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