Ex Parte Kuhn et al

Patent Trial and Appeal Board

Feb 22, 2017

13122554 (P.T.A.B. Feb. 22, 2017)

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.
13/122,554 06/20/2011 Mathias Kuhn 14878/46201 1355
26646 7590 02/24/2017
ANDREWS KURTH KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
BELOUSOV, ANDREY
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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):
u spto @ keny on .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIAS KUHN, RAINER DEHMANN, and
FRANK HAUSCHILD
Appeal 2016-002031
Application 13/122,554
Technology Center 2100
Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002031
Application 13/122,554
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 11—24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
THE INVENTION
According to Appellants, the invention is directed to a method and
device for displaying information, in particular, in a vehicle. Spec., Title.
Claim 11, reproduced below, is representative of the claimed subject matter:
11. A method for displaying information, comprising:
graphically displaying in a display a list of multiple
graphic objects, a display area of the display being associated
with each represented graphic object and the objects being
selectable for executing a function;
prior to selecting one of the objects, running an animation
in the display area of at least one graphic object to illustrate the
function associated with the graphic object.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Horentrup et al. US 7,653,882 B2 Jan. 26, 2010
REJECTIONS
The Examiner made the following rejections:
Claims 11, 13—18, and 21—24 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Horentrup. Final Act. 2-4.
Claims 12, 19, and 20 stand rejected under 35 U.S.C. § 103(a) over
Horentrup. Final Act. 4—6.
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Appeal 2016-002031
Application 13/122,554
APPELLANTS’ CONTENTION1’2
In connection with the rejection under 35 U.S.C. § 102, Appellants
contend Horentrap’s illustration of a state of a button fails to disclose an
illustration that represents a function of the button as required by the
independent claims. App. Br. 5.
ANALYSIS
Appellants argue Horentrup’s animation represents a state of a button,
e.g., whether the button is selected or unselected, but fails to illustrate a
function of the button, i.e., a function selectable for execution using the
button, as required by the independent claims. App. Br. 3—5. The Examiner
responds by finding “[tjhere is no functional difference between an
animation of a button, and an animation of a button that ‘illustrates’ an
associated function.” Ans. 5. The Examiner explains “[tjhere is no
objective standard to determine whether one animation button ‘illustrates’
. . . the function, or does not.” Id. Appellants reply “[tjhe Examiner’s
assertion that ‘there is no functional difference between an animation of a
button and an animation of a button that illustrates an associated function’ is
insufficient to support a rejection under 35 U.S.C. § 102(b), and should
therefore be reversed.” Reply Br. 3.
1 We note Appellants present additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. §§ 102(b) and 103(a).
2 Although not otherwise addressed herein, it appears the subject matter of
argued claim 12 is disclosed by Appellants’ Admitted Prior Art (Spec. p. 1,
1. 17—p. 3,1. 7) and argued claim 20 is disclosed by the Abstract of DE
10303792 (cited at Spec. p. 2,11. 6—8) describing a motor vehicle dashboard
in which “[a] touch-screen can be used.”
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Appeal 2016-002031
Application 13/122,554
We agree with Appellants. The Examiner has not provided a claim
construction or finding supporting an interpretation of the claim language
“running an animation in the display area of at least one graphic object to
illustrate the function associated with the graphic object” that addresses
what is to be illustrated. That is, the Examiner has not persuaded us the
disputed limitation is either (i) ineffective in distinguishing the claim over
the prior art or (ii) disclosed by the prior art. We disagree merely finding the
disputed limitation involves a subjective element is a prima facie basis for
ignoring the language. Instead, such language may render the claim
indefinite.3 Thus, although we agree the scope of the limitation appears to
depend solely on the unrestrained, subjective opinion of a particular
individual purportedly practicing the invention, any such indefmiteness does
not rehabilitate the pending rejection under 35 U.S.C. § 102. Should
prosecution be continued we leave it to the Examiner to consider whether
3 See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed.
Cir. 2005) (“The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention. See Application of Musgrave, 431 F.2d 882, 893
(1970) (noting that ‘[a] step requiring the exercise of subjective judgment
without restriction might be objectionable as rendering a claim indefinite4).
Some objective standard must be provided in order to allow the public to
determine the scope of the claimed invention.” (Emphasis added)),
abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014). Our reviewing court recently reaffirmed (post
Nautilus) that claim terms of degree “necessarily call[] for a comparison
against some baseline.” Liberty Ammunition, Inc., v. U.S., 835 F.3d 1388,
1395 (Fed. Cir. 2016). During examination before the USPTO, “if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite. ” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
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Appeal 2016-002031
Application 13/122,554
claims which recite the limitation “to illustrate the function associated with
the graphic object” either directly or by virtue of their dependency, meet the
requirements of § 112, second paragraph.
For the reasons discussed supra, and in the absence of persuasive
evidence or reasoning supporting a finding the disputed limitation is either
(i) disclosed by the prior art or (ii) properly interpreted such that it need not
be disclosed by the prior art (e.g., is nonfunctional descriptive material), we
do not sustain the Examiner’s rejection of independent claims 11 and 18 or
the rejections of dependent claims 12—17 and 19—24 under 35 U.S.C.
§§ 102(b) and 103(a).
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). We reject independent claims 11 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Horentrup and Matthews et al., US
8,527,896 filed October 23, 2003.
Horentrup discloses a method for displaying information, comprising:
graphically displaying in a display a list of multiple graphic objects
(Fig. 1), a display area of the display being associated with each represented
graphic object and the objects being selectable for executing a function
(respective areas associated with Item 1 through 5 in Fig. 1 );
prior to selecting one of the objects, running an animation in the
display area of at least one graphic object to illustrate a status associated
with the graphic object (col. 2,11. 1—14; col. 2,11. 49-58.)
Horentrup does not explicitly disclose the animation illustrates the
function associated with the graphic object. However, Matthews in an
analogous art discloses a user interface menu with animated icons
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Appeal 2016-002031
Application 13/122,554
contextually related to a function application or program launched by
selecting a corresponding menu item (col. 3,11. 29—34; col. 7,1. 31 — col. 8,1.
33.) Therefore, it would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Horentrup’s animations to illustrate
the function associated with the corresponding graphic object as disclosed
by Matthews to provide the user with an easy to find and visually appealing
indicator of what actuating a pointer to select the graphic object will cause to
happen. Matthews col. 7,11. 64—67.
Regarding claim 18, Matthews discloses the hardware needed to
perform the method, including a display adapted for graphical representation
of information (monitor 191), a control unit adapted to produce graphics
data (processing unit 120), and an input device adapted to select an object
shown on the display (mouse 161). Matthews col. 4,11. 5—7, Fig. 1.
We note the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination. We have rejected independent claims 11
and 18 based on our authority under 37 C.F.R. § 41.50(b). We have not,
however, reviewed the remaining claims to the extent necessary to determine
whether those claims are likewise unpatentable. We leave it to the Examiner
to ascertain whether claims dependent from claims 11 and 18 should be
rejected on similar grounds to those set forth herein or in combination with
additional prior art.
DECISION
The Examiner’s decision to reject claims 11—24 is reversed.
We newly reject independent claims 11 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Horentrup and Matthews.
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Application 13/122,554
37 C.F.R. § 41.50(b) provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
REVERSED
37 C.F.R, $ 41.50(b)
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