Ex Parte Kusaka

Patent Trials and Appeals Board

Feb 6, 2019

14122160 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/122,160 11/25/2013
22919 7590 02/08/2019
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Kousuke Kusaka
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.
NS-US 135363 3730
EXAMINER
MCCORD, PAUL C
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOUSUKE KUSAKA
Appeal2017-005309
Application 14/122,160 1
Technology Center 2600
Before JOSEPH L. DIXON, JOHN A. EV ANS, and SCOTT B. HOW ARD,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1 and 2, which constitute all of the claims pending in this
application. Claims 3-5 have been cancelled.
Oral argument was heard on January 17, 2019. A transcript of the
hearing will be added to the record in due course.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Nissan Motor Co., Ltd. as the real party in interest.
App. Br. 2.
Appeal2017-005309
Application 14/122, 160
THE INVENTION
The disclosed and claimed invention is directed to an information
display device for a vehicle. Spec. ,r 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A vehicle information display device comprising:
an audio unit installed in a vehicle that is equipped with
the vehicle information display device;
a switch operatively coupled to the audio unit for
operating the audio unit; and
a meter unit having a first display screen that is a meter
display disposed in front of a driver seat,
the audio unit having an operation input unit, a second
display screen disposed between the driver seat and a front
passenger seat of the vehicle, a storing unit that stores music
files, and a music playback unit that plays the music files,
the first display screen of the meter unit and the second
display screen of the audio unit being arranged in a location that
is visible to a driver seated in the driver seat of the vehicle,
the first display screen displaying operation specifics
information representing operation specifics conveyed as an
instruction to the audio unit having the second display screen
by operation of at least one of the operation input unit and the
switch,
the operation specifics information including at least one
of genre information, artist information, album information and
folder information,
the music playback unit being configured to play a
selected music file of the music files that corresponds to the
operation specifics information,
at least one of the operation input unit and the switch
being configured to select the music file after the first display
screen displays the operation specifics information,
the second display screen being configured to display at
least one of song title information, filename information and
track information regarding the music file selected by
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Application 14/122, 160
operation of the at least one of the operation input unit and the
switch after the first display screen displays the operation
specifics information, and
the first display screen continuing to display the
operation specifics information corresponding to the time prior
to the selected music file being selected, even after the selected
music file is selected by operation of the at least one of the
operation input unit and the switch.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Berg
Chaudhri
Nakagawa
US 2006/0276940 Al
US 2012/0311443 Al
US 8,719,726 B2
REJECTION
Dec. 7, 2006
Dec. 6, 2012
May 6, 2014
( filed Apr. 4, 2011)
Claims 1 and 2 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Nakagawa in view of Chaudhri and Berg. 2
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant's arguments that the Examiner erred in rejecting
the claims.
2 In the Final Action, the Examiner rejected claims 1 and 2 under 35 U.S.C.
§ 112, second paragraph as being indefinite. The Examiner withdrew that
rejection in the Answer. Ans. 6.
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Application 14/122, 160
The Examiner finds the combination of Berg, Chaudhri, and
Nakagawa teach each of the limitations recited in claim 1. Final Act. 3-7;
Ans. 7-13. The Examiner further finds that a person of ordinary skill in the
art would have been motivated to combine the relevant teachings of the prior
art "for the purpose of augmenting display of audio data and would have
expected predictable results therefrom." Final Act. 6-7. The Examiner
further finds that "[i]t would further be obvious as a matter of design choice
to display particular parameters of the Cha and Naka user interface and/or
audio data upon the particular screens of Berg at particular times to provide
for various operations thereon by a driver, passenger etc." Id. at 7. The
Examiner also finds that a person of ordinary skill in the art would
"predictably realize the claim without undue experimentation or the
emergence of unexpected results." Ans. 14; see also id. at 20 (finding that
"the instant claim would consist of no more than a choice among finite art
recognized equivalents, obvious to substitute and 'obvious to try' in as much
as no new techniques and/ or methods would be mandated and no undue
experimentation required.").
Appellant argues that the Examiner did not "provide any evidence for
these alleged reasons supporting his assertion that one skilled in the art
would have modified the above hypothetical devices to specifically display
prior operation specifics information corresponding to the time prior to the
selected music file being selected by the driver, as claimed." App. Br. 12.
More specifically, Appellant argues that there are an infinite number of ways
the information could be displayed and there is no evidence why a person of
ordinary skill in the art would have made the configuration claimed in the
pending claims. Id. at 13. According to Appellant, "the Examiner's
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Application 14/122, 160
conclusory statements regarding the obviousness of claim 1 is a result of
hindsight bias based on the teachings of the Appellant's own disclosure
because the prior art references of record fail to show all of the features of
claim 1." Id. at 14.
Rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citations omitted), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007). The requirement for a reason to combine the
reference acts as a check on the potential for the improper use of hindsight.
See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
(holding that an articulated reasoning "is especially important to guard
against the dangers of hindsight bias").
Based on the current record, we are not persuaded that Examiner has
set forth an adequate "explanation as to how or why the references would be
combined to produce the claimed invention." Trivascular, Inc. v. Samuels,
812 F.3d 1056, 1066 (Fed. Cir. 2016) (emphasis added). At its heart, the
Examiner's findings establish that a person of ordinary skill in the art could
combine the teachings of the various prior art references to achieve the
claimed invention. That is, the Examiner relies on generic statements such
as "design choice" or "predictable results." See, e.g., Final Act. 6-7;
Ans. 14, 20. However, such generic reasoning does not provide a sufficient
reason to explain why the person of ordinary skill the art would combine the
references to achieve the claimed invention. See Personal Web Techs., LLC
v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017) ("But that reasoning
seems to say no more than that a skilled artisan, once presented with the two
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Application 14/122, 160
references, would have understood that they could be combined. And that is
not enough: it does not imply a motivation to pick out those two references
and combine them to arrive at the claimed invention."). 3
Accordingly, we agree with Appellant the Examiner's finding that the
claimed inventions would have been obvious to a person of ordinary skill in
the art is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(Examiner's burden of proving non-patentability is by a preponderance of
the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
("The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.").
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 1 and dependent claim 2.
DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1 and 2.
REVERSED
3 Appellant raises additional issues in the Appeal Brief. Because we are
persuaded the Examiner erred with respect to this dispositive issue, we do
not reach the additional issues.
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