Ex Parte Parker et alDownload PDFPatent Trial and Appeal BoardSep 9, 201612886837 (P.T.A.B. Sep. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/886,837 71016 7590 Bose Corporation Patent Group FILING DATE 09/21/2010 09/13/2016 Mountain Road, MS 3B 1 Framingham, MA 01701 FIRST NAMED INVENTOR Robert Preston Parker 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. H-08-015-USS 1339 EXAMINER NGUYEN, PHUONG H ART UNIT PAPER NUMBER 2142 NOTIFICATION DATE DELIVERY MODE 09/13/2016 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): docket@bose.com designs@bose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte ROBERT PRESTON PARKER, JOHN MICHAEL SAKALOWSKY, and SANTIAGO CARVAJAL Appeal2013-008358 Application 12/886,837 Technology Center 2100 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal2013-008358 Application 12/886,837 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of a final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. We have reviewed Appellants' arguments in the Appeal Brief (Br. 4-- 6) that the Examiner's rejection (see Final Act. 2-16) of claims 1-10 under 35 U.S.C. § 103(a) as being unpatentable over Cheng (US 2009/0210815 Al; published Aug. 20, 2009), Nguyen (US 7,036,091 Bl; issued Apr. 25, 2006), Chmielewski (US 2011/0066980 Al; published Mar. 17, 2011 and filed Sep. 16, 2009), and Jun-Dong (US 2010/0146451 Al; published June 10, 2010) is in error, and the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 3-5). Appellants' arguments that (i) none of the applied references teach the use of separately manually operable controls with separately associated ones of each of the first and second recited menus (Br. 5); and (ii) the submenus of each of the cited references are not associated with a different manually operable control that is separate from one that is operable with the initial menu (Br. 5---6), are not persuasive insofar as being incommensurate with the scope of the claimed invention recited in independent claims 1, 4, and 7. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts ... are not commensurate with the claim scope and are therefore unpersuasive.") For example, none of claims 1, 4, and 7 require that any of the manually operable controls for one menu be separate from another, different menu. Thus, we agree with the Examiner (Ans. 4) that Appellants' arguments are not persuasive because such arguments are not commensurate in scope with the language of independent claims 1, 4, and 7. See In re Self, 2 Appeal2013-008358 Application 12/886,837 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). However, we concur with Appellants' assertions (see Br. 5) that neither Nguyen nor any of three other applied references show or describe simultaneously displaying "a visual portion of an audio/visual program" with a menu being displayed. Specifically, Nguyen's Figures 4---6 and column 7, line 44 through column 10, line 12 neither show or describe the recited feature of independent claims 1 and 7. Notably, such a recitation for simultaneous display is absent from independent claim 4. Based on the foregoing, we find that the Examiner has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for independent claims 1 and 7, resulting in a failure to establish a prima facie of obviousness. However, Appellants have not overcome the Examiner's prima facie case of obviousness with respect to independent claim 4. Accordingly, we (i) do not sustain the Examiner's rejection of independent claims 1 and 7, as well as corresponding dependent claims 2, 3, 8, and 9 depending respectively therefrom; and (ii) sustain the Examiner's rejection of claim 4 and dependent claims 5, 6, and 10 not separately argued. CONCLUSION The Examiner (i) erred in rejecting claims 1-3 and 7-9; and (ii) did not err in rejecting claims 4---6 and 10, under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cheng, Nguyen, Chmielewski, and Jun-Dong. 3 Appeal2013-008358 Application 12/886,837 DECISION The Examiner's rejection of (i) claims 1-3 and 7-9 is reversed; and (ii) claims 4---6 and 10 is affirmed. 1 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). See 37 C.F.R. §§ 41.50(f), 41.52(b) (2013). AFFIRMED-IN-PART 1 The Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We leave to the Examiner to consider the appropriateness of further rejection(s) under 35 U.S.C. § 103(a) over the cited references applied in combination with additional reference(s), for example one disclosing a menu or menus simultaneously displayed with a visual portion of an audio/visual program as recited in independent claims 1 and 7. 4 Copy with citationCopy as parenthetical citation