Ex Parte Suess et alDownload PDFPatent Trial and Appeal BoardAug 22, 201613257201 (P.T.A.B. Aug. 22, 2016) Copy Citation 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. 13/257,201 02/06/2012 Manfred Suess 09040/US_JOCA:0131 2294 75576 7590 08/22/2016 Johnson Controls, Inc. c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 EXAMINER NWUGO, OJIAKO K ART UNIT PAPER NUMBER 2685 MAIL DATE DELIVERY MODE 08/22/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MANFRED SUESS, NICOLAS MEHL, ISABEL HOFFMANN, and BERND LUDEWIG ____________ Appeal 2015-005281 Application 13/257,201 Technology Center 2600 ____________ Before JASON V. MORGAN, MELISSA A. HAAPALA, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 3, and 4. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Visteon Corporation. App. Br. 2. Appeal 2015-005281 Application 13/257,201 2 THE INVENTION Appellants’ invention “relates to a display instrument, particularly for use in the automobile sector.” Spec. ¶ 1. Independent claim 1, reproduced below, is representative of all claims. 37 C.F.R. § 41.37(c)(1)(iv) (2014). 1. A display device for a motor vehicle, comprising a first display area and a second display area, the first display area comprising a first display in the central area of a dial, and the second display area comprising a second display with electronic ink configured to display a pointer that is visible without electric current being applied to the second display. REFERENCES and REJECTION The Examiner rejects claims 1, 3, and 4 under 35 U.S.C. § 103(a) as unpatentable over Pala (US 2008/0174416 A1; July 24, 2008) and Grosberg (US 2009/0248333 A1; Oct. 1, 2009). ISSUE Have Appellants shown the Examiner erred in finding the combination of Pala and Grosberg teaches or suggests “second display with electronic ink configured to display a pointer,” as recited in claim 1? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ arguments. We concur with the conclusions reached by the Examiner and adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken, particularly as explained by the Examiner’s Answer. We highlight the following. Appeal 2015-005281 Application 13/257,201 3 Appellants argue: As discussed in the appeal brief, Pala appears to disclose a physical pointer that is attached to a circular pointer disk, and Grosberg fails to disclose a pointer. Appeal Brief, page 8. . . . [T]he examiner contends that “electronic displays are configured to display any number of varied virtual images”, and by extension appears to contend that it would be obvious to display a pointer on an electronic ink display. Examiner’s Answer, page 2 (emphasis added). However, as noted on page 9 of the appeal brief, the examiner has not provided any objective evidence of the motivation to modify the electronic ink display of Grosberg to display a pointer. Reply Br. 2 (emphasis omitted); see also App. Br. 8−9. We are not persuaded by Appellants’ argument. The Examiner finds that Pala and Grosberg are analogous art and collectively evidence it would have been obvious to virtualize Pala’s physical pointer with an electronic ink display thereof. Final Act. 2−3; Ans. 2. And in support, the Examiner finds that electronic displays were known “to display any number of varied virtual images.” Ans. 2. We agree and accordingly conclude the Examiner presents a prima facie case that Pala’s teaching of a pointer (see Pala Fig. 2, element 26) and Grosberg’s teaching of electronic ink display (see Grosberg Fig. 1, ¶ 42) could be predictably combined for their known purposes of a speedometer readout (pointer) and virtualization (electronic ink); that is, combined to form electronic ink pointer for a speedometer. Appellants have not rebutted the Examiner’s findings with reasoning or evidence that shows the combination would have been beyond the capabilities of a person of ordinary skill in the art. Appellants merely contend “the examiner has not provided any objective evidence of the motivation to modify the electronic ink display of Grosberg to display a Appeal 2015-005281 Application 13/257,201 4 pointer.” Reply Br. 2 (above block quote). Here, the Examiner has articulated a reason, with rational underpinning, for the combination by expressly finding electronic ink displays were known in the art and electronic displays were commonly used (“to display any number of varied virtual images”). Ans. 2. Appellants’ arguments fail to persuasively contest the Examiner’s proferred reason. Considering the above and “tak[ing] account of the inferences and creative steps that a person of ordinary skill in the art would employ,” we find the Examiner has provided a reason with rational underpinning for the modification of Pala’s speedometer. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants further argue, “Pala at least implicitly teaches away from using an electronic display, such as the electronic label of Grosberg, to display certain vehicle information because Pala deliberately discloses a physical pointer rather than a virtual pointer on the LCD display.” Reply Br. 2; see also App. Br. 10. However, Pala’s mere selection of one prior art technology is insufficient to show that Pala criticizes, discredits, or otherwise discourages the use of other available prior art technologies. Moreover, Appellants have not persuaded us that one of ordinary skill in the art would, based on Pala’s teachings, consider a virtual pointer unlikely to be productive. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference . . . .”). Lacking sufficient evidence or reasoning, Appellants’ argument is not persuasive in showing Pala teaches away from the disputed limitation. Appeal 2015-005281 Application 13/257,201 5 Appellants further argue, “The principle of operation of Pala (i.e., using a physical pointer to display certain information) is incompatible with using the electronic label of Grosberg to display the information.” Reply Br. 2; see also App. Br. 10−11. However, Appellants fail to show Pala requires a physical pointer as a principle of operation. Instead Pala explains that more recent technological advancements have led to more information being displayed by liquid crystal displays. See Pala ¶ 2. Appellants’ argument is merely a conclusory contention that Grosberg’s electronic ink is not a viable means for virtualizing Pala’s pointer. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements are insufficient to rebut a prima facie case). Appellants further argue that, assuming an artisan would incorporate electronic ink within Pala’s speedometer, the artisan would either replace only the LCD display (App. Br. 9), resulting in a display with a physical pointer and a display with electronic ink, or both the pointer and LCD display, resulting in a single display (id. at 9, 11). Appellants’ argument mischaracterizes the test of obviousness. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, the Examiner need not show an artisan would likely or preferably implement the proposed modification in lieu of other modifications. Cf., Gurley, 27 F.3d at 553 (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior[.]”). Rather, the Examiner need only show the proposed modification constitutes a predictable variation of the prior art. KSR, 550 U.S. at 417. Appellants do not persuade us the combination is Appeal 2015-005281 Application 13/257,201 6 anything more than such a predictable variation. Moreover, we agree replacing Pala’s pointer and LCD with electronic ink would yield first and second display areas comprising first and second displays as claimed. 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.”). DECISION For the foregoing reasons, the Examiner’s rejection of claims 1, 3, and 4 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation