Ex Parte Washburn et al

Patent Trial and Appeal Board

Jun 21, 2016

11713764 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111713,764 0310212007 45436 7590 06/23/2016 DEAN D, SMALL THE SMALL PA TENT LAW GROUP LLC 225 S. MERAMEC, STE. 725T ST. LOUIS, MO 63105 FIRST NAMED INVENTOR Michael Joseph Washburn 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. 221380 (553-1323US) 2755 EXAMINER STITT, ERIK V ART UNIT PAPER NUMBER 2141 NOTIFICATION DATE DELIVERY MODE 06/23/2016 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@splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL JOSEPH WASHBURN and DAVID DIXON VOIGHT Appeal2014-007559 Application 11/713,764 Technology Center 2100 Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and MATTHEW J. McNEILL, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20. We address the status of claims 21-25 inn. l, infra. 1 We have jurisdiction under 35 U.S.C. § 6(b) as to rejected claims 1-20. We affirm-in-part. 1 Although claims 21-25 were included in the list of rejected claims on the Final Office Action Summary page, we find no detailed statement of rejection to review for claims 21-25 in the Final Action (mailed June 20, 2013), or in the Non-Final action (mailed February 14, 2013). Nor does the Examiner indicate that claims 21-25 are allowable or objected to. Appellant correctly points out "the final Office Action has simply indicated that these Appeal2014-007559 Application 11/713,764 Invention The invention on appeal relates "to methods and devices for controlling ultrasound systems with a user interface." (Spec. i-f 1 ). Representative Claim 1. A user interface for controlling an ultrasound system, compnsmg: a display for displaying ultrasound data; and at least one multi-function control configured to control different functions of the ultrasound system, the multi-function control having a corresponding user operable member configured to extend above a surface of the ultrasound system, at least one of the user operable members being movable with physical actions comprising both rotational and translational movements, wherein the movements are associated with different system parameters corresponding to different ultrasound system actions, and further comprising a label being displayed on the display, [L] the label being associated with the multi-function control, the label indicating at least one graphical indicator associated with at least one of the physical actions. (Bracketed matter and emphasis added regarding the contested limitation, labeled as "L"). claims [21-25] are rejected in the Office Action Summary page without providing any further support or discussion regarding the rejection of these claims." (App. Br. 22). Because a detailed statement of rejection was never set forth in the record for claims 21-25, the Board has no adverse decision establishing aprimafacie case under 35 U.S.C. § 132 to review, and thus we have no jurisdiction under pre-AIA 35 U.S.C. § 6(b) over any claims that were never rejected. The Board cannot affirm or reverse a rejection that was never made. Accordingly, claims 21-25 are not before us on appeal. 2 Appeal2014-007559 Application 11/713,764 Rejections A. Claims 1-12 and 15-20 are rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of Steins et al. (US 2008/0146922 Al; pub. June 19, 2008), in view of Goldenberg et al. (US 6,636,197 Bl; pub. Oct. 21, 2003). B. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of Steins et al. and Goldenberg et al., and further in view of Calarco et al. (US 2004/0227725 Al; pub. Nov. 18, 2004). Grouping of Claims Based on Appellants' arguments, we decide the appeal of claims 1---6, 8-12, and 15-17, rejected under rejection A, on the basis of representative claim 1. We address separately argued claims 7 and 18-20, also rejected under rejection A, infra. We address remaining claims 13 and 14, rejected under rejection B, separately, infra. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS With the exception of rejection A of claim 18 (addressed separately infra), we have considered all of Appellants' arguments and any evidence presented. We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in response to Appellants' arguments (Ans. 2-3). However, we highlight and address specific findings and arguments for emphasis in our analysis below. 3 Appeal2014-007559 Application 11/713,764 Rejection A of claims 1-6, 8-12, and 15-17under35U.S.C.§103(a) Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the cited combination of Steins and Goldenberg would have taught or suggested contested limitation L: "the label being associated with the multi-function control, the label indicating at least one graphical indicator associated with at least one of the physical actions," within the meaning of claim 1? Regarding limitation L ("the label 2 being associated with the multi- function control, the label indicating at least one graphical indicator associated with at least one of the physical actions"), the Examiner initially found this limitation was taught or suggested by Figures 12 and 13 of Steins, 2 Regarding the "label" being displayed on a display (as recited in claim 1 ), the MPEP guides: "where the claim as a whole is directed [to] conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists." MPEP § 2111.05 (III.) (9th Ed., Mar. 2014). Therefore, we broadly but reasonably construe the recited "label" as non-functional descriptive material (NFDM) merely intended for human perception. (Claim 1 ). The PT AB has provided guidance in decisions on the appropriate handling of claims that differ from the prior art only based on "non-functional descriptive material." See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process."). In our analysis herein, we consider the extrinsic MPEP descriptions (§ 2111.05) regarding NFDM (reflecting official current USPTO policy and procedural guidance) as underlying subsidiary facts which inform our claim construction for all claims before us on appeal. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015) ("[W]e review the Board's ultimate claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence."). See also Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841--42 (2015). 4 Appeal2014-007559 Application 11/713,764 which depict a series of "up/down arrows on the display." (Final Act. 5). Appellants contend "the virtual buttons displayed by the system of Steins are not labels," because "[t]here is nothing that describes, teaches, or suggests any association between the graphical indicator, namely the displayed arrows, and any physical actions." (App. Br. 14, 18). Appellants aver "the [up/down] arrows are not associated with at least one of the physical actions of a user operable member that includes both rotational and translational movements" (as required by claim 1 ). (Id.). Appellants urge: "there would be no reason to associate the motion or indicate which motions corresponds to particular settings as the user simply touches the screen to change the settings." (Id.). Finally, Appellants contend Goldenberg fails to remedy the deficiencies of Steins. (App. Br. 19). In response to Appellants' arguments, the Examiner points to Goldenberg3 (Fig. 1, col. 6, 11. 20-21 ), as teaching an association between the recited "graphical indicator" and "at least one of the physical actions." (Ans. 2).4 On this record, we are not persuaded of error regarding the Examiner's underlying factual findings and legal conclusion of obviousness. Goldenberg discloses "display 14" of Fig. 1 is "coupled to the control device 3 The Examiner repeatedly incorrectly refers to a "Goldberg" reference in the Answer (2-3). We consider this oversight as a typographical error intending to reference the "Goldenberg" reference. 4 To the extent the Examiner may have shifted or modified the basis for the rejection in the Answer (Ans. 2-3), Appellants did not file a petition asserting a new ground of rejection, nor did Appellants further address any change in the Examiner's mapping of the contested limitation by filing a Reply Brief. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal2014-007559 Application 11/713,764 and/or panel 12" (col. 4, 11. 47-50). Goldenberg further describes when the user adjusts knob 26, using directions 32 of control device 12, it allows "the user to rotate the knob to adjust the volume" (e.g., the label "Volume" of display 14 is associated with the multi-function control) (col. 6, 11. 15-31). Goldenberg also describes that below the "Volume" label is a status bar (e.g., a graphical indicator), which indicates the "current audio volume." (col. 4, 11. 55-57; Fig. 1). Finally, Goldenberg discloses "[c]ontrol knob 26 allows the user to directly manipulate [the] functions and setting of the device." (col. 5, 11. 6-7), rendering the adjustment of the volume (e.g., the physical action) associated with the current audio volume. Thus, we find Goldenberg, in combination with Steins, teaches or suggests every element of contested limitation L. Therefore, on this record, and based on a preponderance of the evidence, we are not persuaded the Examiner erred. Accordingly, we sustain rejection A of representative claim 1, and rejection A of grouped claims 2---6, 8-12, and 15-17, which fall therewith. See Grouping of Claims, supra. Rejection A of claim 7 under 35 U.S. C. § 103 (a) Dependent claim 7 recites: The user interface of claim 1, further comprising context sensitive information being displayed on the display as part of the label and associated with the multi-function controls, the context sensitive information identifYing a plurality of defined parameters controllable by the multi-function control, and wherein a plurality of graphical indicators associate different ones of the physical actions with different defined parameters. (emphasis added). 6 Appeal2014-007559 Application 11/713,764 The Examiner finds the limitations of claim 7 are taught or suggested by Steins ultrasound machine user interface knob (i-f46, Fig. 2, e.g., "The user interface 30 may include a track ball, joystick, touch pad or other pointing device, and buttons, knobs, keys, sliders .... ), in combination with Figure 1 of Goldenberg, which the Examiner finds "shows how a label can be used to label a menu item that can be changed with the knob." (Final Act. 7, e.g., Volume and/or Balance indicators 22, as depicted in Figure 1). Appellants disagree: "[t]he final Office Action [7] states that Goldenberg shows how a label can be used to label a menu item that can be changed with the knob. However simply labeling a menu item does not provide context sensitive information, for example, such that the system parameters associated with the physical actions change based on the application and/or context or state of the system." (App. Br. 20-21, emphasis added). The Examiner does not directly address the Appellants' argument regarding claim 7 in the "Response to Arguments" (Ans. 2--4), but did previously respond regarding the "user interface" of claim 1, from which claim 7 depends (Ans. 3, last paragraph): The [A]ppellant did not claim the limitation of "an indication of what movement changes these settings". Figure 1 of Goldberg shows that the 'Volume' label associated with the knob. Further, the 'Volume' label indicates that the shaded volume bar indicator below is used to set the volume. We note Appellants' argument is premised on an example of what Appellants consider to be "context sensitive information" (App. Br. 20); however, such proffered example (or premise) is not commensurate with the actual language of claim 7. 7 Appeal2014-007559 Application 11/713,764 We interpret the contested informational content of the context sensitive information as expressly defined in the claim: "the context sensitive information identifYing a plurality of defined parameters controllable by the multi-function control, and wherein a plurality of graphical indicators associate different ones of the physical actions with different defined parameters." (Claim 7, emphasis added). The Examiner is reading the contested "context sensitive information" on at least the volume indicator depicted in Figure 1 of Goldenberg, as controlled by manipulation of a knob (e.g., Steins' ultrasound machine user interface knob (i-f46, Fig. 2). The features relied on by the Examiner in Goldenberg (Fig. 1) are further described at column 4, lines 50-57: For example, options or modes 20 can be displayed to indicate which function( s) of the device are currently selected and being adjusted through manipulation of the knob. Such options can include "audio" "map" "Internet" "telephone" ' ' ' ' ' power, etc., and selection of one mode can lead to a menu of sub-modes. Other information 22; such as the current audio volume, audio balance, radio frequency of a radio tuner, etc., can also be displayed. (emphasis added). See also Goldenberg, col. 5, 11. 6-7, which describes knob 26 (depicted in Figure 1 of Goldenberg) as manipulating plural functions: "Control knob 26 allows the user to directly manipulate functions and settings of the device." Therefore, in reviewing the record, we find a preponderance of evidence supports the Examiner's legal conclusion of obviousness, because either Steins' knob (i-f46) or Goldenberg's multifunctional knob 26 (Fig. 1), would be capable of manipulating volume indicator 22 (Fig. 1, Goldenberg) to provide "context sensitive information" as expressly defined in claim 7: 8 Appeal2014-007559 Application 11/713,764 "the context sensitive information identifying a plurality of defined parameters [e.g., soft or loud] controllable by the multi-function control [e.g., Steins' knob i-f46, or Goldenberg's knob 26, Fig. 1], and wherein a plurality of graphical indicators [volume bar indicator including a middle slider (see different cross hatching, Fig 1, Goldenberg)] associate different ones of the physical actions [knob movement] with different defined parameters [e.g., soft or loud]." (Claim 7). Therefore, we sustain Rejection A under§ 103 of dependent claim 7. Rejection A of claim Dependent Claim 18 under 35U.S.C.§103(a) Dependent claim 18 recites: "[t]he method of claim 17, further comprising displaying a label associated with the multi-function control, the label displaying a plurality of different graphical indicators associated with the four physical actions, the label further displaying a system parameter associated with each of the physical actions." (emphasis added). The Examiner finds claim 18 is taught or suggested by Figure 1 of Goldenberg, "under [a] similar rationale" as that of claim 7. (Final Act. 10). Appellants contend that "[ n ]ow here is there any description, teaching, or suggestion of different indicators associated with different physical actions, much less four physical actions" (App. Br. 21, emphasis added). We note Goldenberg (col. 5, 11. 34--35) describes control knob 26 (Fig. 1) as being capable of performing at least four physical actions: "For example, the knob 26 can be moved in the four orthogonal and four diagonal directions shown .... " However, the Examiner did not point to this portion of Goldenberg (id.), nor does the Examiner specifically point to where the contested 9 Appeal2014-007559 Application 11/713,764 "plurality of different graphical indicators associated with the four physical actions" (claim 18) is taught or suggested in either cited reference. (emphasis added). Because the Examiner provides no further explanation in the Answer, we find speculation would be required to affirm the Examiner on this record. We decline to engage in speculation. Therefore, we reverse Rejection A under § 103 of dependent claim 18. Rejection A of Dependent Claim 19 under 35 U.S. C. § 103 (a) Dependent claim 19 recites: "[t]he method of claim 17, further comprising displaying a label associated with one of the at least two multi- function controls, the label displaying at least one unique graphical indicator that is associated with one of the physical actions." (emphasis added). The Examiner finds this limitation is taught by Figure 1 of Goldenberg, which "shows how a unique label can be used to label a menu item that can be changed with the knob .... " (Final Act. 10). Appellants contend that "all of the arrows of Steins are the same and, thus, cannot be unique to one of different [sic] physical actions" (App. Br. 21). Although the Examiner provides no further explanation in the Answer, we note the Examiner found Figure 1 of Goldenberg teaches the contested unique graphical indicator. (Final Act. 10). As discussed above regarding claim 7, we observe Figure 1 of Goldenberg depicts at least a unique volume indicator and/or a unique balance indicator. By addressing Steins, and not Goldenberg (App. Br. 21 ), the 10 Appeal2014-007559 Application 11/713,764 Appellants have failed to address the Examiner's specific findings regarding Goldenberg. (Final Act. 10). Because Appellants are arguing the references separately, on this record, we are not persuaded the Examiner erred. 5 Therefore, we sustain Rejection A of dependent claim 19. Rejection A of Dependent Claim 20 under 35 U.S. C. § 103 (a) Dependent claim 20 recites: The method of claim 1 7, the method further comprising displaying a label associated with one of the at least two multi- function controls, the label displaying at least one of a first graphical indicator associated with a rotational movement, a second graphical indicator associated with a push movement, a third graphical indicator associated with a toggling movement in first and second directions, and a fourth graphical indicator associated with a toggling movement in third and fourth directions, the first, second, third and fourth graphical indicators being different from each other. (emphasis added). The Examiner finds at least one graphical indicator is taught or suggested by Goldenberg's Figure 1, (Final Act. 10-11). However, Appellants contend, "[i]t is not clear how this teaches four different graphical indicators associated with different movements." (App. Br. 21, emphasis added). As the Examiner correctly notes, claim 20 does not require "four different graphical indicators," but instead merely requires "at least one" of four different graphical indicators (Claim 20; see also Ans. 4). Thus, Appellants' argument is unpersuasive because it is not commensurate in 5 One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 11 Appeal2014-007559 Application 11/713,764 scope with claim 20, nor have Appellants addressed the Examiner's specific findings. Therefore, on this record, and based on a preponderance of the evidence, we are not persuaded the Examiner erred. Accordingly, we sustain Rejection A of dependent claim 20. Rejection B of Dependent Claims 13 and 14 Appellants advance no separate arguments regarding claims 13 and 14, which are rejected under Rejection B. (App. Br. 22). Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Because we find no deficiencies regarding rejection A of independent claim 10, we are not persuaded the Examiner erred regarding the rejection of claims 13 and 14, which both depend directly from claim 10. Therefore, we sustain Rejection B of claims 13 and 14. Conclusion For at least the aforementioned reasons, on this record, we are not persuaded the Examiner erred in rejecting claims 1-17, 19, and 20. We find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for claims 1-17, 19, and 20. However, for the reasons discussed above, Appellants have persuaded us the Examiner erred in rejecting dependent claim 18. 12 Appeal2014-007559 Application 11/713,764 DECISION We reverse the Examiner's rejection of claim 18 under§ 103(a). We affirm the Examiner's rejection of claims 1-17, 19, and 20 under § 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±). AFFIRMED-IN-PART 13