Ex Parte Wengelnik et al

Patent Trial and Appeal Board

Sep 16, 2016

11911600 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111911,600 02/08/2008 Heino W engelnik
26646 7590 09/20/2016
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
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.
111501127 8633
EXAMINER
PAN, YONGJIA
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINO WENGELNIK, WILL SPECKS, MATHIAS KUHN,
RAINER DEHMANN, and HEINER BARTOSZEWSKI
Appeal2015-004103
Application 11/911,600
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-004103
Application 11/911,600
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
following rejections of claims 52-54 and 56-86:
Claims 52-54, 56, 65-69, and 78-85 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Inomae (US 2004/0254699 Al; published
Dec. 16, 2004), Schowengerdt (US 2008/00117289 Al; published May 22,
2008), and Ashihara (US 5,883,739; issued Mar. 16, 1999).
Claims 57---64, 70, 77, and 86 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Inomae, Schowengerdt, Ashihara, and Kataoka
(US 5,995,104; issued Nov. 30, 1999).
Claims 71-76 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Inomae, Schowengerdt, Ashihara, and Tubidis (US 2005/0030256 Al;
published Feb. 10, 2005).
We have jurisdiction under 35 U.S.C. § 6(b). We review the
appealed rejections for error based upon the issues identified by Appellants,
and in light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We reverse and enter a new ground of rejection.
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Application 11/911,600
SUMMARY OF THE INVENTION
Appellants' invention entails stereoscopically displaying a menu.
Spec. 4: 18-22. 1 At least two different menus or menu items appear to the
viewer at different distances. Id. According to Appellants, displaying the
menu items in this way helps the user understand the displayed information
quickly. Id. at 4:22-24.
Independent claim 52, reproduced below with our emphasis, is
illustrative:
52. A method for displaying items of information in a
transportation device, comprising:
stereoscopically representing the items of information in
the form of hierarchical menu structures on a display device;
wherein at least two different menus or menu items appear
at different distances to a viewer; and
wherein the menus or the menu items are displayed in the
representing step in a plane that is offset away from the viewer
relative to a reference plane.
THE OBVIOUSNESS REJECTION OVER INOMAE,
SCHOWENGERDT, AND ASHIHARA
Contentions
The Examiner finds that Inomae stereoscopically displays at least two
different menus or menu items. Final Act. 3 (citing Inomae Figs. 4A-D).
But according to the Examiner, Inomae's menu items do not appear at
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 7, 2014 ("Final Act."); (2) the Appeal Brief filed October 6, 2014
("App. Br."); (3) the Examiner's Answer mailed December 22, 2014
("Ans."); and (4) the Reply Brief filed February 20, 2015 ("Reply Br.").
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Application 11/911,600
different distances to a viewer. Final Act. 3. The Examiner, however, cites
Schowengerdt in concluding that this feature would have been obvious. Id.
In particular, the Examiner finds that Schowengerdt displays items at
different distances to a viewer. Id. (citing Schowengerdt if 14 ).
The Examiner further finds that neither Inomae nor Schowengerdt
displays those items in a plane offset away from the viewer relative to a
reference plane. Final Act. 4. The Examiner, however, turns to Ashihara in
concluding that this feature would have been obvious. Id. According to the
Examiner, Ashihara's out-of-focus items are in the recited reference plane.
Id. (citing Ashihara col. 5, 11. 36-41).
Appellants contend that Ashihara does not show images in a plane
offset away from the viewer relative to a reference plane. App. Br. 3-5;
Reply Br. 5---6. According to Appellants, Ashihara shows images to the
driver and assistant seated in different areas of the vehicle. App. Br. 5. In
Appellants; view, the images are not displayed in a plane that is offset away
from the viewer. Id.
Analysis
The Examiner has not established that Ashihara would have taught or
suggested displaying items in a plane that is offset away from the viewer
relative to a reference plane, as recited in claim 52.
The cited portion of Ashihara describes a reflecting plate. Final Act. 4
(citing Ashihara col. 5, 11. 36-41). The cited section, however, does not
discuss items in focus or reference planes, as discussed by the Examiner.
See Final Act. 4. Rather, Ashihara describes how a reflecting plate reflects a
stereoscopic display' s image to person A:
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Application 11/911,600
A reflecting plate 3 is disposed between the person A on the
driver seat and a front glass 8 of the vehicle so that it may reflect
the image from the stereoscopic display along the viewing
direction of the person A to produce the projected image in the
direction of the front glass 8 of the vehicle as shown in FIGS. 10
and 11.
Ashihara col. 5, 11. 36-41.
Ashihara's Figure 10 shows an example of these images as they
appear in the direction of the vehicle's front glass 8. Id. Notably, Figure 10
shows one item, not multiple items or items not in focus. See id. Fig. 10.
And nowhere in that section does Ashihara discuss offsets from a plane. See
id. col. 5, 11. 36-41; accord App. Br. 5.
In the Answer, the Examiner further explains that the limitation at
issue is inherent to Ashihara's operation. Ans. 2-3. The Examiner finds
that Ashihara uses additional planes to display different images. Id. at 3.
The different images, in the Examiner's view, are not viewable by all
occupants. Id. But apart from citing the above-discussed passage, the
Examiner provides no further support for these findings. See id. Indeed, we
find no discussion in Ashihara that images viewable by the driver and
assistant are displayed on different planes. Accord Reply Br. 4.
Based on the record and the evidence set forth by the Examiner,
Appellants have persuaded us of error in the Examiner's obviousness
rejection of claim 52. Accordingly, we do not sustain the Examiner's
rejection of that claim or independent claims 78 and 79, which also recite
displaying items in a plane that is offset away from the viewer relative to a
reference plane. Because we do not sustain the Examiner's rejection of
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claims 52, 78, and 79, we also do not sustain the rejection of claims 53, 54,
56, 65---69, and 80-85, which depend from claims 52 or 79.
THE ANSWER'S ALTERNATIVE GROUNDS OF REJECTION
In the Answer, the Examiner presents two alternative grounds for
rejecting the claim, which grounds assume that Ashihara does not teach the
recited step of displaying items in a plane that is offset away from the viewer
relative to a reference plane. Ans. 4--5. That is, the Examiner finds that the
limitation at issue additionally would have been obvious over Inomae and
Schowengerdt alone---eliminating the need for Ashihara. See id. The two
alternate rationales are discussed in the following sections.
I
In a first alternative rationale, the Examiner finds that Schowengerdt
displays items in different layers, which creates a blurring effect. Id. (citing
Schowengerdt i1 l 03, Figs. 16, l 7). According to Appellants, though,
Schowengerdt discloses that the viewer's fixation changes, not the recited
plane. Reply Br. 5-6. We agree with Appellants (id.) that the Examiner has
not shown that Schowengerdt' s focal plane corresponds to the recited plane.
Schowengerdt's display system provides stereo images to match
changes in a viewer's focus. Schowengerdt i-f 103, cited in Ans. 4--5. In
particular, Schowengerdt' s system optically combines light from multiple
focus channels (display elements) and superimposes the output to create a
coherent scene. Schowengerdt i-fi-1 99, 101. Images displayed on different
focus channels have different focus levels. Id.
For example, Schowengerdt projects background images with
collimated (parallel) light and foreground images with diverging light. Id.
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To accomplish this, Schowengerdt uses a collection of lenses, mirrors, and
beam splitters to optically direct light to the viewer's eyes in a particular
way. Id. i-f 102; see also id. Fig. 15 (illustrating the components of
Schowengerdt's display system). The viewer then is able to look around a
virtual scene by shifting fixation between focal planes. Id. i-f 103.
The Examiner does not explain how Schowengerdt's focal planes are
used to stereoscopically display Inomae' s menus or menu items. See
Ans. 4--5. The claim requires a specific arrangement of menus on a plane.
But at most, the Examiner has shown that Schowengerdt's stereoscopic
display uses planes to achieve the above-described focus cues, which is
insufficient to establish that the recited arrangement using those planes
would have been obvious. The Examiner never explains, for example,
which of Schowengerdt's planes corresponds to the recited reference plane
or how Schowengerdt discloses an offset. See id. In fact, the Examiner's
rejection altogether lacks an articulated rationale for combining the prior art,
other than the unsupported conclusion, "to achieve a predictable result."
Ans. 5. Accordingly, we agree that the Examiner has not established that
Schowengerdt in combination with Inomae, under this first alternative
rationale, teaches displaying items in a plane that is offset away from the
viewer relative to a reference plane, as recited in claim 52.
II
In a second alternative, the Examiner finds that Inomae' s items
"float." Ans. 4 (citing Inomae i-f 36). According to the Examiner, one of
ordinary skill in the art would recognize that "floating" means offset to a
reference plane, and "[i] would be reasonable to one of ordinary skill in the
art to interpret 'floating' items as 'offset to a reference plane' because
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floating action requires the items to change planes (i.e. floating back and
forth)." Ans. 4.
We understand the Examiner's position to be, then, that the claimed
reference plane is the further of the planes between which the objects float
back and forth. We see no support for the Examiner's reasoning, though.
As pointed out by Appellants, Inomae' s items could be visible in a single
plane. Reply Br. 5. Accordingly, Inomae's items could float by moving up
and down in that same plane or floating in a stationary manner, rather than
towards and away from the viewer relative to some offset plane.
The Examiner further finds that Inomae' s images are displayed in an
overlapping manner. Ans. 4 (citing Inomae i-f 53). In the cited paragraph,
Inomae refers to the image of an air vent overlaps with the image of an
arrow as shown in Figure 4C. Inomae i-f 53. But we agree with Appellants
that Inomae does not suggest sufficiently that overlapping means that the
images are presented at different distances. Reply Br. 5. Here, Inomae
provides no details regarding how the image is formed. See Inomae i-f 53.
Inomae' s process could instead, for example, merely superimpose the
images in the same plane. Notably, Inomae's figures do not show any
hatching between the square and the arrow-the overlapping images-to
indicate depth, as is done with the square and background. See id. Figs. 4C-
D. On this record, there is insufficient evidence to reasonably suggest that
this overlapping condition teaches the limitation at issue.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner's obviousness rejection of claim 52. Accordingly, we do not
sustain the Examiner's rejection of that claim, as well as independent claims
78 and 79, which also recite displaying items in a plane that is offset away
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Application 11/911,600
from the viewer relative to a reference plane. Because we do not sustain the
Examiner's rejection of claims 52, 78, and 79, we also do not sustain the
rejection of claims 53, 54, 56, 65---69, and 80-85, which depend from claims
52 and 79.
NEW GROUND OF REJECTION
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claim 52 under 35 U.S.C. § 102(b) as
anticipated by Inomae or, in the alternative, obvious over Inomae under
35 U.S.C. § 103(a).
In rejecting claim 52, we adopt the Examiner's findings that Inomae's
menu items-i.e., selection blocks and balls-shown in Figures 4A through
D, are stereoscopically represented in the form of hierarchical menu
structures on a display device, as recited in claim 52. Final Act. 2-3.
Inomae;s Figure 4A is reproduced below:
OPERATEO-UNlT SELECTlON IMAGE
F/Gw 4A
,...--~
('/ \
I~··· AUDiO )
. ;/)
. __ /
~
\ r
\ !
Inomae Figure 4A shows three selection balls displayed in the virtual
space.
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Application 11/911,600
Notably, Appellants argue that Inomae's selection "balls are visible on
the same plane, presented next to each other, for a user to select."
Reply Br. 5.
Accepting Appellants' argument as true, Inomae anticipates claim 52.
Specifically, assuming Inomae's selection balls are visible next to each other
on the same plane, as Appellants argue (Reply Br. 5), a top down view of
Inomae's three-dimensional space would conceptually be arranged as
follows:
An illustration shows Inomae's three selection balls (represented by
three solid circles)2 arranged in a row on a plane that is normal to the
page (represented by a dotted line) viewed by a user (represented by a
solid dot at the bottom of the image) positioned at distances A, B, and C
from the plane (represented by labeled dash-dot lines).
As shown above, distance A, for example, is the hypotenuse of the
right triangle. By the Pythagorean Theorem, the square of the length of the
2 Here, we assume that Inomae's balls are represented as spherical objects,
and the balls are illustrated in that way. If the balls are planar objects, then
the distances to the objects from the viewer would be equal to the distance to
the plane. In the case of a sphere, each distance to the surface of the sphere
from the user would be less than the distance to the plane by an amount
equal to each sphere's radius.
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Application 11/911,600
hypotenuse of a right triangle is equal to the sum of the squares of the other
two sides. That is, the hypotenuse-i.e., distance A above-is always
different from either of the other two sides-i.e., distance B above.
Therefore, the item on the far left (Air Conditioner in Inomae's Figure 4A)
is at a different distance to the viewer than the middle item (Navigation in
Inomae's Figure 4A). 3 Accordingly, if the selection balls are visible on the
same plane, at least two balls "appear at different distances to a viewer," as
recited in claim 52.
Even if Inomae must be interpreted so narrowly as not sufficiently
supporting Appellants' contention (Reply Br. 5) that the selection balls are
in a common plane, it nevertheless would have been at least obvious to
arrange Inomae' s selection balls so as to appear specifically in the same
plane. Doing so would have amounted to nothing more than a
rearrangement of known elements with no change in their respective
functions to yield predictable results. "A person of ordinary skill is also a
person of ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007).
We further find that Inomae' s selection balls, in the above-described
configuration, "are displayed in the representing step in a plane that is offset
[i.e., spaced] away from the viewer relative to a reference plane," as recited
in claim 52. Notably, claim 52 does not require calculating or determining
the reference plane, for example, by generating or referring to some data
representing the plane. Rather, the recited reference plane could be any
3 It is possible that a user's eye could be positioned halfway between two
balls such that the distances A and B are equal, but in this case, the distance
C still would be different from the distances A and B.
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Application 11/911,600
conceptual plane within Inomae' s viewing space. That is, Inomae' s three-
dimensional viewing space contains an infinite number of reference planes
between the viewer (the bottom-most solid dot pictured above) and the
stated plane passing through the three selection balls (the dashed line
pictured above). In this way, the plane passing through those three selection
balls where the menus or menu items are displayed is then spaced or offset
away from the viewer relative to at least one reference plane (e.g., any of the
hypothetical planes that exist at some arbitrary distance between the viewer
and the displayed, menu plane) in the manner recited in claim 52.
Pursuant to our discretionary authority under 3 7 C.F .R. § 41. 50(b ),
then, we enter new ground of rejection for claim 52 alternatively under
§§ 102 and 103. Although we decline to reject all claims under our
discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our
decision does not mean that the remaining claims are necessarily patentable.
Rather, we merely leave the patentability determination of these claims to
the Examiner. See MPEP § 1213.02.
THE OTHER OBVIOUSNESS REJECTIONS
We do not sustain the Examiner's rejection of dependent claims 57-
64, 70-77, and 86 (Final Act. 10-16) for the same reasons discussed above
in connection with independent claims 52 and 79. The additional references,
Kataoka and Tubidis, were not relied upon to teach the recited arrangement
of items on planes, and, thus, do not cure the deficiency explained
previously. See id.
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Application 11/911,600
DECISION
The Examiner's decision rejecting claims 52-54 and 56-86 is
reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new, alternative grounds of rejection for independent claim 52 under
35 U.S.C. §§ 102 and 103.
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.
§ 1.136(a)(l )(iv).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 the appeal 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. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
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Application 11/911,600
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure§ 1214.01.
REVERSED
37 C.F.R. § 41.50(b)
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