Mikkelsen, ChristineDownload PDFPatent Trials and Appeals BoardMay 26, 202013264684 - (D) (P.T.A.B. May. 26, 2020) 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. 13/264,684 10/14/2011 Christine Mikkelsen 1920-0192PUS1 3154 127226 7590 05/26/2020 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER FIBBI, CHRISTOPHER J ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 05/26/2020 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTINE MIKKELSEN ____________ Appeal 2019-003428 Application 13/264,684 Technology Center 2100 ____________ Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and ADAM J. PYONIN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 13, 15–18, 20–25, and 28–34. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on May 15, 2020. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as ABB Research LTD. Appeal Br. 1. Appeal 2019-003428 Application 13/264,684 2 The present invention relates generally to a control system for controlling a technical system, whereby the control system comprises one or more display units that are graphically represented in an arrangement thumbnail. See Spec. 1:4–6. Claim 13 is illustrative: 13. A supervisory control system controlling a power transmission and/or distribution system, said supervisory control system comprising: one or more display units constituting a display working environment and comprising means that visualize information objects related to the controlling of said power transmission and/or distribution system, an arrangement thumbnail comprising a graphical representation of said display working environment comprising thumbnail images of said one or more display units, and means for arranging said information objects by operations performed within said arrangement thumbnail, wherein said means for arranging is configured to receive a user input signal related to a desired location of at least one of said objects in a specific one of a plurality of parts of one of said display units, wherein said arrangement thumbnail is initially hidden and pops up on the one of said display units as soon as the at least one of said objects starts to be dragged and keeps displayed on the one of said display units during dragging of the at least one of said objects, and the thumbnail image of the one of said display units on which said arrangement thumbnail is provided is present in the arrangement thumbnail, said user input signal comprising operations performed within said arrangement thumbnail through moving of the at least one of said objects over the thumbnail image of said one display unit within the arrangement thumbnail, provide a feedback signal visualizing where on said one display unit the at least one of said objects will be placed, and output said feedback signal on said one display unit during dragging of the at least one of said objects over the Appeal 2019-003428 Application 13/264,684 3 thumbnail image of said one display unit but before the at least one of said objects is dropped to said one display unit, and arrange, in response to receiving said user input signal, the at least one of said objects in the specific one of the plurality of parts of said one display unit dependent on whereto a specific one of a plurality of parts on the thumbnail image of said one display unit in the arrangement thumbnail said information objects are dropped, wherein each of the plurality of parts of said one display unit corresponds to one of the plurality of parts on the thumbnail image of said one display unit. Claim 13 (emphasis added). Appellant appeals the following rejection: Claims 13, 15–18, 20–25, and 28–34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Buchmann (US 2007/0283285 A1, Dec. 6, 2007), Nelson (US 2009/0300541 A1, Dec. 3, 2009), Muller (US 7,552,399 B2, June 23, 2009), and Nurmi (US 2009/0276701 A1, Nov. 5, 2009). We review the appealed rejection for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Issue: Did the Examiner err in combining Nelson’s teaching, i.e., the thumbnail image of the one of said display units on which said arrangement thumbnail is provided, is present in the arrangement thumbnail, with Buchmann’s configuration? Appeal 2019-003428 Application 13/264,684 4 Appellant contends: In other words, in Buchmann, the alleged arrangement thumbnail is provided on the user interface 200 of the local controller 30. However, it can be clearly understood that there is no need for the alleged arrangement thumbnail provided on the user interface 200 of the local controller 30 in Buchmann to further display a thumbnail image of the user interface 200 of the local controller 30, since the local controller 30 is used to control the display content for each of the display units 20, and is not part of the display units 20, and there will be no display content to be assigned to the controller 30. Appeal Br. 11. In other words, Appellant contends there is no apparent reason to modify Buchmann’s configuration by adding a thumbnail of the controller 30 itself to the alleged arrangement thumbnail 202, partly because the controller 30 is already a control hub that controls the display content for each display unit, i.e., nothing further can be added/displayed on controller 30’s display regarding the technical system that is not already included. We agree with Appellant. Here, the Examiner admits that Buchmann does not specifically teach the recited “thumbnail image of the one of said display units on which said arrangement thumbnail is provided is present in the arrangement thumbnail.” See Final Act. 5–6. The Examiner, instead, relies upon Nelson to teach and/or suggest such features (see id. at 6–9), which Appellant does not explicitly rebut. See Appeal Br. 11. Instead, it appears that Appellant is attacking the Examiner’s rationale for making the combination, i.e., “there is clearly no ‘apparent reason’ that would have prompted one skilled in the art to modify Buchmann in view of the teachings of Nelson.” Id. Appeal 2019-003428 Application 13/264,684 5 As such, we shall look for error in the Examiner’s proffered reasoning for combining the teachings. Without an articulated rationale based on rational underpinning for modifying the reference, the Examiner’s rejection may be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). On reflection, we find the Examiner has at best established that individual parts of the claimed invention were known in the prior art. For example, the Examiner finds that Nelson teaches the limitation missing from Buchmann, i.e., the thumbnail image of the said display unit on which the arrangement thumbnail is provided, is present in the arrangement (see Final Act. 7; see also Nelson’s Fig. 4 and ¶ 15). However, even if Nelson teaches the aforementioned feature, as proffered by the Examiner, what is missing is a rational underpinning for the conclusion that a skilled artisan, with no knowledge of the claimed invention, would select the elements from Nelson for combination with Buchmann in the manner claimed. “[A] rejection cannot be predicated on the mere identification . . . of individual components of claimed limitations. Rather particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.” Ecolochem, Inc. v. Southern Calif. Edison Co., 227 F.3d 1361, 1375 (Fed. Cir. 2000). Here, although the Examiner determines that “one of ordinary skill in the art . . . would recognize that adding Nelson’s method of positioning content into a specific region of a display to Buchmann’s method . . . would allow for a more granular, efficient and intuitive way for a user to organize Appeal 2019-003428 Application 13/264,684 6 and position windows within the user’s desktop display environment” (Ans. 5), the Examiner’s reliance on Nelson’s method of positioning content into specific regions of a display is distinct from and fails to sufficiently explain why one of ordinary skill in the art would have modified Buchmann’s configuration to also include a thumbnail of the controller 30. Stated differently, the Examiner’s aforementioned motivation for combining Nelson’s teaching with Buchmann’s teachings has no bearing on how Nelson’s palette 18 (see Nelson’s Fig. 1; ¶ 41) could be combined with Buchmann’s graphical user interface 220 shown on the controller unit 30. See Buchmann’s Fig. 3. As a result, the Examiner fails to provide sufficient evidence that a skilled artisan, with no knowledge of the claimed invention, would select from Nelson — providing thumbnail images of all monitors in the arrangement—, given the capabilities of Buchmann’s controller unit, which displays all the information of the other monitors. That is, the Examiner has not demonstrated any need to have a thumbnail image of the controller onto which to drag and drop anything further onto. Because the Examiner’s articulated rationale is not based on a rational underpinning for modifying Buchmann to include the aforementioned feature, the Examiner’s rejection appears to be the result of a hindsight analysis. An obviousness determination cannot rest upon impermissible hindsight reasoning, and to guard against hindsight reasoning the “factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421. Here, the Examiner’s analysis is reliant on ex post reasoning, and lacks a rational underpinning to make the combination. Appeal 2019-003428 Application 13/264,684 7 Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. Accordingly, we will not sustain the Examiner’s obviousness rejection of claims 13, 15–18, 20–25, and 28–34. CONCLUSION Appellant has demonstrated that the Examiner erred in rejecting claims 13, 15–18, 20–25, and 28–34 as being unpatentable under 35 U.S.C. § 103 over Buchmann, Nelson, Muller, and Nurmi. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13, 15–18, 20–25, 28–34 103 Buchmann, Nelson, Muller, Nurmi 13, 15–18, 20–25, 28–34 REVERSED Copy with citationCopy as parenthetical citation