ROBERT BOSCH GMBH

Patent Trials and Appeals Board

Aug 4, 2020

14766695 - (D) (P.T.A.B. Aug. 4, 2020)

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.
14/766,695 08/07/2015 Clemens GUENTHER BOSC.P9302US/1000199286 1038
24972 7590 08/04/2020
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
BOURZIK, BRAHIM
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLEMENS GUENTHER, CHRISTOPH NOACK, and
RAMON AMIRPOUR

Appeal 2019-003083
Application 14/766,695
Technology Center 2100
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Examiner’s
decision to reject claims 16, 18–23, 25, and 29–31, which are all of the
pending claims. See Claims App. 1–7. Claims 1–15, 17, 24, and 26–28 are
canceled. See Final Act. 2; Appellant’s Response After Final Office Action
2, 4 (filed July 16, 2018). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Robert Bosch
GmbH. Appeal Br. 1.
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Introduction
The Specification relates to a computer device having a screen that
displays a graphical screen element (such as a bar) and application programs
A and B. Spec. 2:2–3, 5:10–11. The graphical screen element may include
an operating element for inputting useful data that may be transmitted to
either or both application programs. Id. at 2:16–18, 5:1–4. Application
programs A and B may also exchange useful data with the graphical screen
element. Id. at 5:11–14.
Claims 25 and 29–31 are independent. Claim 25 is illustrative:
25. A computer device comprising:
processing circuitry; and
a display device;
wherein:
the processing circuitry is configured to:
run a first application program, the running
of the first application program causing display, in
the display device, of a first window including a
first graphical user interface interfacing between a
user and the first application program;
run a second application program, the
running of the second application program causing
display, in the display device, of a second window
including a second graphical user interface
interfacing between the user and the second
application program; and
run a third application program, the running
of the third application program causing display, in
the display device and external to the first and
second windows, of a graphical input element;
the first window, the second window, and the
graphical input element are simultaneously and
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independently displayable in the display device and are
independently removable from the display device;
each of the first and second application programs
is configured to perform respective processes to produce
respective outputs using a value of a same defined data
element; and
the third application program is configured to
obtain the value of the data element, which is defined for
use by each of the first and second application programs:
(a) via user input of the value of the data
element using the graphical input element, in
response to which the third application is
configured to propagate the value of the data
element obtained via the user input using the
graphical input element to each of the first and
second application programs essentially in real
time, affecting the respective processes of the first
and second application programs; and also
alternatively
(b) via transmission of the value of the data
element by the first application program to the
third application program in essentially real time
response to user input of the value by direct
interaction with the first application program, in
response to which transmission the third
application program is configured to propagate the
value of the data element to the second application
program essentially in real time, affecting
processes of the second application program.
Claims App. 2–3.
The Rejection
The Examiner rejected claims 16, 18–23, 25, and 29–31 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Holmes et al. (US
2010/0223566 A1; publ. Sept. 2, 2010) (“Holmes”), Kwon (US
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Application 14/766,695
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2006/0047383 A1; publ. Mar. 2, 2006), and DeWitt (US 2006/0236328 A1;
publ. Oct. 19, 2006). Final Act. 7–23.
ANALYSIS
Appellant contends, inter alia,2 the Examiner errs because the cited
prior art does not disclose or suggest the following limitation of claim 25:
the third application program is configured to obtain the value
of the data element, which is defined for use by each of the first
and second application programs: . . . (b) via transmission of
the value of the data element by the first application program to
the third application program in essentially real time response
to user input of the value by direct interaction with the first
application program, in response to which transmission the
third application program is configured to propagate the value
of the data element to the second application program
essentially in real time, affecting processes of the second
application program.
Appeal Br. 6–14; Reply Br. 1–10.
In rejecting claim 25, the Examiner acknowledges that Holmes does
not explicitly disclose limitation (b). Final Act. 12. Nevertheless, the
Examiner finds DeWitt discloses this limitation by forwarding user input for
one or more applications from a multi-application GUI to a server, which
forwards the input data to the corresponding application. Id. at 12–13 (citing
DeWitt ¶¶ 25, 28, 41, Fig. 4). The Examiner explains that Figure 4 of
DeWitt shows a multi-application GUI that has buttons or knobs that are
associated with and linked or mapped to active applications A (30), B (32),
and C (34). Id. at 4–6 (citing DeWitt ¶¶ 20, 41, 42, Fig. 4). According to
the Examiner, DeWitt also discloses an embodiment in which a user
interaction with the buttons on GUI 18 associated with Application B (32)

2 We reverse the Examiner based on a dispositive issue and do not address
all of Appellant’s arguments.
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may result in data forwarded to application A (30). Id. at 6 (citing DeWitt
¶¶ 41, 42).
DeWitt describes a server or application for creating and managing a
unified graphical user interface (“GUI”) that integrates the graphical user
interfaces for multiple applications. DeWitt ¶ 15, Figs. 1, 2, 4. DeWitt
discloses that the server and applications share control over the unified GUI
and use commands for building, modifying, and updating the interface. See
id. ¶¶ 28, 33, 41. For example, “applications 32 and 34 may issue
commands to add their respective content, update graphical user interface
values and register for events.” Id. ¶ 41. Components (such as radio buttons
or knobs) of the unified GUI may be linked or mapped to specific
applications, such that events occurring, which are associated with the
components, may be routed to the corresponding application. Id. ¶¶ 20, 41,
Fig. 4. In addition, data or events related to a component (such as selecting
a radio button) may be broadcast to two or more applications 30, 32, 34. Id.
¶ 42. DeWitt also discloses that
interface data may be routed from the applications 30, 32, 34 to
the server 12 or from the server 12 to the applications 30, 32,
34. For example, an event notification is routed from server 12
indicating an adjustment of a value, input of data, selection,
activation of a button or other user input appropriate for a given
application 30, 32, 34, and “application 30, 32, 34 generates
corresponding interface data, such as a programming call to
alter a display value based on the selection or adjustment.
Id. ¶ 25.
Appellant argues that “[t]he claims . . . require the third application to
. . . forward the data element value (that had been input by the user via direct
interaction with the first application) to a second application,” but in Dewitt,
“the particular Application A-C to which the server 12 issues the command
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in response to the user interaction with the user interface component
provided by server 12 is not forwarded by that particular Application A-C to
any other application.” Appeal Br. 8.
In response, the Examiner begins by interpreting “direct interaction
with the first application program,” as recited in limitation (b) of claim 25.
Ans. 18–20. According to the Examiner, “allowing data input, read or
passed to the application program is direct interact[ion] with the application
program through its interface.” Ans. 20, see also id. at 18 (citing Spec.
5:10–14, 7:19–24). The Examiner therefore interprets “direct interaction
with the first application program” as including “interaction . . . with the first
application program running in the computer and not specifically the
graphical user interface displayed by executing the first application.” Id. at
20. Accordingly, the Examiner maps “the first application program” to
DeWitt’s Application A, the “third application program” to DeWitt’s server
12, and “the second application program” to DeWitt’s Application B or
Application C. Id. at 21.
In view of the foregoing, the Examiner makes two determinations.
First, DeWitt discloses direct interaction with application A through
Application A’s interface in the form of “pass input data . . . received by
server [12] through graphical user interface 18 . . . toward application A
(user),” such that the server directly passes a command (that is, a direct
interaction with Application A) to the interface of application A. Id.
Second, porting or forwarding acquired image data between DeWitt’s
Applications A and B, using server 12 as a bridge, is obvious for one of
ordinary skill in the art. Id. at 23–26 (citing DeWitt ¶¶ 15, 23, 36).
Appellant responds with two arguments. First,
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[t]he Examiner’s interpretation of the functionality of DeWitt’s
server 12 as being considered part and parcel of Applications
A-C for reading upon the present claims is unreasonable, and
no reasonable person, skilled or unskilled in the art, would
interpret the claims’ direct user interaction with the first
application program as covering a user interaction with
Applications A-C in DeWitt, where the interaction is through
the functionality provided by DeWitt’s server 12.
Reply Br. 4. Second,
in DeWitt, even if one of Applications A-C is considered to be
the first application program of the claims . . . , the response by
Applications A-C to server 12 is not a forwarding of that which
was provided to Applications A-C by the user’s interaction with
server 12. Rather, the user interacts with a user interface
element of server 12 to input data, which server 12 then
forwards to one of Applications A-C. That one of Applications
A-C then process[es] the data to generate a response data. It is
the response data — not the value Application A-C received —
that is provided by Application A-C to server 12.
Id. at 4–5.3 Appellant’s arguments are persuasive.
As an initial matter, we agree with Appellant that the
Examiner’s interpretation of “direct interaction with the first
application program” as including a user’s interaction with DeWitt’s
unified GUI is unreasonably broad. That the portion of the unified
GUI with which the user interacts is associated or linked to a
particular application does not correspond to a direct interaction with
the first application program as recited. Rather, this user interaction is

3 See also id. at 5 (“[T]he response provided by Applications A-C to server
12 is not a transmission of the value that the user had provided to
Applications A-C when the user interacted with server 12,” but rather “data
that Applications A-C generated in response the user’s interaction that is
forwarded.”).
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made with an element (unified GUI of the server) that is separate from
applications A–C.
Accordingly, because in DeWitt there is no user input by direct
interaction with application A, the Examiner’s proposed mapping of
“the first application program” to DeWitt’s application A, “the third
application program” to DeWitt’s server, and “the second application
program” to DeWitt’s application B or C does not satisfy the
limitation at issue. Even though DeWitt discloses that applications
A–C can send commands to the server, we find no evidence that any
of these commands were input by a user directly interacting with the
application itself. We also find no evidence that response data
provided by application A, B, or C to the server is the same as the data
element value the user previously input into the unified GUI of the
server that was forwarded to the associated application.
Nor are we convinced that an alternative mapping of DeWitt
would teach or suggest the limitation at issue. For instance, “the first
application program” could be mapped to DeWitt’s unified GUI, and
“the third application program” to application A, B, or C, of DeWitt,
but we find no evidence of application A, B, or C in DeWitt
propagating the data element value received from the unified GUI to
one of the other two applications.
The Examiner additionally finds that Figure 3B of Kwon shows direct
user interaction with the interface of component 203 (first application) that
displays, among other things, an insurance company’s phone number.
Ans. 31–32 (citing Kwon ¶ 34, Fig. 3B). The Examiner explains that, in
Kwon, a user may select the “talk” option on the interface, in response to
which the phone number (data) is passed directly to a microprocessor unit
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(“MPU”) (third application), which controls a different application in the
mobile device and passes the phone number (same data) to a call service
(second application). Id. As Appellant explains, however, “[t]his does not
at all describe intercommunications between different application programs”
“that each provides respective simultaneously displayable graphical user
interfaces in different windows,” nor does it “describe a user inputting a data
value that is forwarded from one application program to another application
program.” Reply Br. 9.
In view of the foregoing, the Examiner has not persuaded us that the
cited prior art teaches or suggests the limitation at issue in claim 25. Nor has
the Examiner articulated an obviousness rationale that fills the gaps in the
rejection. The Examiner asserts that porting or forwarding image data
between applications A and B of Dewitt would have been obvious, but does
not provide any persuasive evidence to support this assertion. “[T]he [PTO]
must make the necessary findings” with “adequate ‘evidentiary basis for its
findings’” and articulate logical and rational reasons supporting its
decisions. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016).
We, therefore, agree with Appellant that the Examiner errs in rejecting
claim 25 as obvious over the combination of Holmes, Kwon, and DeWitt.
This analysis applies with equal force to independent claims 29–31, which
recite a similar limitation for which the Examiner does not cure, and the
rejections of dependent claims 16 and 18–23. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the
independent claims from which they depend are nonobvious”).
Accordingly, we do not sustain the Examiner’s rejection of claims 16, 18–
23, 25, and 29–31 under pre-AIA 35 U.S.C. § 103(a).
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NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection. Specifically, we reject claims 16, 18–23, 25, and 29–31
under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Section 112, first paragraph, states, in relevant part:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same.
35 U.S.C. § 112, first paragraph.
Independent claim 25 recites, in relevant part, “user input of the value
by direct interaction with the first application program.” Independent claims
29–31 each recites a similar limitation. Appellant asserts that written
description support can be found for this limitation on page 5 of the
Specification and in original claim 12. Appeal Br. 3. The relevant portions
of Appellant’s Specification, as filed on August 7, 2015, state that
[g]raphical screen element 100 is . . . a . . . multi-application bar
which is displayed constantly and at a fixed position on the
screen of a computer and may contain frequently required
pieces of information/functions relating to application programs
A, B, and different application programs may be “linked
together,” so to speak, using these pieces of information/
functions. A type of interaction of application programs A, B
with graphical screen element 100 according to the present
invention is shown schematically in Figure 2. It is apparent that
application programs A, B exchange useful data D (for example
in the form of pieces of information and/or context-specific
functions) with graphical screen element 100, i.e., deliver these
to screen element 100 and obtain them from the latter.
Spec. 5:5–14.
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Original claim 12 recites:
[t]he computer device as recited in Claim 11, wherein at least
two mutually independent application programs (A, B) can be
run on the computer device, useful data of a first application
program (A) being transmittable to a second application
program (B) essentially in real time with the aid of the screen
element (100).
Appellant’s Application for Patent 13 (filed August 7, 2017). The original
disclosure, however, does describe that a user inputs a data element value by
direct interaction with application program A. Rather, the Specification and
original claims state only that useful data may be input centrally by a user
via an operating element of screen element 100. See, e.g., Spec. 2:13–14,
2:16–20, 5:1–4, 7:8–11. 8:7–8; Appellant’s Application for Patent 12–14
(original claims 1–15). Similarly, for independent claim 31, the original
disclosure does not appear to state that a data element value is obtained due
to user interaction with an interface of application program A.
On October 30, 2017, however, Appellant amended independent
claims 25, 29, and 30 to recite “user input of the value by direct interaction
with the first application program,” and added independent claim 31,
including the limitation “obtain the value of the data element due to user
interaction with an interface of the first application program.” Appellant’s
Request for Continued Examination (“RCE”) 3–6 (filed October 30, 2017).
It is well-settled that new or amended claims introducing recitations
that are not supported by the original disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967
(CCPA 1971). The purpose of the written description requirement is to
prevent an applicant from later asserting that he invented that which he did
not; the applicant for a patent is therefore required “to recount his invention
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in such detail that his future claims can be determined to be encompassed
within his original creation.” Amgen Inc. v. Hoechst Marion Roussel Inc.,
314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935
F.2d 1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba
requirement (i.e., no requirement that the same terms be used verbatim),
newly added claim recitations must be supported by the original disclosure,
either expressly, implicitly, or inherently. The fundamental factual inquiry
is whether the specification conveys, with reasonable clarity to those skilled
in the art, that, as of the filing date sought, applicant was in possession of the
invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64.
Based on our review of the record, we determine that Appellant’s
original Specification does describe or otherwise demonstrate the inventors
were in possession of “user input of the value by direct interaction with the
first application program,” as recited in claims 25, 29, and 30, or “obtain the
value of the data element due to user interaction with an interface of the first
application program,” as recited in claim 31. A plain reading of these
limitations requires a user to interact or interface with the first application
program (application A) to input or generate a value of a data element.
Although the Specification describes the transmission of data from
application A, the only description of user input or interaction is with an
operating element of screen element 100, which is separate from
applications A and B. See, e.g., Spec. 2:11–14, 2:18–20, 7:8–11, 8:5–8. We
therefore enter a new ground of rejection for independent claims 25 and 29–
31 under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement. For similar reasons, we reject claims 16
and 18–23, which depend therefrom and include the same deficiencies.

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CONCLUSION
We reverse the Examiner’s rejection of claims 16, 18–23, 25 and 29–
31 under pre-AIA 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 16, 18–23, 25
and 29–31 under 35 U.S.C. 112, first paragraph, as failing to comply with
the written description requirement.
37 C.F.R. § 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.
(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
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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 (9th Ed.,
Rev. 08.2017, Jan. 2018).
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/
Basis
Affir
med
Reversed
New
Ground
16, 18–
23, 25,
29–31
103(a)
Holmes,
Kwon,
DeWitt
16, 18–23,
25, 29–31

16, 18–
23, 25,
29–31
112, first
paragraph
Written
Description
4

16, 18–
23, 25,
29–31
Overall
Outcome

16, 18–23,
25, 29–31
16, 18–
23, 25,
29–31

REVERSED
37 C.F.R. § 41.50(b)

4 As explained above, we enter this as a new ground of rejection.