VOLKSWAGEN AG

Patent Trials and Appeals Board

Jul 30, 2021

2021001387 (P.T.A.B. Jul. 30, 2021)

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.
15/716,109 09/26/2017 Sven HOEHNE 117614.0269932 4814
26646 7590 07/30/2021
Hunton Andrews Kurth LLP/HAK NY
2200 Pennsylvania Avenue NW
Washington, DC 20037
EXAMINER
FORTINO, ASHLEY
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
uuspto@hunton.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN HOEHNE
Appeal 2021-001387
Application 15/716,109
Technology Center 2100

Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, all of the claims under
consideration. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments
were heard on July 20, 2021. A transcript of that hearing will be added to
the record in due time.
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as VOLKSWAGEN AG.
Appeal Brief filed July 9, 2020 (“Appeal Br.”) at 1.
Appeal 2021-001387
Application 15/716,109

2
CLAIMED SUBJECT MATTER
Summary
Appellant’s claimed subject matter relates to “displaying information,
in which a portion of a list is displayed on a display area, which includes a
plurality of list entries.” Spec. 1:13–15.2 The “displayed portion of the list
may be changed in a manner that is simple and intuitive for the user such
that the operator action required for this purpose may be performed as
quickly as possible.” Id. at 4:6–10. “A list should be understood as a data
set that is divisible into a plurality of data units. The data units then
correspond to the list entries.” Id. at 4:19–22. “The list may include a
plurality of audio or video files.” Id. at 4:28. Using a “first operator action,
[e.g., vertical scrolling], the user is able to run through the entries of the list
consecutively.” Id. at 4:22–24. Using a second operator action, e.g.,
horizontal scrolling, “makes it possible to skip multiple entries in order to
reach the desired entry more quickly.” Id. at 5:5–23.
Exemplary Claim
Claims 1 and 7 are independent. Claim 1, reproduced below with
limitations at issue italicized, exemplifies the claimed subject matter:
1. A method for displaying information, comprising:
displaying, on a display area, a portion of a list including
a plurality of list entries;

2 In addition to the Appeal Brief noted above, we refer to: (1) the original
Specification filed September 26, 2017 (“Spec.”); (2) the Final Office
Action mailed October 21, 2019 (“Final Act.”); (3) the Examiner’s Answer
mailed October 19, 2020 (“Ans.”); and (4) the Reply Brief filed December
21, 2020 (“Reply Br.”).
Appeal 2021-001387
Application 15/716,109

3
changing the displayed portion of the list by a first
operator action of a user including selecting a list entry and
steering a movement of the selected list entry in a first
direction;
consecutively running through the entries of the list by
the first operator action; and
skipping multiple list entries by a second operator action
including steering a movement of a list entry in a second
direction different from the first direction, to reach a list entry
that is not included in the displayed portion of the list entries
displayed while performing the second operator action;
wherein at least one operator action includes a movement
on a touch-sensitive surface of an input device arranged on the
display area; and
wherein the second operator action includes a movement
that starts with a touch of the touch-sensitive surface at a
position at which a list entry of the portion of the list is
displayed.
Appeal Br., Claims Appendix (Claims App.) 1.
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Vronay US 2006/0048076 A1 Mar. 2, 2006
Ostojic US 2007/0028270 A1 Feb. 1, 2007
Usuda US 7,225,101 B2 May 29, 2007
Williams US 2010/0001960 A1 Jan. 7, 2010

Appeal 2021-001387
Application 15/716,109

4
REJECTIONS
The Examiner rejects the claims as follows under 35 U.S.C. § 103(a):
Claims References Final Act.
1–12 Non-Statutory Double Patenting3 2
1–4, 6–8, 10, 12 Ostojic, Vronay, Williams 7
5, 9, 11 Ostojic, Vronay, Williams, Usuda 17
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
We disagree with Appellant that the Examiner errs in rejecting claims
1–12, and we adopt as our own the findings set forth by the Examiner for
these claims to the extent consistent with our analysis herein. Final Act. 7–
21; Ans. 16–21.
Independent claim 1 recites, in part, “skipping multiple list entries by
a second operator action including steering a movement of a list entry in a
second direction different from the first direction, to reach a list entry that is
not included in the displayed portion of the list entries displayed while
performing the second operator action.” Claims App. 1.
The Examiner finds Ostojic teaches or suggests this limitation. Final
Act. 8; Ans. 16–19 (citing Ostojic ¶¶ 66–68, Fig. 8).
Appellant argues that “Ostojic does not include ‘skipping multiple list
entries . . . to reach a list entry that is not included in the displayed portion of

3 The Examiner has withdrawn the double patenting rejection of claims 1–12
in view of the Terminal Disclaimer filed July 9, 2020. Ans. 16.
Appeal 2021-001387
Application 15/716,109

5
the list entries displayed while performing the second operator action.’”
Appeal Br. 5. In particular, Appellant argues “any ‘skipping’ described by
Ostojic involves merely scrolling to an adjacent collection of items that is
included in the displayed collection. In other words, Ostojic does not . . .
suggest, skipping over ‘Avril Lavigne’ 806 from ‘Air’ 804 to some other
collection of items not currently displayed in the media UI.” Id.
Figure 8 of Ostojic is reproduced below.

Figure 8 of Ostojic shows a user interface that displays a music library
comprised of individual songs. Various artists, such as Air and Avril
Lavigne, are laid out horizontally across the screen, while individual songs
are laid out horizontally and vertically.
Appeal 2021-001387
Application 15/716,109

6
In response to Appellant’s argument that “Ostojic does not include
[]skipping multiple list entries . . . to reach a list entry that is not included in
the displayed portion,” the Examiner finds that in Ostojic:
If a user wants to instead skip to a different class within the list,
“the user is provided with the ability to move by column (e.g.,
group), which allows the user to “skip” between collections of
items, such as from ‘Air’ to ‘Avril Lavigne’,” rather than having
to “move individually through each media item, one at a time.”
Ans. 17 (citing Ostojic ¶ 68). The Examiner additionally finds that “Ostojic
discloses an interface enabling a user to navigate the entirety of a music
library collection, or a global list of music, divisible into songs, or list
entries.” Id. (citing Ostojic ¶¶ 67, 68).
Because the rejection turns on the meaning of “skipping,” we must
interpret this term before we compare the claim to the cited prior art. During
prosecution, claims must be given their broadest reasonable interpretation in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Appellant appears to argue that we should interpret skipping narrowly
to mean jumping over intervening list entries without displaying the
intervening entries to reach a list entry that is not included in the displayed
portion. Appeal Br. 5; Reply Br. 2–3. Appellant does not argue support for
this interpretation in the claim language. Id. To the contrary, Appellant’s
interpretation that skipping means jumping over intervening list entries
without displaying the intervening entries relies on limitations not recited in
the claim. Moreover, Appellant does not explain how the Specification
supports this construction as the broadest reasonable interpretation.
Appeal 2021-001387
Application 15/716,109

7
Appellant relies, inter alia, on page 5 of the Specification to support the
skipping limitation. Appeal Br. 2. The cited portion of the Specification
discloses:
For example, a list entry may be moved by the operator action in
the horizontal direction in order to scroll through the individual
list entries. In this case, a vertical movement of the list entry has
the result that multiple list entries are skipped so as to reach a list
entry that was not yet displayed when the respective list entry
was moved in the vertical direction. Of course, any other
directional combinations are possible for the two operator
actions as long as the two directions for the operator actions
differ.
Spec. 5:14–23.
Thus, the Specification indicates that skipping list entries refers to an
operator action that reaches a list entry that is not yet displayed. Consistent
with the Specification, the Examiner appears to interpret the claimed
skipping to include scrolling through intervening list entries to reach a non-
displayed entry, without selecting any of the intervening entries.
Turning back to the Examiner’s findings, based on this interpretation,
we agree with the Examiner that Ostojic teaches the limitation at issue.
Ostojic’s user interface 802 “provides global navigation between artists
horizontally such that a user may move through the entire body of artists
using left/right.” Ostojic ¶ 67. Thus, Ostojic describes scrolling left/right to
switch from, e.g., a first column including songs by the artist Air to, e.g.,
another column including songs by the Dave Matthews Band. Ostojic
¶¶ 66–68, Figs. 8, 16. By doing so, Ostojic teaches, or at least suggests,
skipping multiple list entries, in the form of songs by other artists whose
names begin with letters between A and C, to reach a Dave Matthews Band
Appeal 2021-001387
Application 15/716,109

8
song that is not included in the displayed portion. Moreover, we are
unpersuaded that Ostojic merely teaches scrolling to an adjacent collection
of items that is included in the displayed collection, such as from Avril
Lavigne’ 806 to ‘Air’ 804. Appeal Br. 5. Rather, Ostojic teaches a user
interface that allows a user to navigate to all artists from A to Z in a user’s
media library, thereby allowing the user to skip multiple list entries to reach
an entry that is not currently displayed. Ostojic ¶¶ 66–68.
Appellant further argues “Ostojic’s ‘user interface’ does not describe
such a feature because horizontal navigation of the interface results in
reaching a different artist (and not a song), whereas vertical navigation
results in scrolling songs of a particular selected artist.” Reply Br. 3.
We are unpersuaded because scrolling horizontally to Avril Lavigne
in Ostojic also results in the display of various songs by Avril Lavigne.
Ostojic Fig. 8. Although additional vertical navigation may be required to
scroll to a particular song by Avril Lavigne, such additional vertical
navigation is not excluded by Appellant’s claim 1. That is, claim 1 merely
recites “skipping multiple list entries by a second operator action . . . to
reach a list entry that is not included in the displayed portion.” Claims
App. 1.
Similarly, Ostojic’s horizontal scrolling allows additional songs to be
reached, e.g., displayed, such as Dave Matthews Band songs that are not
currently included in the displayed portion. Ostojic ¶¶ 66–68, Figs. 8, 16.
Claim 1 does not preclude any additional vertical scrolling that may be
required in Ostojic to reach certain Dave Matthews Band songs that are not
at the top of the Dave Matthews Band column, after horizontally scrolling to
that column.
Appeal 2021-001387
Application 15/716,109

9
Next, Appellant argues that “claim 1 requires that the second operator
action skip to entries of the same list that the user can change/scroll with the
first operator action” and that “Ostojic does not describe this subject matter,
because, as described more fully above, Ostojic’s up/down scrolling causes
scrolling of music of a selected artist, which is a separate and distinct list
than that effected through Ostojic’s left/right scrolling, a list of artists.”
Appeal Br. 5.
We are unpersuaded because we agree with the Examiner’s finding
that “Ostojic discloses an interface enabling a user to navigate the entirety of
a music library collection, or a global list of music, divisible into songs, or
list entries.” Ans. 17. Similar to Appellant’s claimed invention, Ostojic
teaches a global list of entries comprising all of the individual songs in the
user’s song library. Also similar to Appellant’s claimed invention, Ostojic’s
“media items are grouped by artist into ‘collections of items’, or classes,
each class vertically listing songs by the respective artist.” Id. (citing
Ostojic ¶ 68). Because each of the songs that is vertically listed by
respective artist also belongs to the “global list of music” in the user’s
“music library collection” (Ans. 17), Ostojic teaches, or at least suggests,
that horizontal scrolling allows the user to “skip to entries of the same list
that the user can change/scroll with” vertical scrolling, i.e., the user’s “music
library collection.” (Appeal Br. 5).
Independent claim 1 further recites, in part, “consecutively running
through the entries of the list by the first operator action.” Claims App. 1.
The Examiner finds Ostojic teaches or suggests this limitation. Final
Act. 8 (citing Ostojic ¶ 67).
Appeal 2021-001387
Application 15/716,109

10
In the Reply Brief, Appellant argues for the first time that “claim 1
requires that every entry on the list to be capable of being displayed by the
first operator action alone,” and Ostojic fails to teaches this limitation.
Reply Br. 5.
We decline to consider such an argument raised for the first time in
the Reply Brief. Appellant’s argument is deemed waived, in the absence of
a showing of good cause by Appellant, because the Examiner has not been
provided a chance to respond. See 37 C.F.R. § 41.41(b)(2) (2012); In re
Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not
first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief, will
not be considered when filed in a Reply Brief, absent a showing of good
cause). On this record, Appellant has provided no such showing of good
cause.
Even if we were to consider this argument as timely, we are
unpersuaded because the argument is not commensurate with the scope of
the claim, which does not require “every entry on the list to be capable of
being displayed by the first operator action alone.” Reply Br. 5 (emphasis
added). We, therefore, agree with the Examiner’s finding that Ostojic
teaches this limitation (Final Act. 8), because Ostojic, at minimum, allows a
user to run through each song listed in each column consecutively and
because claim 1 does not preclude moving from column to column as part of
the process of running through the list of songs.
Appellant next argues that Williams “does not describe that a second
operator action causes skipping multiple list entries.” Appeal Br. 7 (citing
Appeal 2021-001387
Application 15/716,109

11
Williams ¶ 17). This argument is unpersuasive because the Examiner relies
on Ostojic, rather than Williams, to teach or suggest this limitation, as
discussed above.
Accordingly, Appellant does not persuade us of reversible error in the
Examiner’s obviousness rejection of independent claim 1. We, therefore,
sustain the Examiner’s rejection of that claim, as well as the rejection of
claims 2–12, which Appellant does not argue separately or only nominally
argues separately. Appeal Br. 7.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–8,
10, 12
103(a) Ostojic, Vronay,
Williams
1–4, 6–8,
10, 12

5, 9, 11 103(a) Ostojic, Vronay,
Williams, Usuda
5, 9, 11
Overall
Outcome
1–12
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED