AUDI AG

Patent Trials and Appeals Board

Sep 1, 2021

2020004299 (P.T.A.B. Sep. 1, 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.
15/611,272 06/01/2017 Joris MERTENS 4557.0260001 8367
26111 7590 09/01/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
FLORES, ROBERTO W
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORIS MERTENS, GEORG HASLINGER, JACQUES HELOT,
and MARKUS KLUG
Appeal 2020-004299
Application 15/611,272
Technology Center 2600
Before HUNG H. BUI, ADAM J. PYONIN, and PHILLIP A. BENNETT,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Audi AG. Appeal
Br. 3.
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Application 15/611,272

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STATEMENT OF THE CASE
Introduction
The Application is directed to “a digital roller blind with interactive
peepholes” provided in a window such as “the transparent pane of a
vehicle.” Spec. ¶¶ 68–69. Claims 11, 12, 14–25, and 27–30 are pending;
claims 11, 18, and 19 are independent. Appeal Br. 7–13. Claim 11 is
reproduced below for reference (emphases added):
11. A method for operating an interactive visibility screen on
a transparent pane of a pane device in a motor vehicle, wherein
the interactive visibility screen is generated on the pane by means
of a display unit of the pane device by pixel-wise fade-in of
opaque image points, wherein the opaque image points form a
coherent visibility screen area, the method comprising:
detecting an activation action by a user by means of a
detection device, the detection of the activation action activating
the display unit, the detection of the activation action further
allowing the user to subsequently use an operational action to
adjust the visibility screen;
detecting the operational action by the user by means of
the detection device, wherein the operational action comprises a
selection of a setting range and a movement relative to the pane;
setting an expansion of the coherent visibility screen area
at the setting range as a function of the movement relative to the
pane by means of a control device;
opening at least one predetermined area of the coherent
visibility screen area based at least in part on the setting; and
automatically closing the at least one opened
predetermined area of the coherent visibility screen after a
predetermined period of time after detecting the operational
action.
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References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Broude US 2009/0058126 A1 Mar. 5, 2009
Pisz US 2015/0077327 A1 Mar. 19, 2015
Dryselius US 2015/0097389 A1 Apr. 9, 2015
Iwakawa US 2016/0104437 A1 Apr. 14, 2016

Claims 11, 12, 14, 16–21, 23–25, 27, 29, and 30 are rejected under
35 U.S.C. § 103 as being unpatentable over the combined teachings of
Dryselius, Iwakawa and Broude. Final Act. 2, 3.
Claims 15, 22, and 28 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Dryselius, lwakawa and
Broude in view of Pisz. Final Act. 9.
ANALYSIS
Appellant argues the Examiner’s rejection of claim 11 is in error,
“because the Examiner points to the same disclosure of Dryselius as
allegedly corresponding to both the claimed ‘activating the display unit’ and
the claimed ‘closing the at least one opened predetermined area.’” Appeal
Br. 11. Specifically, Appellant contends “the Examiner asserts that the
downwards displacement of the sunscreen 2 [of Dryselius] corresponds to
both” limitations, which “completely ignores the specific sequencing and
relational aspects among the claim features of the independent claims.” Id.
The disputed limitations of claim 11 recite, inter alia, “the detection
of the activation action further allowing the user to subsequently use an
operational action,” “detecting the operational action,” and “automatically
closing the at least one opened predetermined area of the coherent visibility
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screen . . . after detecting the operational action.” That is, claim 11 recites,
three steps: detecting each of (1) an activation action and (2) an operational
action, followed by the (3) automatically closing a predetermined area. The
Specification shows the predetermined area as being “at least partially, i.e.[,]
partially or completely, surrounded by the remaining visibility screen area.”
Spec. ¶ 13; see also Figs. 2–5.
The Examiner relies on Dryselius’s Figure 5b for teaching the
disputed limitations. See Final Act. 3; Ans. 5. In this Figure, Dryselius
depicts a user closing a digital sunshade. See Dryselius ¶ 43 (“FIG. 5b
illustrates an example wherein the user provides an input . . . . in a manner
similar to closing a mechanical rolling blind.”). Such sunshade, however,
comprises the entire visibility screen; thus, we agree with Appellant that
closing the sunshade of Dryselius does not teach or suggest closing a
“predetermined area of the coherent visibility screen,” as understood by one
of ordinary skill in light of the Specification. See Appeal Br. 9; In re Man
Mach. Interface Techs. LLC, 822 F.3d 1282, 1287 (Fed. Cir. 2016) (“the
proper BRI construction is not just the broadest construction, but rather the
broadest reasonable construction in light of the specification.”). Similarly,
we agree with Appellant that Dryselius’s closing of a sunshade fails to teach
all three steps of claim 11. See Appeal Br. 11; Cf. Becton, Dickinson & Co.
v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where
a claim lists elements separately, the clear implication of the claim language
is that those elements are distinct components of the patented invention.”)
(internal quotations and formatting omitted). For at least these reasons, we
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are persuaded that Dryselius fails to teach or suggest the disputed
limitations.
In the Answer, the Examiner further cites to Iwakawa’s teaching of
“opening and closing holes in [F]igures 19 and 20a-c, which is similar to
Appellant’s invention.” Ans. 4. To the extent the Examiner relies on
Iwakawa for the disputed limitations, however, we are persuaded by
Appellant that the Examiner’s rejection is in error. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418, 421 (2007) (“[A] patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art,” and a “factfinder . .
. must be cautious of arguments reliant upon ex post reasoning.”). We agree
with Appellant that “the Examiner fails to set forth any obviousness
rationale or motivation to combine Dryselius and Iwakawa to implement
Iwakawa’s alleged ‘opening and closing holes’ in Dryselius’s sunscreen.”
Reply Br. 9. Rather, the rejection’s reasoning quotes Iwakawa’s disclosure
that a shade “is arranged at a desired position,” which appears to merely
duplicate Dryselius’s shade arrangement system without explaining how
Iwakawa’s teachings integrate with the teachings of Dryselius. Final Act. 4
(quoting Iwakawa ¶ 53). Accordingly, we find the rejection of claim 11 is in
error because the Examiner has not articulated a reason to combine the
references that is sufficient to support the conclusion of obviousness. See
Manual Patent Examining Procedure § 2144 (“rationales should not be
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treated as per se rules, but rather must be explained and shown to apply to
the facts at hand”).
We do not sustain the obviousness rejection of claim 11, of
independent claims 18 and 19 which recite similar limitations, or the
rejections of the claims dependent thereon.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11, 12, 14,
16–21, 23–
25, 27, 29,
30
103 Dryselius, Iwakawa,
Broude
11, 12, 14,
16–21, 23–
25, 27, 29,
30
15, 22, 28 103 Dryselius, Iwakawa,
Broude, Pisz
15, 22, 28
Overall
Outcome
11, 12, 14–
25, 27–30

REVERSED