AUDI AGDownload PDFPatent Trials and Appeals BoardSep 1, 20212020004299 (P.T.A.B. Sep. 1, 2021) 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. 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. Appeal 2020-004299 Application 15/611,272 2 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. Appeal 2020-004299 Application 15/611,272 3 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 Appeal 2020-004299 Application 15/611,272 4 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 Appeal 2020-004299 Application 15/611,272 5 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 Appeal 2020-004299 Application 15/611,272 6 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 Copy with citationCopy as parenthetical citation