AUDI AG

Patent Trials and Appeals Board

Aug 14, 2020

15128363 - (D) (P.T.A.B. Aug. 14, 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.
15/128,363 09/22/2016 Thomas KNITTL 2319.1218 6608
21171 7590 08/14/2020
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
PATEL, SANJIV D
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
08/14/2020 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS KNITTL and JACQUES HÉLOT
Appeal 2019-006570
Application 15/128,363
Technology Center 2600
Before ALLEN R. MACDONALD, BRADLEY W. BAUMEISTER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 11–16, 18–28, and 30. Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments on August 6,
2020. A transcript of the hearing will be added to the record in due course.
We AFFIRM.

1 We refer to the Substitute Specification, filed September 22, 2016
(“Spec.”); Final Office Action, mailed November 13, 2018 (“Final Act.”);
Appeal Brief, filed May 22, 2019 (“Appeal Br.”); Examiner’s Answer,
mailed July 1, 2019 (“Ans.”); and the Reply Brief, filed August 30, 2019
(“Reply Br.”).
2 Appellant identifies the real party in interest as Audi AG. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention pertains to a touch-sensitive display for a motor
vehicle enabling a user to locate and operate touch-sensitive inputs
haptically. Spec. ¶ 9. The invention provides tactile features on the surface
of a display having “a shape which can be sensed or felt haptically, wherein
at least one virtual operator control element of a graphical user interface is
displayed in the predefined display area of the display.” Id. at 10. Thus, “a
driver can find the operator control element and activate it without having to
direct his gaze onto the display, for example with his finger.” Id.
Independent claim 11 is reproduced below with claim element labels
added in brackets:
11. A method for operating a display device of a motor vehicle,
comprising:
[(I)] predefining a display area within a display of the
display device, having a touch-sensitive surface and a flexible
support structure;
[(II)] bending the flexible support structure automatically
by an adjustment device, so that the display area is curved;
[(III)] deforming the flexible support structure by the
adjustment device, so that the display area is distorted; and
[(IV)] displaying an operator control element of a
graphical user interface in the display area of the display.
REFERENCES
The Examiner cites the following prior art:
Name Reference Date
Grant US 2009/0128503 A1 May 21, 2009
Chatterjee US 2010/0162109 A1 June 24, 2010
Joo US 2013/0145311 A1 June 06, 2013
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Name Reference Date
Lee US 2013/0265221 A1 Oct. 10, 2013
Jung US 2013/0265262 A1 Oct. 10, 2013
Ko US 2014/0226275 A1 Aug. 14, 2014

REJECTION
Claims 11–16, 18–28, and 30 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ko, Grant, and Jung.3 Final Act. 2–15.

STANDARD OF REVIEW
We review the appealed rejections 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).
CLAIM 11
Determinations and Contentions
Addressing the preamble of claim 11, the “Examiner takes . . . official
notice that display devices in motor vehicles [are] well-known in the art, and
hence, obvious to a person of ordinary skill to provide for the well-known
purpose of displaying information to a user.” Final Act. 3 (citing to Lee “for
its affirmative teaching of ‘a display device of a motor vehicle’ as
claimed.”). The Examiner finds Ko’s flexible portable terminal teaches
steps (I), (II), and (IV) of claim 11, i.e., predefining a flexibly supported,

3 The Examiner additionally considers (i) Lee, in support of official notice
taken in connection with independent claims 11, 19, and 25, “by its express
disclosure of a display device of a motor vehicle,” (ii) Joo as relevant “to
independent claims 16 and 23 by its disclosure of ‘bending of the display is
performed contemporaneously with said displaying of the operator control
element’” and (iii) Chatterfjee as relevant to claim 18. Final Act. 16–17.
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touch-sensitive display area of a display, bending the support structure so
that the display area is curved, and displaying an operator control element in
the display area, except that Ko does not disclose bending is performed
automatically by an adjustment device.4 Id. at 2–4 (citing Ko Figs. 11A–C).
The Examiner applies the operation of Jung’s actuator 140 for curing
this latter deficiency by disclosing “automatically bend[ing] the flexible
display apparatus 100 to a shape.” Id. at 4 (citing Jung Figs. 26, 51; ¶¶ 211–
13). The Examiner finds Grant’s haptic mechanism 204, configured to alter
the surface texture of touch-sensitive surface 202, teaches the deforming
step, as recited in step (III). Id. at 3–4 (citing Grant ¶ 40).
Appellant contends:
1. The Examiner’s reason for combining the teachings of Ko and Grant
is improper because, according to Appellant “it relies on knowledge
of the invention and the latter is not supported by any rationale in
accordance with MPEP § 2143.02.” Appeal Br. 4.

4 Appellant added the claim requirement that bending be performed
“automatically by an adjustment device” into independent claims 11, 19, and
25 by the Amendment filed June 14, 2018. Appellant refers to Spec. ¶¶ 23–
24 in support of the bending step. Appeal Br. 2. Appellant’s Specification
discloses that adjustment device 16 is “designed to deform the display 14 in
such a way that at least one display area within the display 14 is distorted” in
correspondence with deforming step (III). Spec. ¶ 23. However, the
Specification is silent concerning the automatic bending of step (II). The
Specification only discloses that the display has been bent as depicted in
Fig. 2 of the drawings. Spec. ¶ 24. Accordingly, should prosecution be
continued, the Examiner may consider whether the Specification as filed
provides adequate written description support pursuant to 35 U.S.C. § 112(a)
for the requirement that bending of the flexible support structure be
performed automatically by an adjustment device.
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2. The Examiner’s reason for modifying the teachings of Ko and Grant
to include automated display-bending according to Jung is also
insufficient, as obviousness determinations require more than a
finding that the combination would have yielded nothing more than
predictable results and because automating a manual process is not per
se obvious. Id. at 4–6.
3. Jung’s actuator for deforming a flexible display apparatus is not
suitable for, and does not teach, automatically bending a display
device in a motor vehicle. Id. at 6.
Addressing Appellant’s first contention, the Examiner finds Grant’s
disclosure of problems posed by typical touch-sensitive panels (i.e., panels
as taught by Ko), including that a “user can not feel the edge(s) of a button”
provides the requisite motivation for incorporating Grant’s answer to the
problem (i.e., by providing a touch-sensitive surface capable of changing its
surface texture to emulate button edges) into Ko’s device. Ans. 6–7 (citing
Grant ¶¶ 4–6, 40). The Examiner concludes, “Grant provides an eminently
proper basis to combine its teachings with Ko.” Id. at 7.
In connection with Appellant’s second contention, the Examiner
reasserts that “MPEP 2144.04(III) establishes that automating a manual
activity is obvious.” Ans. 4. The Examiner further finds Jung’s description
of bending a display into a particular shape using automatic actuator 140
further provides a reason to automate the bending taught by the combination
of Ko and Grant. Id. at 5. According to the Examiner, “[t]he motivation to
modify or add to the combination of Ko and Grant the teachings of Jung
would be to automatically bend the display apparatus or maintain a shape of
the display.” Id. at 10.
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In response to Appellant’s third contention, the Examiner asserts the
argued requirement of automatically bending a display device in a motor
vehicle is improperly based on the recitation of a motor vehicle environment
that only appears in the preamble of the claim and is not entitled to
patentable weight. Id. Furthermore, in addition to official notice taken in
the Final Action (Final Act. 3), the Examiner finds Grant’s disclosure of an
automotive data input system also teaches or suggests a motor vehicle type
of display device. Id. (citing Grant ¶ 27).
Analysis
Appellant’s contentions are unpersuasive of reversible Examiner error
in connection with the rejection of independent claim 11. In connection with
Appellant’s first two contentions of error, the Examiner has articulated
reasoning with rational underpinnings sufficient to justify the legal
conclusion of obviousness. Final Act. 3–4, Ans. 7–8. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must
[include] . . . some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”), cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, we agree
with the Examiner that Grant’s teaching of the advantages of providing
tactile relief features on a touch panel so that a user can feel the edges of a
virtual button (Grant ¶ 4) provides sufficient reasoning to modify the
flexible portable terminal of Ko to deform a flexible support structure so that
a display area is distorted as taught by Grant. See Ans. 6–7.
We further agree with the Examiner that it would have been obvious
to automate Ko’s manual bending of a display by adopting Jung’s teaching
of automatically bending a flexible display into a curved shape. Ans. 9–10.
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In particular, we are not persuaded by Appellant’s argument that the
Examiner’s reasoning is deficient because, according to Appellant:
Nothing in the Examiner’s Answer, and certainly not in any of
the Office Actions or the Advisory Action, contains even an
allegation that the folding of the portable terminal taught by Ko
et al. “accomplished the same result” as “bending the flexible
support structure . . . so that the display area is curved . . . and
displaying an operator control element of a graphical user
interface in the display area of the display” as recited in claim 11.
Reply Br. 4.
In the absence of persuasive evidence that automation of display
bending provides a different result than Ko’s manual bending (e.g., so as to
provide tactile location of a control element), we agree it would have been
obvious to modify the teachings of Ko to incorporate the automatic bending
of Jung. See In re Venner, 262 F.2d 91, 95, (CCPA 1958) (holding
providing an automatic or mechanical means to replace a manual activity
which accomplished the same result is not sufficient to distinguish over the
prior art).
Appellant’s argument that the combination is improper because Jung
fails to describe “any benefit that is provided by a curved display” (Appeal
Br. 5, Reply Br. 6) is unpersuasive because the Examiner relies on Ko, not
Jung, for teaching a curved display, Jung being applied only for teaching
automating Ko’s manual bending to arrive at Ko’s curved display area. That
is, the rejection is not based on modifying Jung to incorporate Ko’s curved
display. Only if such a modification had been asserted would there have
been a need to articulate some reason why one would incorporate Ko’s
curved display into Jung’s device. The Examiner has provided sufficient
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reasoning for modifying Ko’s curved display by incorporating Jung’s
automated bending the reasons discussed above.
Appellant’s third contention of error is unpersuasive for the reasons
given by the Examiner (Ans. 10) including because Grant’s disclosure of an
interface device used as an automotive data input system at least suggests a
display device of a motor vehicle. Grant ¶ 27. To the extent Appellant’s
contention that “[t]he applications of the flexible display described in Jung et
al. are greater than those, in Ko et al.” is interpreted as an argument that
Jung’s actuator for deforming a flexible display apparatus is not suitable for
use in Ko’s flexible portable terminal, Appellant provides insufficient
evidence to support such a conclusion. In so finding, we remind Appellant
that mere attorney argument and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Attorney argument is not evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument take
the place of evidence lacking in the record.
We are also not persuaded by Appellant’s argument belatedly
presented for the first time in the Reply Brief,
The Examiner’s Answer failed to “correctly interpret each claim
limitation in light of the specification” in accordance with MPEP
§ 2103, because there was no disclosure in Ko et al. and Grant et
al. of manually bending a display device to create a curve in a
display area where an operator control element, such as “a virtual
sliding ruler” (Substitute Specification, paragraph [0011], last
sentence) is displayed.
Reply Br. 4.
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We note “it is inappropriate for appellants to discuss in their reply
brief matters not raised in . . . the principal brief[ ]. Reply briefs are to be
used to reply to matter[s] raised in the brief of the appellee.” Kaufman Co.,
Inc. v. Lantech, Inc., 807 F.2d 970, 973 (Fed. Cir. 1986). “Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered.” McBride v. Merrell Dow and Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted).
There are cogent reasons for not permitting an appellant to raise
issues or arguments in a reply brief. Among them are the
unfairness to the appellee who does not have an opportunity to
respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief “would be unfair
to the court itself, which without the benefit of a response from
appellee to an appellant's late-blooming argument, would run the
risk ‘of an improvident or ill-advised opinion, given [the court’s]
dependence . . . on the adversarial process for sharpening the
issues for decision.’” Headrick [v. Rockwell Int’l Corp.], 24 F.3d
[1272,] 1278 [(10th Cir. 1994)], (quoting Herbert v. Nat’l
Academy of Sciences, 974 F.2d 192, 196 (D.C. Cir. 1992)).
Carbino v. West, 168 F.3d 32, 34–35 (Fed. Cir. 1999).
Appellant’s argument that the combination of Ko, Grant, and Jung
fails to teach or suggest “bending a display device to create a curve in a
display area where an operator control element . . . is displayed” is
presented for the first time in the Reply Brief. Reply Br. 4. Appellant does
not argue in its Appeal Brief that the Examiner erred in finding that the
combination of Ko, Grant, and Jung teaches this feature, i.e., displaying an
operator control element in the curved display area. See generally Appeal
Br. Accordingly, Appellant’s belatedly presented argument is waived.
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Furthermore, even if timely presented, Appellant’s argument would
not have been persuasive because claim 11 does not require the operator
control be displayed in a curved portion of the display area or while the
display area is curved (e.g, after bending). During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Construing claims broadly during prosecution
is not unfair to the applicant, because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage. Acad. of Sci. Tech
Ctr., 367 F.3d at 1364; see also In re Skvorecz, 580 F.3d 1262, 1267–68 (Fed.
Cir. 2009) (“Applicant always has the opportunity to amend the claims
during prosecution, and broad interpretation by the examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified.” (quoting Manual of Patent Examining Procedure § 2111)).
Claim 11 recites (I) predefining a display area within a display of the
display device, having a touch-sensitive surface and a flexible support
structure. Bending step (II) results in a curved display area. Step (IV)
requires displaying an operator control element of a graphical user interface
in the display area of the display. Appellant’s Specification describes the
display area as being formed “with a bending edge . . . between the [upper
and lower] parts 20, 24 of the display 14” so that upper part 20 is bent
upward. Spec. ¶ 24. The Specification further describes, “[a]n operator
control element 34, which is embodied as a type of virtual sliding regulator,
is displayed within the display region 26 which is embodied in the form of a
bending edge.” Spec. ¶ 25.
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Appellant’s Specification does not otherwise provide details about the
amount or extent of curvature resulting from bending step (II). For example,
referring to Figure 2 of Appellant’s drawings, it is not clear if display
area 26 is curved over the full extent of the predefined area of the display or
if the display area includes substantially planar portions adjacent to a bent
edge (i.e., “display area 26 with a bending edge,” as disclosed at paragraph
24 of the Specification). Thus, under a broad but reasonable interpretation,
we construe the display area of the display as including, but not limited to, a
curved area within the display.
Accordingly, the step of displaying an operator control element in the
display area of the display does not require the operator control element be
located in a curved portion of the display. As such, Appellant’s argument
that the prior art fails to teach “bending a display device to create a curve in
a display area where an operator control element is displayed” (Reply Br. 4)
is not commensurate in scope of the broadest reasonable interpretation of
claim 11 and, therefore, is unpersuasive of reversible Examiner error.
Furthermore, there is no requirement the recited bending step occur
prior to the displaying step or that any resultant curvature of the display area
be maintained during a period in which the operator control element is
displayed. This is because, inter alia, “[u]nless the steps of a method
[claim] actually recite an order, the steps are not ordinarily construed to
require one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d
1323, 1342 (Fed. Cir. 2001); see also Altiris, Inc. v. Symantec Corp., 318
F.3d 1363, 1369–70 (Fed. Cir. 2003) (finding reversible error to interpret
method claims as requiring a specific order even though the patent's
specification disclosed only a single embodiment).
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Here, claim 11 requires neither (i) an ordering of steps such that the
display area be curved prior display of the operator control element, nor
(ii) maintaining a curved shape during display of the operator control
element. Accordingly, for this additional reason, Appellant’s belated
argument that the prior art fails to teach a curve in a display area where an
operator control element is displayed is not commensurate in scope with
claim 11 and, therefore, unpersuasive of reversible Examiner error.
Likewise, Appellant’s belatedly asserted contention of error appearing at
page 8 of the Reply Brief5 is also unpersuasive because it also is improperly
based on a specific order of steps not required by the claim.
For the reasons discussed above, Appellant’s contentions are
unpersuasive of reversible error in connection with the rejection of claim 11.
Accordingly, we sustain the rejection of independent claim 11 and, for the
same reasons, the rejection of independent claims 19 and 25 under 35 U.S.C.
§ 103 over Ko, Grant, and Jung together with the rejection of dependent
claims 12–15, 20–22, and 26–28, which are not argued separately with
particularity.

5 Appellant argues:
While Ko et al. and Jung et al. disclose bending a display, neither
taken alone, or both combined with Grant et al., teach or suggest
“displaying an operator control element of a graphical user
interface in the display area of the display” after “bending the
flexible support structure automatically by an adjustment device,
so that the display area is curved”.
Reply Br. 8 (emphasis added).
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CLAIMS 16 AND 23
Claim 16 recites,
16. A method according to claim 11, wherein said bending of
the display is performed contemporaneously with said displaying
of the operator control element.
Claim 23, dependent from claim 19, recites similar subject matter.
The Examiner finds Ko’s Figures 11B and 11C, depicting portable
terminal 100 having an upwardly bent upper portion, “contemplates
displaying the operator control element contemporaneously with bending of
the display.” Final Act. 6–7.
Appellant argues “Figs. 11 B–11 C in Ko et al. merely show that
information is output on the screen when the display is bent. No description
of the order in which the displaying and bending occur has been cited or
found.” Appeal Br. 7.
The Examiner responds, “[i]t cannot be said that the subject matter of
claim 16 transcends the bounds of obviousness to a person of skill based on
the disclosure in Figs. 11 B–C [of] Ko.” Ans. 11. In support of the
assertion, the Examiner directs attention to Figure 5 of Joo, depicting a
person holding a bent, flexible touch screen while the output of a program is
displayed on an edge portion the screen.
Appellant responds, arguing, although cited by the Examiner, “the
rejection of claim 16 was not changed to include Joo.” Reply Br. 12.
Appellant further argues
[Appellant’s] comments . . . regarding Figs. 11 B–11 C of Ko et
al. apply to Fig. 5 of Joo as well. The only difference is that
Fig. 5 of Joo includes a double-headed arrow that emphasizes a
change from a flat, blank display to a bent display with what
appear to be icons on the short side of the display separated from
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the rest of the display by the portion of the display device that is
bent. It is possible that the timing of the display of the icons is
described in Joo, but the November 13, 2018 Office Action only
cited Fig. 5, not any text in Joo.
Id.
Appellant’s contention is unpersuasive of reversible Examiner error.
In the absence of evidence to the contrary, one skilled in the art would have
known to display the operator control element in response to a triggering
event that also would have initiated bending of the display whereby the two
steps would be performed simultaneously. In particular, there are four
orderings of the disputed bending and displaying steps that would result in
displaying an item on a curved display: initiating display of the control
element (i) prior to bending, (ii) contemporaneously with the start of
bending, (iii) during bending, or (iv) after completion of bending of the
display. Under a broad but reasonable interpretation, the displaying step
includes any period during which the operator control element is displayed.
That is, the duration of the displaying step is not limited to initiation of a
display action and/or an initial display of the operator control element.6
Therefore, in addition to order (ii), at least step orders (i) and (iii) would also
result in the display of control element contemporaneously with (i.e., while)
bending.

6 We do not decide whether the step of bending is likewise interpreted, i.e.,
whether the bending step includes only such initial time periods during
which the shape of the flexible support structure is changing and is in the
process of transitioning from one shape to another or includes any
subsequent period during which the display area is maintained in a curved
shape. If the latter, then order (iv) would also satisfy the disputed claim
limitation.
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Notably, it has been held that a specific order of steps may be prima
facie obvious when “[t]here is nothing in the instant record [that] indicates
that the particular order of steps produces results differing in any way from
those which would be brought about if another order of steps were
followed.” In re Hampel, 162 F.2d 483, 485 (CCPA 1947); see also, In re
Burhans, 154 F.2d 690, 692 (CCPA 1946) (selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results); In re Gibson, 39 F.2d 975, 976 (CCPA 1930) (selection
of any order of mixing ingredients is prima facie obvious.); Ex parte Rubin,
128 USPQ 440, 441 (Bd. Pat. App. & Int. 1959) (prior-art reference
disclosing a process of making a laminated sheet wherein a base sheet is first
coated with a metallic film and thereafter impregnated with a thermosetting
material was held to render prima facie obvious claims directed to a process
of making a laminated sheet by reversing the order of the prior art process
steps.). Appellant has not directed us to any evidence or persuasive
technical reasoning showing that the implied order of steps produces results
differing in any way from those which would be brought about if another
order of steps were followed.
Furthermore, the Federal Circuit has held “that while an analysis of
obviousness always depends on evidence that supports the required Graham
factual findings, it also may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion.” Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
The Court further instructs,
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
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solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Accordingly, we sustain the rejection of claim 16 and, for the same
reasons, the rejection of claim 23 under 35 U.S.C. § 103 over Ko, Grant, and
Jung.
CLAIMS 18, 23 AND 30
Claim 18 recites
18. A method according to claim 11,
wherein the display includes a plurality of additional
display areas, predefined and distorted, and
wherein said predefining includes a number, respective
positions and a shape of respective distortions of the additional
display areas, as a function of the graphical user interface
displayed on the display, from among a plurality of possible
graphical user interfaces.
The Examiner finds paragraph 27 of Grant discloses a range of
buttons and sliders provided in various predefined display areas when an
interface device is activated. Final Act. 7 (additionally citing Grant, Figs. 1–
2). The Examiner further contends changes in shape and configuration are
obvious. Id. citing MPEP 2144.04(IV).7

7 B. Changes in Shape
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The
court held that the configuration of the claimed disposable plastic
nursing container was a matter of choice which a person of
ordinary skill in the art would have found obvious absent
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Rather than distinguishing claim 18 based on specific shapes or
configurations that the Examiner asserts are obvious,
Appellant submits that the cited prior art does not disclose that
“said predefining includes a number, respective positions and a
shape of respective distortions of the additional display areas, as
a function of the graphical user interface displayed on the
display, from among a plurality of possible graphical user
interfaces” (claim 18, last 3 lines, emphasis added). The issue is
not whether there is a change in shape compared to the prior art,
but rather making changes in the surface when the graphical user
interface underneath the surface of the display changes in
accordance with “predefining [of] a display area within a display
of the display device” (claim 11, line 2).
Appeal Br. 7–8.
The Examiner responds, finding the disputed functionality is taught by
Grant’s disclosure of activating buttons independently. Ans. 11–12.
According to the Examiner,
[P]aragraph [0032] of Grant discloses “Each region can be
independently programmed or controlled to provide relief
information. Diagram 132 is a cross-section view of interface
device 116, which illustrates a pattern of locating features that
can be programmed. For example, Regions 134-136 are
activated while region 138 is deactivated. Since each region can
be selectively activated, interface device 116 is capable of
changing its surface configurations for different applications.
For example, interface device 116 may activate certain regions
to configure the touch-sensitive surface as a key pad for a
telephone. Alternatively, the touch surface may be configured as
a key pad for a PDA.” Moreover, in the FOA, Examiner also
pointed to the Ko reference for disclosing the claimed aspect of

persuasive evidence that the particular configuration of the
claimed container was significant.).
MPEP 2144.04(IV)(B).
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“from among a plurality of possible graphical user interfaces (Ko
at Fig. 11 B, 11 C)” (FOA at p. 7).
Ans. 12.
Appellant replies, noting that although cited in a prior office action,
“there was no indication in the November 13, 2018 [Final] Office Action
that [the cited] sentence in paragraph [0032] of Grant et al. was being relied
upon.” Reply Br. 13. Appellant further argues,
nothing was cited in Grant et al. to suggest that how “its surface
configurations [are changed] for different applications” is by
“predefin[ing] a number, respective positions and a shape of
respective distortions of the additional display areas, as a
function of the graphical user interface displayed on the display,
from among a plurality of possible graphical user interfaces.”
Thus, there is more detail recited in claims 18, 24 and 30 than
described in paragraph [0032] of Grant et al. The addition of “Ko
at Fig. 11 B, 11 C” (Examiner’s Answer, page 12, line 15) which
merely show the display of different text and graphics, does not
suggest modification of what is described in paragraph [0032] of
Grant et al. to include all of the details recited in claims 18, 24
and 30.
Id.
Appellant’s contentions are unpersuasive of reversible Examiner
error. As an initial matter, even if paragraph 32 of Grant had been relied
upon for the first time in the Examiner’s Answer, Appellant’s remedy was
by way of petition under 37 C.F.R. § 1.181(a). In particular, allegations that
an Examiner’s answer contains undesignated new grounds of rejection must
be resolved by filing a petition to reopen prosecution under 37 C.F.R.
§ 1.181, the absence of which constitutes waiver of such arguments.
37 C.F.R. §41.40(a) (“Failure of appellant to timely file such a petition will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection.”); accord MPEP § 1207.03. Appellant did not file
Appeal 2019-006570
Application 15/128,363
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a petition and, therefore, waived any argument that the Examiner’s Answer
includes new grounds of rejection.
We are also unpersuaded Grant’s disclosure of changing surface
configurations for different applications fails to teach or suggest the disputed
limitations of claim 18. One skilled in the art would have understood
Grant’s different applications [plural] would include or invoke respective
graphical user interfaces. Because Grant discloses the applications as being
different, one skilled in the art would have understood the positions and
shapes of the distortions would be predefined by the respective application’s
graphical user interface. i.e., be a function of a respective one of the
graphical interfaces.
Rather than explain what elements of claim 18 are absent from Grant,
Appellant merely recites the claim language and alleges, “there is more
detail recited in claims 18, 24 and 30 than described in paragraph [0032] of
Grant et al.” Such argument constitutes little more than a general denial that
fails to address the Examiner’s findings and is, therefore, insufficient. See
37 C.F.R. § 41.37(c)(1)(iv) (“A statement [that] merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
For the reasons discussed above, Appellant’s contentions are
unpersuasive of Examiner error in the rejection of claim 18. Appellant
argues claims 24 and 30 on the basis of claims 16 and 18 (Appeal Br. 8),
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Application 15/128,363
20
which arguments are unpersuasive for the reasons discussed above.
Accordingly, we sustain the rejection of claims 18, 24, and 30 under 35
U.S.C. § 103 over Ko, Grant, and Jung.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–16, 18–
28, 30
103 Ko, Grant, Jung 11–16, 18–
28, 30

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