Ex Parte Medler et alDownload PDFPatent Trial and Appeal BoardJul 16, 201411544524 (P.T.A.B. Jul. 16, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREAS MEDLER, ULRIKE WEHLING, ALF POLLEX, DINO GOHLER, JAN MICHAELIS, RAINER DEHMANN, and KYOUNG SUN HAN ____________ Appeal 2012-003741 Application 11/544,524 Technology Center 2600 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003741 Application 11/544,524 2 STATEMENT OF THE CASE The Examiner finally rejected claims 1-9. Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to an “input device for a motor vehicle.” (Title). Claim 1, reproduced below, is representative of the claimed subject matter: 1. An input device, comprising: [A] a display adapted to display variable information; [B] a touch screen arranged above the display and adapted to input instructions by touch of the touch screen; and [C] a control system adapted: (a) to generate an operating element and display the operating element on the display; (b) in response to an action comprising a touch on the touch screen in a region of the operating element displayed on the display, [(b1)] to generate a selection marking and [(b2)] display the selection marking on the display in a region of the display (i) remote from the region of the operating element and (ii) remote from the touch on the touch screen; and (c) to move the selection marking displayed by the display in accordance with a touch motion across the touch screen. (Disputed limitations emphasized, elements lettered). Appeal 2012-003741 Application 11/544,524 3 REJECTION Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of U.S. Patent No. 6,687,614 B2 (Feb. 3, 2004) (“Ihara”) and U.S. Patent No. 6,278,443 B1 (Aug. 21, 2001) (“Amro”). (Ans. 6). GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal of the § 103 rejection of claims 1-9 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 ANALYSIS We disagree with Appellants’ contentions regarding the Examiner’s § 103 rejection of claims 1-9. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants’ Appeal Brief. (Ans. 9-14). We highlight and address specific findings and arguments below: 1 Appellants filed a Notice of Appeal on July 5, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-003741 Application 11/544,524 4 CLAIM 1 A. Regarding the claim 1 limitations of: (b) in response to an action comprising a touch on the touch screen in a region of the operating element . . . , [(b1)] to generate a selection marking and [(b2)] display the selection marking . . . (i) remote from the region of the operating element and (ii) remote from the touch on the touch screen; Appellants contend Ihara and Amro individually do not teach or suggest all features of claim 1. (Reply Br. 2-3). Appellants also contend: Nowhere does Amro et al. disclose the generation and display of a selection marking in a region remote from both the operating element and the touch location. . . . Thus, the cursor 50 of Amro et al. is already present on the initial display screen. (Reply Br. 3-4). Appellants’ contentions are unpersuasive because Appellants do not address and rebut the Examiner’s specific findings regarding the combined teachings and suggestions of the references. The Examiner relies upon Ihara’s touch on button B1(B), and dragging (Fig. 3A; col. 7, ll. 4-13), that generates and displays “mark object Om” in the display remote from B1(B), as teaching or suggesting the contested limitations of: (b) in response to an action comprising a touch on the touch screen in a region of the operating element . . . , [b1] to generate a selection marking and [b2] display the selection marking . . . (i) remote from the region of the operating element, but not for limitation “(ii) remote from the touch on the touch screen.” (Ans. 6-7, 13). Regarding limitation (ii), the Examiner relies upon Amro’s description of displaying a cursor 50 remote from the touch, on the touch Appeal 2012-003741 Application 11/544,524 5 screen 55 (in response to the action of touching and dragging on the screen), as teaching or suggesting contested limitations “(b) in response to an action . . . , [and (b2)] display the selection marking . . . (ii) remote from the touch on the touch screen.” (Ans. 6-7, 13; Amro Figs. 3-4, col. 4, ll. 36-51; col. 4, l. 63–col. 5, l. 16). We note that, in response to the action (touch and drag), Amro does not display the cursor at the point of touch, but displays the cursor “(ii) remote from the touch on the touch screen.” (Amro Figs. 3-4). Thus, we find the combination of Ihara and Amro would have taught or suggested contested limitation (b). We also find Appellants’ contention unpersuasive that Amro does not teach or suggest limitations: [(b1)], generate a selection marking and [(b2)] display the selection marking . . . (ii) remote from the touch on the touch screen, because Amro’s cursor is on the screen before the user’s touch. (Reply Br. 3-4). Appellants’ contention is not commensurate with the scope of claim 1. (Id.) We conclude claim 1 does not preclude displaying a cursor (“selection marking”) before the “action” in limitation (b) under a broad but reasonable interpretation. Moreover, Amro, in response to the action comprising the touch and drag, does generate and display the cursor remote from the touch, thus teaching or suggesting at least limitations: “(b) in response to an action . . . [b2] display the selection marking . . . [and] (ii) remote from the touch on the touch screen.” (Amro Figs. 3-4). For these reasons, on this record, we are not persuaded the Examiner erred. Appeal 2012-003741 Application 11/544,524 6 B. Regarding the combination of references relied on by the Examiner in the rejection of claim 1, Appellants contend: It is entirely unclear how one of ordinary skill in the art would modify Ihara et al. to determine which of the plurality of buttons B1 to B3 and points on a map M that the user is attempting to select, if a selection marking is to be generated remote from the touched location, as suggested by the Examiner. Thus, Ihara et al. requires that its selection markings are generated at the touched location for proper function of its system. As a result, it is respectfully submitted that there is absolutely no motivation or other tenable rationale to combine the disclosures of Ihara et al. and Amro et al. in the manner suggested by the Examiner. (Reply Br. 5). Appellants’ contentions are unpersuasive because Appellants do not address and rebut the Examiner’s proffered motivation to combine the references. Specifically, the Examiner applies Amro’s teachings to Ihara’s system because the combined system would “maintain functionality while allowing the user to better visually see the controls being performed since their finger and hand do not impair their vision of the controls taking place.” (Ans. 12; see also Ans. 6). We also find unpersuasive Appellants’ contention that one skilled in the art could not have combined Amro’s touch and drag remote cursor with Ihara’s touch and drag process. (Reply Br. 5). For example, we find, in the combined system, one skilled in the art would have had the common sense to, upon the initial touch and start of the drag (Ihara Fig. 3A; B1(B), line segment), display the mark (Om) remote from the touch as taught by Amro (Amro Fig. 3), and move the mark parallel to the drag as taught by Amro Appeal 2012-003741 Application 11/544,524 7 (Fig. 4).2 Thus, we find the Examiner’s articulated rationale has sufficient rational underpinning to support the legal conclusion of obviousness. (Ans. 12; see also Ans. 6). 3 Moreover, on this record, we are not persuaded the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). C. Additionally regarding the rejection of claim 1, we find Ihara is cumulative to Amro. Although not before us on Appeal, nor dispositive to our ultimate decision, if the Examiner’s mapping for the “action” of limitation (b) is changed slightly, we find Ihara discloses all contested limitations in claim 1, such that Ihara anticipates claim 1.4 Specifically, Ihara discloses generating and displaying mark “Om” (“selection marking”) 2 We note that the test of non-obviousness is not whether one reference can be bodily inserted into another, but, rather, what the references, when considered together, would suggest to one of ordinary skill in the art, In re Keller, 642 F.2d 413, 425 (CCPA 1981), who is a person of ordinary creativity and not an automaton, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), and whose inferences and creative steps we may consider, id. at 418. 3 The Supreme Court guides: “‘[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”’ KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 4 “[A]nticipation is the epitome of obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). Appeal 2012-003741 Application 11/544,524 8 in response to an action comprised of a touch to button B1(B) ) (“touch”) and a drag, thus disclosing claim 1 limitations (b), [(b1)], and [(b2)]. (Amro Figs. 3-4, col. 4, ll. 36-51; col. 4, l. 63–col. 5, l. 16). Further, Ihara’s mark Om (Fig. 3B) is displayed remote from button (B1(B)) thus teaching claim 1 limitation “(i) remote from the region of the operating element.” Also, Ihara’s mark Om (Fig. 3B) is displayed remote from the touch in region B1(B), thus teaching claim 1 limitation “(ii) remote from the touch on the touch screen.” Thus, we find Ihara alone discloses limitation (b) of claim 1. (Id.). We agree that Ihara teaches or suggests all other claim 1 limitations, as described by the Examiner. (Ans. 6). Therefore, we find Ihara discloses, teaches, or suggests all limitations of claim 1. For these reasons, on this record, we are not persuaded the Examiner erred in reaching the ultimate legal conclusion of obviousness. Accordingly, we sustain the rejection of claim 1, and of claims 2-9 that fall therewith. (See grouping of claims supra.). DECISION We affirm the Examiner’s rejection of claims 1-9 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED msc Copy with citationCopy as parenthetical citation