Ex Parte Medler et al

Patent Trial and Appeal Board

Jul 16, 2014

11544524 (P.T.A.B. Jul. 16, 2014)

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
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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
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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.
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Application 11/544,524
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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
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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.
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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
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(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).
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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

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