Ex Parte BUCKENMAIER et al

Patent Trial and Appeal Board

Jul 5, 2018

13295263 (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/295,263 11/14/2011
24131 7590 07/09/2018
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
MATTHIAS BUCKENMAIER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A-4982 1854
EXAMINER
BARNES-BULLOCK, CRYSTAL JOY
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
07 /09/2018 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS BUCKENMAIER, WERNER HAMMANN, and
ACHIM SCHEURER
Appeal2017-011847 1
Application 13/295,263
Technology Center 2100
Before JEAN R. HOMERE, JON M. JURGOV AN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5, and 9-14. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 Appellants identify the real party in interest as Heidelberger
Druckmaschinen AG of Heidelberg, Germany. App. Br. 1.
Appeal 2017-011847
Application 13/295,263
Introduction
According to Appellants, the claimed subject matter is directed to a
common display window on a user display device (23) for operating a
printing press including printing units ( 6) and transport cylinders (9) for
transporting sheets to peripheral devices including a compressed air supply.
Spec. i-f 21, Fig. 1. In particular, the common display window (23) integrates
a first user interface (18) of a first application program and a second user
interface (19) of a second application program such that two interfaces
operate seamlessly without any visible change on the user display device so
as to appear as a single interface to the user. Id. i-fi-121-23.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method for operating machinery, the method
comprising the following steps:
providing a control unit;
providing a display device connected to the control unit;
displaying a first user interface of a first application
program, wherein the first user interface is a user interface
configured for operating a printing machine, and at least one
second user interface of a second application program, wherein
the at least one second user interface is configured for operating
peripheral devices of the printing machine, on the display
device; and
displaying, on the display device, a first user interface of
a first application program and at least one second user
interface of a second application program, wherein the first user
interface is a user interface configured for operating a printing
machine that includes printing units having sheets transported
between and through the printing units by transport cylinders,
and the at least one second user interface is configured for
operating peripheral devices of the printing machine, the
peripheral devices including a compressed air supply;
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Application 13/295,263
forming a common display window on the display device
with the first user interface and the at least one second user
interface, the first user interface running in the background and
the at least one second user interface running in the foreground
on the display device while the first user interface and the at
least one second user interface are operating without any visible
change on the display device.
Konig
Kawano
Prior Art Relied upon
US 2008/0152411 Al
US 8,514,450 B2
Rejection on Appeal
June 26, 2008
August 20, 2013
Claims 1-3, 5, and 9-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination Kawano and Konig. Final Act. 3-
7.
ANALYSIS
We consider Appellants' arguments as they are presented in the
Appeal Brief, pages 3-12, and the Reply Brief, pages 2-9. 2
Appellants argue that the combination of Kawano and Konig does not
teach or suggest the following claim limitation:
[F]orming a common display window on the display device
with the first user interface and the at least one second user
interface, the
2 Rather than reiterate all the arguments of Appellants and all the Examiner's
findings/ conclusions, we refer to the Appeal Brief (filed March 19, 201 7)
("App. Br."), the Reply Brief (filed September 26, 2017) ("Reply Br."), the
Final Action from which the appeal is taken (mailed September 29, 2016)
("Final Act."), and the Answer (mailed July 26, 2017) ("Ans.") for the
respective details.
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Application 13/295,263
first user interface running in the background and the at least
one second user interface running in the foreground on the
display device while the first user interface and the at least one
second user interface are operating without any visible change
on the display device.
App. Br. 4.
In particular, Appellants argue that Kawano's disclosure of a first and
second interfaces ( 41, 42) related to a first and second application programs
operate as two individually selectable and separately perceived application
programs, respectively, but do not form the common display window
wherein the interfaces appear as one to the user, as required by the claim and
as defined in the Specification. Id. at 4--8 (citing Spec. i-fi-f 10, 11, 23,
Kawano, Fig. 4, col. 4:63-67), Reply Br. 3. According to Appellants, the
windows disclosed in Kawano only have a partial overlap, and are
discemable by the user, whereas the claimed interfaces are not. Id. at 8.
Likewise, Appellants argue that because the two gadgets (calendar 43, print
setting 44) disclosed in Kawano are not related to application programs, and
only cover a small portion of the desktop, they do not teach the applications
forming the common display window, as required by the claim. App. Br. 8,
9. Further, Appellants argue that because Kawano' s desktop only serves as
a backdrop for the windows and gadgets, as opposed to an interface portion
with which a user can interact, it is not a user interface. Id. at 9.
In response, the Examiner concludes that the phrase "forming a
common display window" is broad, and thereby construes the cited phrase as
"a small window overlapping a large window by placing the small window
in front of the large window." Ans. 9. Therefore, the Examiner finds that
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Application 13/295,263
Kawano's disclosure of desktop screen (40) with an overlapping gadget (44)
teaches the common display window. Id.
We begin our analysis by giving the phrase "forming a common
display window" its broadest reasonable interpretation consistent with
Appellants' disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zietz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that "claims must be interpreted
as broadly as their terms reasonably allow."). Our reviewing court further
states, "the 'ordinary meaning' of a claim term is its meaning to the ordinary
artisan after reading the entire patent." Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en bane). Appellants' Specification states in
relevant part:
[T]he technology behind the second user interface is of no
importance to the user because the second user interface is
integrated into the common display window with the first user
interface so that the user cannot realize that he or she is
actually confronted with two user interfaces. Thus, the
operation of the printing press using a first user interface in
parallel with a browser user inteiface as a second user
interface for operating peripheral devices can be implemented
as a common display window, thus giving the user the
impression that what he or she sees is a common user interface
for the printing press and for the peripheral devices.
Spec. i-f 10 (emphasis added).
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The user does not have to take care of the opening or closing of the
user interfaces because he or she only sees a single common display
window and does not realize that the user interfaces are individual
applications.
Id. if 11.
We agree with Appellants that, consistent with the Specification of the
instant application, the phrase "forming a common display window" can be
broadly but reasonably construed as a single display window that integrates
two user interfaces of two different application programs (e.g., a user
interface integrated in a browser for parallel operation) such that the user
does not realize that there are two different user interfaces and only
perceives a single interface window. App. Br. 6. Consequently, we decline
to adopt the Examiner's broad claim and unreasonable interpretation as it
fails to consider any portion of the Specification to arrive at the Examiner's
proposed claim construction. Accordingly, the Examiner's application of
the Kawano' s teaching to the disputed claim limitations based upon the
Examiner's erroneous claim interpretation is also tainted. In particular, we
agree with Appellants that although Kawano' s user interfaces are associated
with respective applications, they are not integrated so as to preclude the
user from perceiving two separate windows and applications. Likewise, we
agree with Appellants that Kawano' s desktop in conjunction with the print
setting gadget do not form a common display window set forth in
Appellants' reasons discussed above.
Because Appellants have shown at least one reversible error in the
Examiner's obviousness rejection, we need not reach Appellants' remaining
arguments.
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Application 13/295,263
Accordingly, we are persuaded of error in the Examiner's rejection of
claim 1, as well as of claims 2, 3, 5, and 9--14, which recite commensurate
limitations.
DECISION3
For the above reasons, we reverse the Examiner's rejection of claims
1-3, 5, and 9--14 as set forth above.
REVERSED
3 In the event of further prosecution, the Examiner should consider rejecting
the claims on appeal as failing to comply with the enablement requirement
under§ 112, first paragraph. In particular, while the claim boasts forming a
"common display window" integrating two different interfaces without any
visible change on the display device, Appellants' Specification does not
detail how such integration takes place. Therefore, one of ordinary skill in
the art would not be able to make or use the claimed invention without
undue experimentation.
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