Ex Parte HAUSCHILD et alDownload PDFPatent Trial and Appeal BoardJul 28, 201613285813 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/285,813 10/31/2011 Frank HAUSCHILD 26646 7590 08/01/2016 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 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. 111501171 6994 EXAMINER ZIMMERMAN, MARK K ART UNIT PAPER NUMBER 2619 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): uspto@kenyon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK HAUSCHILD, MATHIAS KUHN, and RAINER DEHMANN Appeal2014-009967 Application 13/285,813 Technology Center 2600 Before JOSEPH P. LENTIVECH, KARA L. SZPONDOWSKI, and SHARON PENICK, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-7, 9, and 11. Claims 8, 10, and 12 have been canceled. See App. Br., Claims App'x. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We reverse. 1 According to Appellants, the real party in interest is Volkswagen AG. App. Br. 1. Appeal2014-009967 Application 13/285,813 STATEMENT OF THE CASE Appellants' Invention Appellants' invention generally relates to controlling the display of information on a display area. Spec. 1: 10-11. Claim 1, which is illustrative, reads as follows: 1. A method for controlling display of information on a display surface, the information being structured hierarchically in objects, comprising: displaying an object and a path that leads to the object in the hierarchical structure; dividing the path into individual path elements, the path elements belonging to different hierarchy levels of the path leading to the object, and the path elements being selectable buttons; and when a path element is selected, changing the information display to the hierarchy level of the selected path element; wherein graphic symbols are respectively displayed in the path elements for visualizing the hierarchy level of the path element. Rejection Claims 1-7, 9, and 11 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Morris (US 2006/0184892 Al; published Aug. 17, 2006). Final Act. 5-9. 2 Appeal2014-009967 Application 13/285,813 ANALYSIS Claim 1 Issue: Did the Examiner err in finding that Morris discloses "wherein graphic symbols are respectively displayed in the path elements for visualizing the hierarchy level of the path element," as recited in claim 1? Regarding the disputed limitation, the Examiner finds: Morris at figure 8 recites the displayed path element 814 as "ts\Menu\lmages\cars\mycar.jpg." In addition, Morris at paragraph [0026] recites "a node included in the displayed path." Moreover, Morris at paragraph [0056] recites a node is "cars", a node is "mycar.jpg." Further, Morris at paragraph [0055] recites "a node is an image," wherein the image is a graphic icon. In other words, an image or a graphic icon is used as a node in the displayed path 814. Accordingly, Morris teaches the limitation of "graphic symbols are respectively displayed in the path elements for visualizing the hierarchy level of the path element." Ans. 2-3. Appellants contend the Examiner erred in rejecting claim 1 because Morris fails to disclose that graphic symbols are respectively displayed in the path elements, as required by claim 1. App. Br. 3--4; Reply Br. 2-3. Appellants contend Morris, instead, discloses "the paths displayed in the location bars 202, 302, 402, 502, 602, 814 in Figures 2 to 6 and 8, respectively, merely include text description in the path." App. Br. 3. Appellants further contend Morris discloses that "the image mycar.jpg and the identifiers for children of the node are merely shown on the content panes 504 and 204, and not shown in the location bar 502 or 202." App. Br. 4. We agree. Morris discloses "the system 800 can be configured to perform a default action based on a type or an identity of the node when the input 3 Appeal2014-009967 Application 13/285,813 subsystem determines that the node is selected using the selection component." Morris i-f 55. Morris further discloses "if the node is an image or video file, such as the image file 'mycar.jpg' shown in FIG. 8, the default action can be displaying the image or video file, or a representation thereof, on the display 804." Id. Figure 8 of Morris depicts the image displayed in a content pane of the display and not in the displayed path, as required by claim 1. We note that in an ex parte appeal, the Board "is basically a board of review-we review ... rejections made by patent examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BP AI 2001 ). "The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s] the [B]oard to examine the application and resolve patentability in the first instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). In this instant case, we have not been presented with a rejection of independent claim 1 as obvious under 35 U.S.C. § 103(a) over the combination of Morris and Lim et al., (US 2006/0265588 Al; published Nov. 23, 2006) (cited by the Examiner as being pertinent to Appellants' disclosure (Final Act. 9) ), which appears to teach or suggest graphic symbols being respectively displayed in the path elements for visualizing the hierarchy level of the path element (see Lim, Fig. 4). We leave further consideration to the Examiner. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Therefore, for the reasons supra, we do not sustain the rejection of 4 Appeal2014-009967 Application 13/285,813 independent claim 1 and, for the same reason, we do not sustain the rejection of dependent claims 2-7, 9, and 11. DECISION We reverse the Examiner's rejection of claims 1-7, 9, and 11. REVERSED 5 Copy with citationCopy as parenthetical citation