Ex Parte Proehl et al

Board of Patent Appeals and Interferences

Jun 25, 2012

10767473 (B.P.A.I. Jun. 25, 2012)

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.
10/767,473 01/29/2004 Andrew M. Proehl 50N3127.01 3618
24337 7590 06/25/2012
MILLER PATENT SERVICES
2500 DOCKERY LANE
RALEIGH, NC 27606
EXAMINER
NGUYEN, LE V
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
06/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDREW M. PROEHL, JAN-CHRISTOPH ZOELS, ANNE
HYAN JIN KIM, and YUTAKA HASEGAWA
__________

Appeal 2010-004300
Application 10/767,473
Technology Center 2100
__________

Before RICHARD TORCZON, HOWARD B. BLANKENSHIP, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claim 104. Claims 1-86 have been cancelled and
claims 87-103 have been withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b).
The disclosed invention relates generally to display of information in
a graphical user interface on an audio/visual system (Spec. 1).
Independent claim 104 reads as follows:
Appeal 2010-004300
Application 10/767,473

2
104. In an audio/visual (AV) system, a method for navigation
of menu options available to a user of the AV system, comprising:
entering a graphical user interface (GUI) in a menu system that
is displayed on a display;
generating a signal for displaying a first navigable list of menu
options on the display, the first navigable list of menu options having
a plurality of fields arranged in a first linear configuration that
overlays AV content currently playing on the display with one of the
menu options shown at a location of the display that is highlighted;
responsive to a navigation command from a remote controller,
moving the first navigable list of menu options of the GUI to cause
another field of the plurality of fields to move to the location that is
highlighted, and thus highlight the another field while continuing to
display the AV content currently playing on the display;
responsive to a navigation command from the remote
controller, generating a signal for displaying a second navigable list of
menu options associated with the highlighted field, the second
navigable list of menu options arranged in a second linearly
configured set of fields which intersect the first linear configuration of
fields of the first navigable list of menu options at the highlighted
location and overlaying the AV content currently playing on the
display;
navigating to a menu option of the second navigable list of
menu options in response to a navigation command;
selecting the menu option of the second navigable list in
response to a selection command from the remote controller, wherein
the AV content currently playing on the display continues to play
unless the menu option selected is a menu option that begins playing a
different selection of AV content;
upon selection of the menu option from the second navigable
list, ceasing the generating of the signals for displaying the first and
second navigable list of menu options so that the first and second
navigable list of menu options disappear from the display and taking
an action associated with the menu selection; and
Appeal 2010-004300
Application 10/767,473

3
wherein the first linear configuration of the first menu is
oriented substantially horizontally, and the second linear configuration
of the second menu is oriented substantially vertically.

The Examiner rejects claim 104 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of the following references:
Wilcox US 6,678,891 B1 Jan. 13, 2004
Gospel US 6,753,928 B1 June 24, 2004
Knowles US 6,505,348 B1 Jan. 7, 2003

ISSUE
Did the Examiner err in rejecting claim 104?

PRINCIPLE OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Claim 104 recites a first list of menu options with one of the menu
options highlighted and a second list of menu options that intersect the first
Appeal 2010-004300
Application 10/767,473

4
list of menu options at the highlighted location. Appellants argue that the
combination of Wilcox, Gospel, and Knowles fails to disclose or suggest a
“‘second navigable list of menu options . . . [that] intersects the first linear
configuration’” and a “‘highlighted location’” (App. Br. 20). We disagree
with Appellants.
As the Examiner indicates, Wilcox discloses a first list of menu
options (e.g., element 112, Fig. 7 or 8) with one of the menu options
highlighted (e.g., element 118 in Fig. 7 or element 120 in Fig. 8) and a
second list of menu options (e.g., element 114, Fig 7 or 8). The Examiner
also points out that Wilcox discloses the intersection of a “menu item node”
(col. 31, l. 24) with a list of menu options, one of the menu options being
highlighted (Fig. 101 or 102) (Ans. 7).
Thus, Wilcox discloses that one of ordinary skill in the art would have
been apprised of the concepts of displaying two lists of menu options (in a
perpendicular orientation and adjacent to each other (Figs 7 or 8)) and the
intersection of any of the menu options with other display elements (e.g.,
Fig. 101 or 102). We agree with the Examiner that it would have been
obvious to one of ordinary skill in the art, given the teachings of the cited
references, to have displayed two lists of menu options containing
highlighted options as disclosed by Wilcox and to have further intersected a
displayed element, such as a menu option, with another displayed element,
such as another menu option that Wilcox also discloses.
Appeal 2010-004300
Application 10/767,473

5
Appellants argue (with respect to, for example, Fig. 7 of Wilcox) that
“the category item 112 and the menu item 114, in fact, do not intersect”
(App. Br. 21). In other words, Appellants imply that the term “intersect”
necessitates actual physical contact and argue that Wilcox does not explicitly
disclose that one list of menu options (e.g., element 114, Fig. 7) “intersects”
(i.e., comes into actual physical contact with) another list of menu options
(e.g., element 112, Fig. 7). However, “[a]s our precedents make clear . . .
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for [the fact finder] can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co., 550 U.S. at 418.
In the present case, even assuming Appellants’ implied definition of
the term “intersect” to be correct, we agree with the Examiner that since one
of ordinary skill in the art is “a person of ordinary creativity, not an
automaton” (KSR Int’l Co., 550 U.S. at 420), it would have been obvious to
such an individual exercising creative steps within the purview of one of
skill in the art to have “intersected” one list of menu options with another list
of menu options given that both displaying two lists of menu options
simultaneously (e.g., Wilcox, Figs 7-8) and intersecting display elements
(i.e., bringing display elements into physical contact as illustrated by
Wilcox, Figs. 101 -102, for example) were known and practiced in the art.
Such a combination of teachings would have entailed no more that the
combination of known elements performing known functions to achieve a
Appeal 2010-004300
Application 10/767,473

6
predictable result (i.e., display of menu options) (KSR Int’l Co., 550 U.S. at
416). Nor have Appellants provided sufficient evidence to show that
effecting such a combination was “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).
Appellants further argue that “any attempt to overlay the respective
elements to cause them to intersect would disrupt the viewing of at least one
of the respective elements [and] would render the Wilcox reference
unsatisfactory for its intended purpose, and would change a principle of
operation of the Wilcox reference” (App. Br. 28). However, Appellants do
not sufficiently demonstrate how modifying Wilcox (Figs. 7-8) by
incorporating the principles of “intersecting” display elements (Wilcox, Fig.
101-102) would have rendered Wilcox unsatisfactory for its intended
purpose or would have substantially changed a principle of operation.
Wilcox discloses the display and selection of menu options in multiple
menus (arranged in perpendicular rows) on a display. Incorporating the
concept of intersecting display elements of Figs. 101-102 of Wilcox into
Figs. 7-8 of Wilcox would have merely resulted in the display of the same
menus of Wilcox in contact with each other. In either case, the “intended
purpose” or “principle of operation” of the display and selection of menu
options is unchanged rather than “rendered unsatisfactory.”
Appeal 2010-004300
Application 10/767,473

7
Appellants also argue that the combination of Wilcox, Gospel, and
Knowles fails to disclose or suggest “‘AV content currently playing on the
display continues to play unless the menu option selected is a menu
option . . . .’” (App. Br. 25). We disagree with Appellants.
As the Examiner indicates, Knowles discloses content playing on a
display that is altered (e.g., “tune to a program on another channel” – col. 15,
ll. 4-5) when “the user places the cursor on the desired program/channel and
presses SELECT” (col. 15, ll. 5-6). In other words, Knowles discloses
playing content on a display but then not playing the content when a user
selects an option. We do not discern any meaningful difference between
Knowles and the claimed feature of playing AV content on a display unless
the menu option selected is a menu option. Nor have Appellants pointed out
any substantial differences.
Appellants cite to a separate embodiment in Knowles and argue that
Knowles discloses that “the cited portion [pertaining to the separate
embodiment of Knowles] requires either a timeout period or requires the
user to select a SELECT key” (App. Br. 26) and postulates that “an
‘either/or’ combination of functionality . . . does not teach or suggest . . .
[the] claimed ‘unless’ conditional” (App. Br. 26). We disagree with
Appellants. For one thing, Appellants cite a separate embodiment of
Knowles rather than the embodiment disclosing a user selecting a menu
option. Also, we agree with the Examiner that it would at least have been
obvious to one of ordinary skill in the art, given that content playing on a
Appeal 2010-004300
Application 10/767,473

8
display changes to another program when a user selects another menu option
(as disclosed by Knowles), that such a program change would not occur
“unless” the user selected the other menu option since that is precisely what
Knowles discloses.
Appellants also argue that both Wilcox (App. Br. 29) and Knowles
(App. Br. 30) “actually teaches away from Appellant’s claimed subject
matter.” However, Appellants do not demonstrate or assert that either
reference would have led one of skill in the art in a direction divergent from
the path taken by Appellant; rather, Appellants recapitulate their arguments
regarding combinability or motivation to modify. “‘A reference may be said
to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.’” Para-Ordnance Mfg., Inc. v. SGS Importers Int’l,
Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994)). Appellants have not identified, and we do not find,
any such discouragement in Wilcox and Knowles.
We therefore cannot agree with Appellants.

CONCLUSION
We conclude that the Examiner did not err in rejecting claim 104 as
unpatentable over the combination of Wilcox, Gospel, and Knowles.

Appeal 2010-004300
Application 10/767,473

9
DECISION
We affirm the Examiner’s decision rejecting claim 104 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)

AFFIRMED

rvb