Ex Parte Proehl et alDownload PDFBoard of Patent Appeals and InterferencesJun 25, 201210767473 (B.P.A.I. Jun. 25, 2012) Copy Citation 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 Claims 1-86 have been cancelled and claims 87-103 have been withdrawn.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 Copy with citationCopy as parenthetical citation