Ex Parte Giannelli

Patent Trial and Appeal Board

Apr 28, 2017

12912064 (P.T.A.B. Apr. 28, 2017)

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.
12/912,064 10/26/2010 Brice GIANNELLI 370714US41 1403
22850 7590 05/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MATTHEWS, ANDRE L
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRICE GIANNELLI
Appeal 2017-000160
Application 12/912,064
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
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—13, 15 and 16, which are all the claims remaining in
the application. Claim 14 is cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2017-000160
Application 12/912,064
The Invention
Appellant's claimed invention relates to a “method for adapting
display parameters of a display device on board a vehicle.” Spec. 11.
Representative Claim
1. A method for adapting display parameters of a display
device on board a vehicle, the display parameters having default
values for a rated operating context of the vehicle, the method
comprising:
detecting a disturbed operating context of the vehicle
caused by unwanted movement of a portion of the vehicle; and
automatically modifying a value of at least one display
parameter of the display device responsive to said detecting the
disturbed operating context, the at least one display parameter
including a size of at least one touch-control area, and said
automatically modifying increasing the size of the at least
one touch-control area displayed on the display device
responsive to said detecting the disturbed operating context.
(Contested limitation emphasized).
Rejections
Rl. Claims 1—3 and 6—10 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Feyereisen et al. (US 2010/0309222 Al, publ. Dec. 9, 2010) (hereinafter
“Feyereisen”), Larson (US 2010/ 0109975 Al, publ. May 6, 2010), and
Orbanes et al. (US 2002/0089541 Al, July 11, 2002) (hereinafter
“Orbanes”).
R2. Claims 4, 5, 13, 15, and 16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
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Feyereisen, Larson, Orbanes and Shore (US 2010/0265181 Al, publ. Oct.
21,2010).
R3. Claims 11 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of
Feyereisen, Larson, Orbanes and Hyde et al. (US 2008/0128027 Al, publ.
June 5, 2008) (hereinafter “Hyde”).
Grouping of Claims
Based upon Appellant’s arguments, we decide the appeal of claims
1—3 and 6—10, rejected under rejection Rl, on the basis of representative
claim 1. We decide the appeal of claims 4, 5, 13, 15, and 16, rejected under
rejection R2, infra. We address claims 11 and 12, rejected under rejection
R3, but not argued separately, infra. To the extent Appellant has not
advanced separate, substantive arguments for particular rejected claims or
issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We find Appellant’s arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the Final Office Action (2—17) from which this
appeal is taken, and (2) the findings, legal conclusions, and explanations set
forth in the Answer in response to Appellant’s arguments (Ans. 15—18). We
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection Rl of Representative Claim 1 under § 103
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Feyereisen, Larson, and Orbanes would have taught or
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suggested the contested limitation: “automatically modifying increasing the
size of the at least one touch-control area displayed on the display device
responsive to said detecting the disturbed operating context,” within the
meaning of representative claim 1 ?1
Further, did the Examiner err in combining the cited Feyereisen,
Larson, and Orbanes references under rejection Rl, and the cited Feyereisen,
Larson, Orbanes and Shore references under rejection R2, because Orbanes
and Shore are purportedly non-analogous art to the claimed invention (as
argued by Appellant — App. Br. 12—15)?
Appellant contends “the applied references fail to disclose the claim
element of increasing size of a touch-control area responsive to detecting a
disturbed operating context on a vehicle.” (App. Br. 7).
Specifically, Appellant contends:
Whether a displayed image of an externally sensed object
increases, as described in Feyereisen, however, has no relation
to whether a size of a touch-control area increases.
Furthermore, whether the object displayed on the display
element 100/200 is increased (or decreased) is described in
Feyereisen as being based on a function of the distance the
object is from the vehicle, not based on a disturbed operating
context of the vehicle (caused by unwanted movement of a
portion of the vehicle).
(App. Br. 9).
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997). See Spec. 10: “Of course, this invention
is not limited to the exemplary embodiment described above.”
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Appellant additionally contends:
Orbanes’ so-called “zooming features” are not related in
any way to “automatic ” implementation thereof, particularly
since such zooming features are implemented for use by a
programmer in the context of a system for graphically
interconnecting operators in a visual programming system, in
response to inputs by the programmer (and not based on inputs
responsive to detection of a disturbed operating context of a
vehicle) during program development.
(App. Br. 10).
Appellant further argues, inter alia:
As such, Orbanes does not provide a teaching or a suggestion of
relating in any way the so-called zooming features to an input
other than an input from a programmer during program
development.
(App. Br. 11).
Our reviewing court guides that nonobviousness cannot be established
by attacking the references individually, when the rejection is based upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, “the
question under 35 U.S.C. § 103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made.” Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F. 2d 804, 807 (Fed. Cir. 1989).
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This reasoning is applicable here. Because Appellant’s arguments are
generally directed to attacking each reference considered in isolation, and
are not directed to the combined teachings and suggestions of the references,
as applied by the Examiner (Ans. 15—17; Final Act. 2-4), on this record, we
are not persuaded the Examiner erred.
We find Feyereisen’s description (| 51) of increasing (or decreasing)
the size of an object rendered on a display element in an aircraft cockpit
(| 49) teaches or at least suggests “automatically modifying increasing the
size of the at least one . . . area displayed on the display device responsive to
said detecting the disturbed operating context,” as recited in claim 1.
(Ans. 16, Final Act. 2—3). We address infra the “at least one touch-control
area,” also recited in the contested limitation of claim 1, as being taught or
suggested by Orbanes (131).
We find the Examiner’s broad but reasonable interpretation of the
“disturbed operating context” (claim 1) is fully consistent with Appellant’s
Specification (7,11. 1—2): “As relates to an aircraft, a disturbed operating
context is noted, for example, when the aircraft is passing through an area
of turbulence.”) (emphasis added). See also Spec. 10,14: “the display
device in particular may be on board different types of vehicles, and
particularly an automobile or a ship, in which operating conditions also
may disturb the readability and use of the display device.” (Emphasis
added).
Therefore, we find Feyereisen’s teaching (| 51) of rotating the
rendered object, or changing its viewing angle to accommodate a pitch, roll,
yaw, turn, climb, or descent (i.e., a “disturbance”) of the vehicle, teaches, or
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at least suggests, the disputed limitation of “detecting the disturbed
operating context,” as recited in claim 1. (Emphasis added).
The Examiner additionally cites Larson (1 37) to further buttress the
obviousness of the limitation “detecting the disturbed operating context.”
(Claim 1) (Final Act. 3). We agree with the Examiner’s finding that
Larson’s near-to-eye (NTE) display which adjusts the displayed image to
account for “vibrations in the aircraft 20 (e.g., turbulence),” teaches, or at
least suggests, “detecting the disturbed operating context,” within the
meaning of claim 1. (Final Act. 3, citing Larson 137) (emphasis added).
The Examiner cites Orbanes for the limited purpose of teaching that
Feyereisen’s display device may be further modified to include a “touch”
control area, with predictable results. (Final Act. 4). We agree with the
Examiner’s findings:
Orbanes teaches a system for graphically interconnecting
operators where his system can be a touchscreen with a
zooming option [0252] useable in an aircraft [0031], where
Orbanes also teaches the method of zooming into a control
area for a mouse input device Fig. 3 A [0087]. Therefore it
understood that Orbanes system allows users to access a
touchscreen controls by allowing users to zoom into control
areas. Orbanes was only relied upon to teach the method of
zooming (modifying) the display area of a touchscreen so that
users have easier access to controls (Fig. 3A mouse controls).
(Ans. 17) (emphasis added).
We agree with the Examiner’s findings, because Orbanes’ “touch
screen an[d] aircraft display” (131), “touchscreen” (1 89), and “touch screen
inputs” and “zoom renderer” (1252) evidence that it was known in the art
for a display device to have a “touch” control area. Moreover, our
reviewing court guides that “[combining two embodiments disclosed
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adjacent to each other in a prior art patent does not require a leap of
inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d
982, 991 (Fed. Cir. 2009).
Accordingly, given the strength of the evidence cited by the Examiner
(Final Act. 2-4), on this record, we are not persuaded the Examiner erred in
finding the combination of Feyereisen, Larson, and Orbanes would have
taught, or at least suggested, the contested limitation of claim 1.
Combinability of the References under §103 (a)
Appellant additionally contends the Orbanes reference is not properly
combinable with Feyereisen and Larson, because Orbanes is non-analogous
art. (App. Br. 12).
The question of whether a prior art reference is “analogous” turns on a
two-prong test: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation and quotations
omitted.). Our reviewing court further guides that “[a] reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
The Supreme Court additionally guides that “familiar items may have
obvious uses beyond their primary purposes.” KSR Inti Co. v. Teleflex, Inc.,
550 U.S. 398, 402 (2007).
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Applying this reasoning to the facts presented here, we find Orbanes
satisfies the first prong of the two-prong “analogous art” test articulated by
the Court in Klein. Because Orbanes teaches an embodiment (131) that is
adapted to display graphical representations on a touch screen, and an
aircraft display, we find Orbanes is in the same general field of endeavor as
the claimed invention. (See Claim 1). Given this evidence, we find
unpersuasive Appellant’s unsupported allegations that “[i]n particular,
Orbanes is directed to a system for graphically interconnecting operators in a
visual programming system, clearly not in the same field of endeavor as
Appellant’s independent claims.” (App. Br. 13).
In the alternative, we find Orbanes satisfies the second prong of the
Klein “analogous art” test, because we find it is “reasonably pertinent to the
particular problem with which the inventor is involved.” Klein, 647 F.3d at
1348. In particular, we note Orbanes (Tflf 31, 89, 252) teaches the use of a
touchscreen, which we find is “at least one touch-control area,” within the
meaning of claim 1, under a broad but reasonable interpretation.2
Therefore, based upon a preponderance of the evidence, on this
record, we are not persuaded of error regarding the Examiner’s underlying
factual findings, which we find support the Examiner’s legal conclusion of
obviousness. Accordingly, we sustain the Examiner's obviousness rejection
R1 of representative independent claim 1, and rejection R1 of the associated
2 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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grouped claims 2, 3, and 6—10, which fall with claim 1. See Grouping of
Claims, supra.
Rejection R2 of claims 4, 5, 13, 15, and 16 under §103 (a)
Regarding the Examiner’s rejection R2 of claims 4, 5, 13, 15, and 16,
Appellant argues the Shore reference is not properly combinable with
Feyereisen, Larson and Orbanes, because Shore is non-analogous art to the
claimed invention. (App. Br. 14). The Examiner responds that “Shore was
relied upon to teach the method of enlarging icon/key controls and removing
unwanted icon/key controls and not the method of predictive text.”
(Ans. 18).
Although Appellant urges that “predicting icon selection on a touch
screen of a portable device, as described in Shore, is not in the same field of
endeavor as Appellant’s claimed invention” (App. Br. 15), we observe
Appellant does not explain how Shore is non-analogous to any specific
limitations recited in any of the claims rejected under rejection R2.
Regarding the second prong of the analogous art test, Appellant also
contends Shore “is not reasonably pertinent to any problem faced by the
inventor of the present application and fails the second prong of the
analogous art test.” (App. Br. 15).
However, our reviewing court guides: “[a] finding that two inventions
were designed to resolve different problems ... is insufficient to
demonstrate that one invention teaches away from another.” Nat’l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). “In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls” in
an obviousness analysis. KSR International Co. v. Teleflex Inc., 550 U.S.
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398, 419 (2007). It is not necessary for the prior art to serve the same
purpose as that disclosed in Appellant’s Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See
In reLintner, 458 F.2d 1013, 1016 (CCPA 1972).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded by Appellant’s contentions that Shore is
non-analogous to the claimed invention. Accordingly, we sustain the
Examiner’s rejection R2 of claims 4, 5, 13, 15, and 16 under § 103.
Rejection R3 of claims 11 and 12 under §103 (a)
Because Appellant has not provided separate arguments with respect
to rejection R3 of dependent claims 11 and 12 rejected, we sustain the
Examiner's rejection of these claims under 35 U.S.C. § 103(a). Arguments
not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief, or are not responsive to arguments raised in the Examiner's Answer,
will not be considered except for good cause, which Appellant has not
shown. See 37 C.F.R. § 41.41(b)(2).
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DECISION
We affirm the Examiner's decision rejecting claims 1—13, 15, and 16
under § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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