Ex Parte Scott et al

Patent Trial and Appeal Board

Feb 28, 2017

12242215 (P.T.A.B. Feb. 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.
12/242,215 09/30/2008 Steven J. Scott 08AB274-US (ORD) 8345
70640 7590 03/02/2017
ROCKWELL AUTOMATION, INC / SR
Attn: Linda Kasulke
1201 S. 2nd Street
E-7C19
Milwaukee, WI 53204
EXAMINER
SIM, MATTHEW Y
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
s arah @ setterroche. com
u spto @ setterroche .com
raintellectu alproperty @ ra.rockwell .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. SCOTT, THONG T. NGUYEN, GREGGORY
CIESLAK, THOMAS LLOYD HEIDEBRECHT, PETE J. KLEIN, and
GARY DAN DOTSON
Appeal 2016-002984
Application 12/242,215
Technology Center 2600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21—40. App. Br. 2.1 Claims 1—20 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Throughout this opinion, we refer to (1) the Final Action (“Final Act.”)
mailed November 25, 2014, (2) the Advisory Action (“Adv. Act.”) mailed
February 20, 2015, (3) the Appeal Brief (“App. Br.”) filed July 7, 2015, (4)
the Examiner’s Answer (“Ans.”) mailed December 2, 2015, and (5) the
Reply Brief (“Reply Br.”) filed January 27, 2016.
Appeal 2016-002984
Application 12/242,215
THE INVENTION
Appellants’ invention is a human-machine interface (HMI) responsive
to touch. See Spec. ^ 1,3, 49. To prevent inadvertent touches, an HMI
system can require multiple contact on the screen. Id. 162. In one
embodiment of the invention, a user interface presents two graphical icons
for controlling a machine. Id. 146. While a first touch is maintained with
one icon, the interface displays a modified version of the second icon.
Id. 149. The modified second icon displays several selectable modes or
states. Id. 1 58. With these modes or states, the user can change a
machine’s operating speed—e.g., slow, medium, or fast. Id. 1 60, Fig. 7.
Claim 21 is reproduced below with our emphasis:
21. A method of operating a Human-Machine Interface (HMI)
system, the method comprising:
displaying on a user interface a first graphical icon
selectable by a first touch from a user and a second graphical icon
selectable by a second touch from the user, the second graphical
icon displaying a first mode selectable by the user;
receiving a first touch from the user selecting the first
graphical icon; and
displaying a modified version of the second graphical icon
while the first touch is maintained, the modified version of the
second graphical icon displaying a plurality of modes selectable
by the user.
THE REJECTIONS
The Examiner relies on the following as evidence:
Myers et al.
Muscarella et al.
Pincus
US 2004/0150668 Al Aug. 5, 2004
US 2007/0124904 Al June 7, 2007
US 2008/0016452 Al Jan. 17, 2008
2
Appeal 2016-002984
Application 12/242,215
Claims 21—25, 27—32, 34—39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pincus and Myers. Final Act. 4—10.
Claims 26, 33, and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pincus, Myers, and Muscarella. Final Act. 11—12.
THE OBVIOUSNESS REJECTION OVER PINCUS AND MYERS
Contentions
The Examiner finds that Pincus discloses every recited element of
claim 21, except for (1) displaying a modified version of the second
graphical icon while the first touch is maintained, and (2) displaying the
modified second icon with multiple selectable modes. Final Act. 4—5. The
Examiner relies on Myers to teach these features in concluding that claim 21
would have been obvious. Id. at 5. In particular, the Examiner explains and
finds that Myers activates a menu icon while the user maintains touch with
another icon. Ans. 3. According to the Examiner, Myers’s user modifies the
menu icon by highlighting menu items. Id. at 3^4.
Appellants argue that Myers does not display a modified version of
the second graphical icon while the first touch is maintained, as recited in
claim 21. App. Br. 7; Reply Br. 2. In Appellants’ view, Myers generates a
new, not modified, contextual menu when the user maintains a first contact.
App. Br. 7. Furthermore, Appellants contend that Myers’s menu is not
changed in response to maintaining a touch. Id. at 8—9.
Appellants further argue that Pincus teaches away from Myers’s
multiple selections because only one of Pincus’s icons is selectable at a time.
Id. at 8 (citing Pincus 1 59); Reply Br. 2—3. Appellants contend that Pincus
does not transition an icon from a first to a second mode, as recited in claim
3
Appeal 2016-002984
Application 12/242,215
21. App. Br. 7—8. Moreover, Appellants argue that Myers teaches away
from Pincus’s single-state selection operations. Reply Br. 3.
Issues
I. Under § 103, has the Examiner erred by finding that Pincus and
Myers collectively would have taught or suggested:
(1) displaying a modified version of the second graphical icon while
the first touch is maintained, as recited in claim 21?
(2) a modified version of the second graphical icon with multiple
modes selectable by the user, as recited in claim 21?
II. Has the Examiner supported the obviousness conclusion with
articulated reasoning with some rational underpinning?
Analysis
I
Claim 21 recites, in part, “displaying a modified version of the second
graphical icon while the first touch is maintained, the modified version of
the second graphical icon displaying a plurality of modes selectable by the
user.”
In the Specification, a modified icon changes from a single state
mode—“on”—to a multi-state mode—“slow,” medium,” and “fast.”
Spec. 1 58, Fig. 7. A user then may select a state or mode of operating a
machine. Id. | 60. But apart from this non-limiting embodiment, the
Specification does not confine our interpretation to a particular example of
how the second graphical icon must be modified.
4
Appeal 2016-002984
Application 12/242,215
Accordingly, we construe the limitation at issue with its plain
meaning, consistent with the above-discussed examples and the limitation’s
context within the claim.
Notably, claim 21 does not recite that the options available within the
menu are changed in response to maintaining a touch, as argued. See
App. Br. 9. Rather, claim 21 recites “a modified version of the second
graphical icon” (emphasis added). Under the plain meaning of this
limitation, the second graphical icon can be modified in ways other than
changing its menu options—for example, by modifying color or another
appearance or property. We further note that the recited “plurality of
modes” can include the recited “first mode.” That is, claim 21 only recites
that the second icon displays a first mode and the modified version of the
second icon displays a plurality of modes selectable by the user, but not a
different mode or modes that exclude the first mode.
Given this understanding of the claim, the Examiner’s finding that
Myers when combined with Pincus discloses the modified version of the
second graphical icon as recited (Final Act. 5; Ans. 3 4) is reasonable. In
particular, the Examiner finds that (1) Myers’s list object 86 corresponds to
the recited first icon and (2) Myers’s menu 90 corresponds to the recited
second icon. Ans. 3 (citing Myers, Fig. 7). Figure 7 of Myers is reproduced
below.
5
Appeal 2016-002984
Application 12/242,215
Figure 7 of Myers showing menu list object 86 and menu 90.
Figure 7 shows a submenu option selected by touch. Myers Fig. 7.
We agree with the Examiner’s finding that menu 90 (“the second graphical
icon”) is modified by a touch from finger 88. Ans. 3. Specifically, Figure 7
shows that menu 90 is modified, like the recited second graphical icon,
because the menu’s highlighted submenu option 92 changes at least in
appearance when touched by finger 88. See Myers Figs. 7—8, cited in
Final Act. 5. Although options provided by Myers’s submenus are the same,
claim 21 does not require a particular modification in which the icons or
submenu options are changed. Accordingly, Appellants’ arguments in this
regard (App. Br. 7, 9; Reply Br. 2) are not commensurate with claim 21’s
scope.
Furthermore, Appellants’ argument that Myers generates a new, not
modified, contextual menu when the user maintains a first contact
6
Appeal 2016-002984
Application 12/242,215
(App. Br. 7) is also unpersuasive. Notably, the claim does not require
displaying a second modified icon in direct or immediate response to
“receiving a first touch from the user selecting the first graphical icon.” The
claim only requires displaying the second modified icon “while the first
touch is maintained” (emphasis added)—i.e., displaying during the time that
the touch is maintained. Here, Myers displays the modification during the
time that the user touches finger 88 to one of the four submenu options. See
Myers Figs. 7—8 (changing the highlighting of the submenu options), cited in
Final Act. 5. Accordingly, we agree with the Examiner’s finding (Ans. 3)
that Myers’s modified icon 90 is displayed “while the first touch is
maintained,” as required by the claim. See Myers 134.
II
Appellants’ argument that the references teach away from each other
(App. Br. 7—8; Reply Br. 2—3) is unpersuasive. Appellants have not
presented persuasive evidence that Pincus criticizes, discredits, or otherwise
discourages the additional menu options available in Myers, for example.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In particular, the Examiner-cited operating states 208—214 in Pincus
are linked to secondary input buttons and switches 216—220. Pincus Fig.
3A, cited in Final Act. 4; Pincus 59, 64 (describing Figure 3A). For
example, Pincus displays input buttons and switches 216—220 to designate
actions to be performed in the operating state. Pincus 159. To be sure,
Pincus restricts user selection based on operating state. See id. But
Appellants have not shown that Pincus criticizes, discredits, or otherwise
discourages allowing users to provide more than one selectable input for the
one active state.
7
Appeal 2016-002984
Application 12/242,215
Myers’s menu allows the user to select additional items from a
secondary menu 90. See, e.g., Myers Fig. 7, cited in Final Act. 5. The
Examiner concludes that it would have been obvious to incorporate Myers’s
teachings in Pincus to allow the user to perform more than one control
option. See Final Act. 5. This enhancement uses prior art elements
predictably according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
On this record, the Examiner has supported the obviousness conclusion with
an articulated reason having some rational underpinning.
Apart from the relevance to the above-discussed combinability
argument, Appellants’ contention that Pincus does not transition an icon
from a first to a second mode (App. Br. 7—8) is not germane to the
Examiner’s rejection as stated in the Final Rejection, which relies on Myers
for teaching the modified second icon (Final Act. 5). We deem any
alternative rejections based on Pincus or Myers alone (see Adv. Act. 2;
Final Act. 2) as cumulative, and treat any error in this regard as harmless.
Accordingly, Appellants have not persuaded us of error in the
rejection of independent claim 21 and dependent claims 22—25 and 27, not
separately argued with particularity. See App. Br. 9; Reply Br. 3.
In arguing against the rejections of independent claims 28 and 35,
Appellants rely on arguments made against the rejection of claim 21. See
App. Br. 9; Reply Br. 3. For the reasons previously discussed, we also
sustain the Examiner’s rejection of independent claims 28 and 35 and
dependent claims 29—32, 34, and 36—39, not separately argued with
particularity. See App Br. 9; Reply Br. 3.
8
Appeal 2016-002984
Application 12/242,215
THE OBVIOUSNESS REJECTION OVER PINCUS, MYERS, AND
MUSCARELLA
Claims 26, 33, and 40 depend indirectly from claims 21, 28, and 35.
In arguing against the rejection for claims 26, 33, and 40, Appellants refer to
the arguments presented for the corresponding independent claim. App. Br.
9; Reply Br. 3. The issues before us, then, are the same as those in
connection with claim 21. Accordingly, we sustain the rejection of claims
26, 33, and 40 for the above-discussed reasons.
DECISION
We affirm the Examiner’s rejection of claims 21—40.
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).
AFFIRMED
9