NISSAN MOTOR CO., LTD.

Patent Trials and Appeals Board

May 19, 2021

2021000550 (P.T.A.B. May. 19, 2021)

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.
15/764,778 03/29/2018 Kenji Maruyama 18610/062001 8620
22511 7590 05/19/2021
OSHA BERGMAN WATANABE & BURTON LLP
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
TRAN, KIM THANH THI
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
05/19/2021 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):
docketing@obwbip.com
escobedo@obwbip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENJI MARUYAMA, HIROSHI WATANABE,
MASAYUKI SHISHIDO, and NORIO KOSAKA
________________

Appeal 2021-000550
Application 15/764,778
Technology Center 2600
____________

Before MARC S. HOFF, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒13, which constitute all the claims pending in this
application.1 See Final Act. 2, 5, 7, and 8. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Nissan Motor Co., Ltd. as the real
party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to vehicular display devices, and in
particular to guide figures displayed along a guide route on such devices.
Spec. ¶¶ 1‒7. Claim 1 is illustrative of the appealed subject matter and reads
as follows:
1. A vehicular display device configured to display a guide
route to a destination of a host vehicle, the vehicular display
device comprising:
a navigation device configured to calculate the guide
route;
a display controller configured to draw an arrow having a
shaft with an arrowhead at one end of the shaft, as a guide
figure for guidance along the guide route calculated by the
navigation device, such that the arrow is shaped as a three-
dimensional object in which one surface of the arrow is a
continuous flat surface from the shaft to the arrowhead and an
other surface of the arrow includes a larger width portion
having a larger height and a smaller width portion having a
smaller height,
wherein the continuous flat surface extends on a
plane that is perpendicular to a height direction and
extends lengthwise from the shaft to the arrowhead;
wherein the continuous flat surface is
perpendicular to the height direction;
wherein, in the continuous flat surface, a width of
the shaft is smaller than a width of a portion of the
arrowhead nearest to the one end of the shaft,
wherein, in the continuous flat surface, the width
of the arrowhead decreases in a direction toward a point
of the arrowhead which is away from the portion of the
arrowhead nearest to the one end of the shaft,
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wherein, in the other surface, a height of the shaft
is greatest at a center of the shaft in a width direction of
the shaft,
wherein, in the other surface, a height of the
arrowhead is greatest at a center of the arrowhead in a
width direction of the arrowhead,
wherein, in the other surface, the height of the
center of the shaft is proportional to the width of the
shaft,
wherein, in the other surface, the height of the
center of the arrowhead is proportional to the width of
the arrowhead, whereby the height of the center of the
arrowhead decreases from the portion of the arrowhead
nearest to the one end of the shaft towards the point of
the arrowhead,
wherein, in the other surface, the height of the
center of the shaft at the one end of the shaft is smaller
than the height of the center of the arrowhead nearest to
the one end of the shaft; and
a display configured to display an image drawn by the
display controller in a display area provided to overlap a
position of a windshield,
wherein the display controller is configured to display the
arrow such that the one surface appears to be superimposed on
a ground.
The Examiner’s Rejections
Claims 1, 9, 11, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Millington (US 6,611,753 B1; Aug. 26, 2003), Akita (US
2009/0240426 A1; Sept. 24, 2009), David Scherer, The Visual Module of
VPython – Reference Manual, Feb. 4, 2009 (“Scherer”), Shaffer (US
6,327,364 B1; Dec. 4, 2001), Shawn Arseneau, arrow3D – creates a single
volumized arrow based on a cylinder/cone combination, Sept. 14, 2006
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(“Arseneau”), Jaeger (US 6,883,145 B2; Apr. 19, 2005), and Half arrows in
graph using TikZ, (“Tax Exchange”). See Final Act. 2‒14, 17.
Claims 2‒7 stand rejected under 35 U.S.C. § 103 as unpatentable over
Millington, Akita, Scherer, Shaffer, Arseneau, Jaeger, Tax Exchange, and
Niles (US 2008/0036776 A1; Feb. 14, 2008). See Final Act. 14‒17.
Claims 8, 10, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Millington, Akita, Scherer, Shaffer, Arseneau, Jaeger, Tax
Exchange, and Nakadai (US 2012/0330659 A1; Dec. 27, 2012). See Final
Act. 18‒19.
ANALYSIS
Claim 1 recites “a vehicular display device configured to display a
guide route to a destination of a host vehicle.” The vehicular display devices
of claim 1 comprises “a navigation device configured to calculate the guide
route;” “a display controller;” and “a display configured to display an image
drawn by the display controller in a display area provided to overlap a
position of a windshield.” Claim 1 further recites several limitations relating
to the manner in which “an arrow having a shaft with an arrowhead at one
end of the shaft” acts “as a guide figure for guidance along the guide route
calculated by the navigation device.”
The Examiner finds the combination of Millington, Akita, Scherer,
Shaffer, Arseneau, Jaeger, and Tax Exchange teaches or suggests the
limitations of claim 1 and, in particular, the limitations relating to the
manner in which the claimed arrow is displayed. See Final Act. 2‒14;
Ans. 3‒14. Specifically, the Examiner finds an ordinarily skilled artisan
would understand that drawing the arrow shape is a design choice and a
skilled artisan can draw any shape they want as fits the occasion. Ans. 4. The
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Examiner finds an ordinarily skilled artisan can freely draw any size and any
shape arrow. Id. at 8. The Examiner finds the cited references all teach
arrows of various shapes, including three-dimensional arrows, and the shape
or size of the arrow is the designer choice, but is not the technology. Id.
at 11.
Appellant argues the Examiner errs in rejecting claim 1 for several
reasons relating to the combination of references cited for the precise shape
of the displayed arrow. See Appeal Br. 8‒26; Reply Br. 2‒6. In particular,
Appellant argues the Examiner has failed to articulate a reasonable
explanation as to why an ordinarily skilled artisan would have selectively
picked and chosen various elements from the prior art to arrive at the
claimed invention. Appeal Br. 10. Appellant argues there are deficiencies in
the teachings of individual references (see, e.g., Appeal Br. 10‒11 (arguing
alleged deficiencies in Millington) and deficiencies in the Examiner’s
proffered rationale to combine the references (see, e.g., Appeal Br. 13‒14
(arguing alleged deficiencies in the motivation to combine Scherer with
Millington and Akita)). Appellant also argues certain references are not
analogous art to the claimed invention. See Appeal Br. 12‒22.
Appellant has not persuaded us of Examiner error for two reasons.
First, the precise shape and size of the arrow displayed on the vehicular
display device is nonfunctional descriptive material that is not entitled to
patentable weight. Our reviewing court has held that nonfunctional
descriptive material cannot distinguish an invention from the prior art in
terms of patentability. Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI
2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006) (citing In re
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Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983)).
In determining whether printed matter—in this case, limitations
relating to the appearance of the claimed arrow—is nonfunctional
descriptive material, “[t]he first step . . . is the determination that the
limitation in question is in fact directed toward printed matter.” In re
DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if it
is “claimed for what it communicates.” Id. at 850. Because the arrow recited
in claim 1 is being claimed for what it communicates about the guide route,
it is printed matter.
If a claim recites printed matter, “one must then determine if the
matter is functionally or structurally related to the associated physical
substrate, and only if the answer is ‘no’ is the printed matter owed no
patentable weight.” DiStefano, 808 F.3d at 851. The appearance of the arrow
recited in claim 1 is not functionally related to the associated substrate, the
display device. That is, the appearance of the arrow drawn on the display
device does not affect the functionality of the display device. Instead, the
appearance of the arrow only affects the information communicated to the
user of the display device. Our analysis is consistent with the examples
given in Mathias of common situations involving nonfunctional descriptive
material:
• a computer-readable storage medium that differs from the
prior art solely with respect to nonfunctional descriptive
material, such as music or a literary work, encoded on the
medium,
• a computer that differs from the prior art solely with respect
to nonfunctional descriptive material that cannot alter how
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the machine functions (i.e., the descriptive material does not
reconfigure the computer), or
• a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the
process steps are to be performed to achieve the utility of the
invention.
Mathias, 84 USPQ2d at 1279.
Thus, although we will not disregard any claim limitations and will
assess the claimed invention as a whole, we follow the Federal Circuit’s
guidance from the Gulack decision and do not give patentable weight to the
limitations relating to printed matter absent a functional relationship between
the printed matter and the substrate. Thus, the claimed appearance of the
arrow is nonfunctional descriptive material that cannot distinguish the
claimed invention from the prior art in terms of patentability. We understand
the Examiner’s finding that “[t]he shape or size of [the] arrow is the designer
choice but is not the technology” (Ans. 11) to be consistent with this
determination.
Second, we are not persuaded of Examiner error because we agree
with the Examiner that the shape and size of the arrow displayed on the
display device constitute a design choice. Ans. 4. In appropriate
circumstances, a modification of prior art teachings may be a matter of
design choice. See, e.g., ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d
1361, 1367 (Fed. Cir. 2016) (where the prior art consistently located two
sensors in shredder's feed, skilled artisan faced two design choices of placing
the thickness sensor above or below the presence sensor and each design
choice was an obvious combination of prior art elements); Rexnord Indus.,
LLC v. Kappos, 705 F.3d 1347, 1356 (Fed. Cir. 2013) (where the prior art
taught that conveyor belt elements are spaced to avoid pinching fingers, the
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claimed 10 mm dimension was a design choice that takes into account the
size of fingers and small objects).
However, a proposed change that results in different structure and
function may not be an obvious design choice. See e.g., Flour Tec, Corp. v.
Kappos, 499 Fed. Appx. 35, 41–42 (Fed. Cir. 2012) (adding an expander to a
lower pressure configuration to accommodate a high pressure feed was not a
design choice where a separate high-pressure configuration also was used);
In re Gal, 980 F.2d 717, 719–20 (Fed. Cir. 1992) (custom logic cells had
different structure and purpose than prior art logic cells and thus were not a
design choice).
In this case, we are not persuaded that changes to the appearance of
the claimed arrow result in different structure or function of the claimed
display device. That is, Appellant argues the appearance of the arrow is
“specifically claimed in order to make the guide figures easier to read and
recognize, especially where the guide figure is displayed on the road in the
travelling direction far from a host vehicle or extends horizontally.” Appeal
Br. 8 (citing Spec. ¶¶ 4‒7). We take Appellant’s argument as an allegation of
a different function of the claimed display device, but even accepting
Appellant’s argument as true, we are not persuaded that this results in
different function of the claimed device. To the contrary, this is the type of
information that Mathias finds is not functional. In particular, in Mathias,
the claimed invention was distinguished from the prior art based on the
particular image broadcasted by the claimed system (a broadcast sport
event), and here Appellant distinguishes the claimed invention based on the
particular arrow displayed by the claimed display device. Thus, we are not
persuaded that changes to the appearance of the claimed arrow result in
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different structure or function. Accordingly, we agree with the Examiner that
the appearance of the arrow would have been an obvious design choice to an
ordinarily skilled artisan. We also note that Appellants have not identified
persuasive evidence in the record before us that the Examiner’s combination
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the obviousness rejection of independent claims 3 and 4, which
Appellant argues is patentable for the same reasons. See Appeal Br. 8‒24.
We also sustain the obviousness rejection of dependent claims 2 and 5‒13,
for which Appellant relies on the same arguments. See id.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9, 11, 13 103 Millington, Akita,
Scherer, Shaffer,
Arseneau, Jaeger,
Tax Exchange
1, 9, 11, 13
2‒7 103 Millington, Akita,
Scherer, Shaffer,
Arseneau, Jaeger,
Tax Exchange, Niles
2‒7
8, 10, 12 103 Millington, Akita,
Scherer, Shaffer,
Arseneau, Jaeger,
Tax Exchange,
Nakadai
8, 10, 12
Overall
Outcome
1‒13

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED