Andrew S. Feltham et al.

Patent Trials and Appeals Board

Sep 3, 2019

14714715 - (D) (P.T.A.B. Sep. 3, 2019)

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.
14/714,715 05/18/2015 Andrew S. Feltham GB920140026US1 4969
77212 7590 09/03/2019
Cantor Colburn LLP - IBM Endicott
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
VU, THANH T
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW S. FELTHAM, DOMINIC P. HARRIES,
and GRAHAM WHITE
____________

Appeal 2019-000086
Application 14/714,715
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER,
and GARTH D. BAER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–15, which constitute all the pending claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1 Appellants identify International Business Machines Corporation as the
real party in interest (App. Br. 2).
Appeal 2019-000086
Application 14/714,715

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THE INVENTION
Appellants’ claimed invention is directed to “controlling the display
of a document, when the document comprises multiple columns” (Spec. ¶ 1).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method of controlling display of a document, the
document comprising multiple columns, wherein the multiple
columns are assigned incrementally increasing values based on
an order in which they are intended to be read, the method
comprising:

displaying the columns of the document in a viewport
having a single scrollbar configured to individually control a
portion of each of the columns displayed in the viewport,

receiving a user input defining a downwards scrolling for
the document,

determining a lowest numbered column of the columns
displayed that does not have its lowest point displayed in the
viewport, wherein the lowest point of a column is an end of the
column, and

scrolling upwards only the lowest numbered column that
does not have its lowest point displayed in the viewport, while
maintaining all other columns stationary in the viewport.
App. Br. 10 (Claims Appendix).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Onda US 5,877,760 Mar. 2, 1999
Little US 6,204,846 B1 Mar. 20, 2001
Miller US 2009/0150822 A1 June 11, 2009
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Application 14/714,715

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REJECTIONS
The Examiner made the following rejections:
Claims 6–15 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.2
Claims 1, 3–6, 8–11, and 13–15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Miller and Onda. Final Act. 2.
Claims 2, 7, and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Miller, Onda, and Little. Final Act. 5.3

ISSUE
The pivotal issue is whether the Examiner erred in finding the
combination of Miller and Onda teaches or suggests the limitation of
displaying the columns of the document in a viewport
having a single scrollbar configured to individually control a
portion of each of the columns displayed in the viewport,
as recited in independent claim 1, and similarly recited in independent
claims 6 and 11.
ANALYSIS
Appellants argue that
Onda teaches the use of three separate scrollbars (500a, 500b,
and 500c) that each control the corresponding columns, which
is in direct contrast to the claims which require, “displaying the

2 Claims 6 and 11 appearing in the Claims Appendix (see App. Br. 11, 12)
correspond to the amended claims in an Amendment (after final rejection)
filed Feb. 1, 2018 which was not entered by the Examiner. See Adv. Act. 1
mailed on Feb. 9, 2018. As the Appeal Brief contains no argument
regarding this rejection, we summarily affirm the rejection.
3 It is unclear in the Reply Brief (see Reply Br. 2–3) why Appellants
contend this is a new grounds of rejection added to the Answer; see Final
Act. 5.
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Application 14/714,715

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columns of the document in a viewport having a single
scrollbar configured to individually control a portion of each of
the columns displayed in the viewport”
(App. Br. 7). Appellants contend that “the Examiner has taken an overly
broad interpretation of the element that ‘a viewport having a single scrollbar
configured to individually control a portion of each of the columns displayed
in the viewport’” (Reply Br. 2), because “[t]his claim element clearly
requires a single viewport having multiple columns of text that are
individually controlled by a single scrollbar” (Reply Br. 2).
We agree. Neither Miller nor Onda teaches or suggests a single
scrollbar in a viewport, but instead teaches multiple scrollbars, that each (a)
control an individual column inside the viewport (Miller ¶ 28), or (b) may
synchronously control horizontal scrolling in individual columns inside the
viewport (Onda Figs. 11–12, 14:51–15:22). When the teachings of Miller
and Onda are combined, the combination relies on multiple scrollbars,
unlike the claimed invention. The addition of Little does not cure the
deficiencies of Onda and Miller.
Accordingly, we are constrained by the record to reverse the
Examiner’s rejection of independent claim 1, as well as independent claims
6 and 11 commensurate in scope, and dependent claims 2–5, 7–10, and 12–
15.
New Grounds of Rejection under 35 U.S.C. § 101
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection and separately reject claims 11–15 under 35 U.S.C.
§ 101.
The preamble of independent claim 11 recites
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[a] computer program product for controlling display of a
document, the document comprising multiple columns, wherein
the multiple columns are assigned incrementally increasing
values based on an order in which they are intended to be read,
the computer program product comprising a computer
readable storage medium having program instructions
embodied therewith, the program instructions executable by a
processor to cause the processor to . . .
(App. Br. 12 (Claims Appendix), emphasis added). The ordinary and
customary meaning of “computer readable storage medium” to a person of
ordinary skill in the art is broad enough to encompass both non-transitory
and transitory media. Signals are not patent eligible subject matter under
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also Ex
parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).
Accordingly, we enter new grounds of rejection for independent claim
11 and dependent claims 12–15 under 35 U.S.C. § 101.

CONCLUSION
The Examiner erred in finding the combination of Miller and Onda
teaches or suggests the limitation of
displaying the columns of the document in a viewport
having a single scrollbar configured to individually control a
portion of each of the columns displayed in the viewport,
as recited in independent claim 1, and similarly recited in independent
claims 6 and 11.
DECISION
The Examiner’s decision rejecting claims 6–15 under 35 U.S.C.
§ 112(b) is affirmed.
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Application 14/714,715

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The Examiner’s decision rejecting claims 1–15 under 35 U.S.C.
§ 103(a) is reversed.
We newly reject claims 11–15 under 35 U.S.C. § 101.
37 C.F.R. § 41.50(b) provides a “new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record . . .
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-IN-PART; 37 C.F.R. § 41.50(b)