Andrew S. Feltham et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914714715 - (D) (P.T.A.B. Sep. 3, 2019) 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. 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 2 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 Appeal 2019-000086 Application 14/714,715 3 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. Appeal 2019-000086 Application 14/714,715 4 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 Appeal 2019-000086 Application 14/714,715 5 [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. Appeal 2019-000086 Application 14/714,715 6 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) Copy with citationCopy as parenthetical citation