Apple Inc.

Patent Trials and Appeals Board

Aug 27, 2020

2019003384 (P.T.A.B. Aug. 27, 2020)

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.
14/975,299 12/18/2015 Matthew Ross Lehrian P6526USC1 / APPL:0419-1 1062
73576 7590 08/27/2020
APPLE INC. - Fletcher
c/o Fletcher Yoder, PC
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
docket@fyiplaw.com
hill@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW ROSS LEHRIAN, CHRISTOPHER DOUGLAS
WEELDREYER, and TSURISHADDAI WILLIAMSON
Appeal 2019-003384
Application 14/975,299
Technology Center 2100
BEFORE BRADLEY W. BAUMEISTER, GREGG I. ANDERSON, and
DAVID J. CUTITTA II, Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1 and 14 under 35 U.S.C. § 102(a)
as being anticipated by Appellant’s Admitted Prior Art.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Apple, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to improving locking spreadsheet cells by
adding various types of visual indicia. Spec.,2 Title. Spreadsheets include a
desired number of rows and columns of cells. Id. ¶ 22. Spreadsheet tables
can have headers in the “top two rows and the leftmost column.” Id.,
Fig. 2A.
Standard spreadsheet functionality “includes the ability to define the
content of one cell in such a way that the content of the one cell is
determined based at least in part on the content of one or more other cells.”
Spec. ¶ 24. “[L]ocked cells are normally rendered (e.g., without any special
visual indication to indicate that they are locked) when viewable in their
actual relative positions with respect to an associated table in a given display
view.” Id. ¶ 24. “[L]ocked cells become ‘floating’ cells in the sense that
they are not displayed in their actual relative positions with respect to an
associated table but are rather overlaid on other cells of the table that are
visible in a current display view.” Id.

2 We use “Spec.” to refer to the Specification filed December 18, 2015;
“Final Act.” to refer to the Final Office Action mailed June 13, 2018;
“Appeal Br.” to refer to the Appeal Brief filed October 11, 2018; “Ans.” to
refer to the Examiner’s Answer filed January 29, 2019; and “Reply Br.” to
refer to the Reply Brief filed March 28, 2019.
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Figure 2B is reproduced below:

Figure 2B illustrates locked headers with respect to tables 202 and 204.
Spec. ¶ 24. “[T]he locked header rows of table 202 have become floating
since their actual relative positions with respect to table 202 have scrolled
out of view.” Still referring to Figure 2B, in one example, “a shadow is
rendered with respect to the header rows to create a visual appearance that
indicates that they are floating, i.e., not in their actual relative positions with
respect to the table.” Id. ¶ 25.
Claim 1, reproduced below, illustrates the claimed subject matter:
1. A non-transitory computer readable storage medium and
comprising computer instructions for:

receiving an input configured to lock one or more cells of a first
group of cells of a plurality of groups of cells in a single sheet
of a spreadsheet application, wherein the one or more cells of
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the first group of cells are configured to be locked
independently of cells of other groups of cells of the plurality
of groups of cells; and

locking the one or more cells of the first group of cells when the
one or more cells of the first group of cells are scrolled out of
view of a display and when at least a portion of the first group
of cells is in view of the display, wherein locking the one or
more cells of the first group of cells comprises casting a
shadow visual effect from the one or more cells of the first
group of cells onto one or more unlocked cells of the first
group of cells when actual relative positions of the one or
more cells of the first group of cells have scrolled out of view
of the display.
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Lehrian US 9,223,771 B2 Dec. 29, 2015
Fenkes US 2008/0016437 A1 Jan. 17, 2008
Robertson US 2004/0103369 A1 May 27, 2004
Buczek US 2008/0082938 Apr. 3, 2008
Parsons US 8,640,048 B1 Jan. 28, 2014
REJECTIONS3
1. Claims 1–7, 10 and 12 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–6, 8, and
13, respectively, of Lehrian. Final Act. 4–11.

3 The Examiner has withdrawn the Final Action’s rejection of claims 14–20
under 35 U.S.C. § 101 as being directed towards a judicial exception to
patent-eligible-subject matter without reciting significantly more. Ans. 24.
Because the Board is an appellate body that reviews appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon (Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential)), our decision not to exercise our
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2. Claims 1–7 and 10–12 are rejected under 35 U.S.C. § 103(a)
over Fenkes, Robertson, and Buczek. Id. at 11–16.
3. Claims 8–9 and 13 are rejected under 35 U.S.C. § 103(a) over
Fenkes, Robertson, Buczek, and Parsons. Id. at 16–19.
4. Claims 14–20 are rejected under 35 U.S.C. § 103(a) over
Fenkes, Buczek, and Parsons. Id. at 19–23.

NON-STATUTORY DOUBLE PATENTING
Appellant “does not agree” that claims 1–7, 10, and 12 are obvious
over claims 1–6, 8, and 13 of Lehrian, but Appellant does not present any
substantive arguments relating to the double-patenting rejection. Appeal
Br. 6. Appellant merely states, “Appellant is willing to file a terminal
disclaimer” when the claims are indicated as allowable. Appeal Br. 6.
Accordingly, we summarily sustain the double patenting rejection.

discretionary authority under 37 C.F.R. § 41.50(b) and consider the question
of patent eligibility should not be interpreted as the Board agreeing that the
claims are directed to patent-eligible subject matter. But see, e.g., Trading
Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (holding that
claims are abstract where “they recite a purportedly new arrangement of
generic information that assists traders in processing information more
quickly”); see also Move Inc. v Real Estate Alliance, 721 Fed. Appx 950,
954 (Fed. Cir. 2018) (finding a claimed “method for collecting and
organizing information . . . and displaying this information on a digital map
that can be manipulated by a user” to recite a patent-ineligible abstract idea).

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OBVIOUSNESS REJECTION OF CLAIMS 1–7 AND 10–12 OVER
FENKES, ROBERTSON, AND BUCZEK

Examiner’s Determinations and Appellant’s Contentions
With respect to independent claims 1 and 10, Appellant argues that
none of the references teach the following language of claim 1:
wherein locking the one or more cells of the first group of cells
comprises casting a shadow visual effect from the one or more
cells of the first group of cells onto one or more unlocked cells
of the first group of cells when actual relative positions of the
one or more cells of the first group of cells have scrolled out of
view of the display.
Appeal Br. 11–12 (quoting claim 1). Independent claims 1 and 10 both
include the “casting a shadow” italicized language.
In the Final Action, the Examiner relies on Buczek’s disclosure of
“freezing (locking) columns and rows in a user interface table” to teach
“casting a shadow.” Final Act. 14 (citing Buczek, Title, Abstract). More
specifically, the Examiner cites Buczek’s Figure 3, reproduced below:

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Id. (citing Buczek, Fig. 3, ¶¶ 22–24).
Buczek’s Figure 3, along with Figures 1, 2, 4, and 5, are “views of a
user interface for displaying information in tabular form configured for
freezing selected non-adjacent columns in a table.” Buczek ¶ 9. The
Examiner identifies column C202 as frozen, as indicated by the background
shading. Final Act. 14 (citing Buczek ¶ 22). The Examiner finds Buczek’s
focus 120 freezes column M302, the background 306 being shaded to
indicate it is frozen. Id. (citing Buczek ¶ 23).
Figure 4 of Buczek is reproduced below.

Like Figure 3, Figure 4 is “a user interface for displaying information in
tabular form configured for freezing selected non-adjacent columns in a
table.” Buczek ¶ 9. Although Buczek’s Figure 4 was not cited specifically
by the Examiner, the functionality illustrated was described and relied upon.
Final Act. 14 (citing Buczek ¶ 24). As shown in Figure 4, and described in
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paragraph 24, when the focus 120 is moved from column M302 (Fig. 3) to
the left of column F310, column E402 (Fig. 4) becomes visible to “display
between a frozen column and an adjacent column that is displayed.” Id.
(citing Buczek ¶ 24).
Appellant argues Buczek does not teach casting a shadow. Appeal
Br. 12. According to Appellant,
[Buczek] teaches augmenting an interior color or a border of the
frozen cells (e.g., locked cells) to differentiate between the frozen
and unfrozen cells. However, augmenting the interior or border
of the locked cells, as taught by Buczek, appears to be unrelated
to locked cells casting a shadow onto unlocked cells, as generally
recited by independent claims 1 and 10. Indeed, as one having
ordinary skill in the art would understand, the shadow cast from
the locked cells would not affect the interior or border of the
locked cells. In contrast, a shadow cast by/from the locked cells
would cast a shadow onto adjacent, unlocked cells, as shown in
FIGS. 2B-2D of the Application. In other words, as generally
recited in claims 1 and 10, the locked cells cast a shadow visual
effect, which is cast based on the location of the locked cells and
onto the unlocked cells while, on the other hand, Buczek
discloses augmenting an interior of the locked cells, such as
through shading, color change, holding, highlighting, etc.

Id. The Examiner’s Answer maintains the position that the casting a
shadow limitation is shown. Ans. 26.
Analysis
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974).
Here, the claims expressly require that locking the cells casts a
“shadow” “onto one or more of the unlocked cells” (see, e.g., claim 1)
(emphasis added)—they do not cast a shadow onto the locked cells,
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themselves. Appellant’s Specification confirms that this plain meaning of
the claims is accurate and intended. For example, Appellant’s Figure 2B
depicts the recited shadow, or thin line of cross hatching, is on the row of
unlocked cells, which are only partially visible due to being covered by the
floating locked cells. See also Spec. ¶ 24 (“the floating [locked] cells of a
table are rendered with a shadow that makes them appear to float or hover
above the table”); id. ¶ 25 (“a shadow is rendered with respect to the header
rows to create a visual appearance that indicates that they are floating”).
In contrast, Buczek discloses augmenting an interior of the locked
cells, themselves. See, e.g., Buczek, Figure 2 (reproduced above) (depicting
the locked cells being highlighted). As explained by Appellant, though, the
“casting a shadow” limitation of claim 1 is not met by highlighting, i.e.,
“casting a shadow,” within the locked cells themselves.
The Examiner does not address Appellant’s contention that the
highlighting of a cell in Buczek is only with respect to the locked cells, and
not the unlocked cells. The Examiner’s conclusion to the contrary is not
supported by sufficient evidence from Buczek.
Accordingly, we are persuaded by Appellant’s argument. The
Examiner’s rejection of claims 1–7 and 10–12 (rejection 2 above) is not
sustained.

THE OBVIOUSNESS REJECTION OF CLAIMS 8, 9, AND 13 OVER
FENKES, ROBERTSON, BUCZEK, AND PARSONS

Claims 8, 9, and 13 depend from independent claims 1 and 10. The
Examiner separately rejects these dependent claims (rejection 3 above), but
the Examiner does not rely on the additionally cited reference, Parsons, to
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cure the deficiency noted above in relation to the obviousness rejection of
independent claims 1 and 10. See Final Act. 17–18. Accordingly, we also
sustain the rejection of claims 8, 9, and 13 for the reasons set forth above in
relation to claim 1.

THE OBVIOUSNESS REJECTION OF CLAIMS 14–20 OVER
FENKES, BUCZEK, AND PARSONS

The Examiner’s Determinations and Appellant’s Contentions
With respect to independent claim 14, Appellant argues that none of
the references teaches the following step:
scroll the workspace such that partial views of a first set of cells
of a first group of cells directly adjacent to one or more locked
cells of the first group of cells are always viewable as any part
of the first group of cells is scrolled out of view using the scroll
bar, wherein the partial views of the first set of cells comprise
less than an entirety of content inside each cell of the first set of
cells, and wherein the first group of cells comprises a plurality of
rows or a plurality of columns.

Appeal Br. 17 (quoting claim 14).
We first construe what the claim term “partial view” means. Based on
the claim language, the broadest reasonable interpretation of “partial view”
is a depiction of the row of hidden cells adjacent the bottom edge of the
floating header, such that each individual cell is depicted as only being
partially visible. See, e.g., FIG 2B.
The claim language supports this interpretation. Claim 14 recites, in
pertinent part, “wherein the partial views of the first set of cells comprise
less than an entirety of content inside each cell of the first set of cells.”
Emphasis added.
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The Specification also supports the above construction in describing
an embodiment where:
rows or columns of cells may be scrolled such that they are
partially out of view. Smooth scrolling is depicted in the
examples of Figures 2B–2D. In each of Figures 2B and 2C, the
row directly below the floating header rows in table 202 is
partially scrolled out of view.

Spec. ¶ 33 (emphasis added).
Figure 2B is reproduced at page 3 above. Figure 2C is
reproduced below:

Figure 2C, like Figure 2B above, illustrates locked headers in tables 202 and
204. Spec. ¶ 24. As between Figures 2B and 2C, “the display view of sheet
200 has further been vertically scrolled down as indicated by the even lower
position of vertical scroll bar 206.” Id. ¶ 25. Thus, table 202 of Figures 2B
and 2C shows a “partial view” of the hidden row immediately below the
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month headers. As discussed above, the Specification describes this
function as “smooth scrolling.” Id. ¶ 33.
For the recited “partial views” of claim 14, the Examiner cites
Figure 3 of Parsons as showing:
the collection 300 before the user scrolls down, Figure 3C shows
the pane after the user has scrolled down, and the thumbnail
images 310–314 (the first set of cells) are displayed only in
portion and the labels 346–348 are now visible, heading 360 is
fixed at the top of the pane because the associated thumbnail
images 310–314 are visible, and a new heading 368 has scrolled
into the pane. Thus, scrolling in Figures 3A-3D show smooth
scrolling, in which at least a portion of one or more of thumbnail
images are scrolled in or out of view using scroll bar.

Final Act. 21.
Appellant argues that “Parsons does not appear to always show partial
views of thumbnail images 310, 312, and 314.” Appeal Br. 17 (citing
Parsons, Fig. 3B, 3C). According to Appellant, “Parsons would also appear
to scroll the entire first set of cells of out of view while also displaying the
full content of another set of cells.” Appeal Br. 17; Reply Br. 8 (citing
Reply Br. 6–7 (arguments relating to claims 8 and 13)). Thus, Appellant
argues that “[o]nce Parsons scrolls past the thumbnail images 310, 312, and
314, Parsons would not show partial views of the thumbnail images 310,
312, and 314.” Appeal Br. 17; Reply Br. 7 (both citing Parsons, Figs. 3B,
3C).
The Examiner contends that Parsons’ Figure 3C
shows the pane after the user has scrolled down, and the
thumbnail images 310–314 (the first set of cells) are displayed
only in portion and the labels 346–348 are now visible, heading
360 is fixed at the top of the pane because the associated
thumbnail images 310–314 are visible, and a new heading 368
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has scrolled into the pane. Thus, scrolling in Figures 3A–30
show smooth scrolling, in which at least a portion of one or more
of thumbnail images are scrolled in or out of view using scroll
bar.

Ans. 29, 30 (citing Ans. 27–29 (showing regarding claims 8 and 13)).
Appellant’s arguments are persuasive. As Appellant contends,
claim 14 recites, in part, “a first group of cells.” Emphasis added. In
substance, Appellant argues Parsons teaches thumbnail images, which are
not a part of a spreadsheet “cell.” See Appeal Br. 20 (claim 1 reciting “a
plurality of groups of cells in a single sheet of a spreadsheet application”).
The distinction between spreadsheet “cells” and thumbnail images is
apparent because Parsons illustrates a spreadsheet document in Figures 2A
through 2F, whereas Parsons illustrates thumbnail images in Figures 3A
through 3d. None of Figures 2A through 2F depict a “partial view” of
spreadsheet cells below a header. See Parsons, Figs. 2A–2F. And none of
Figures 3A through 3D depict spreadsheet cells.
For the reasons stated, we do not sustain the rejection of claim 14.
Claims 15–17 depend from independent claim 14, and claims 18–20 depend
from claim 17. The Examiner separately rejects these dependent claims
(rejection 4 above), but the Examiner does not rely on the additionally cited
references, Fenkes or Buczek, to cure the deficiency noted above in relation
to the obviousness rejection of independent claim 14. See Final Act. 22–23.
Accordingly, we also do not sustain the rejection of claims 14–20 for the
reasons set forth above in relation to claim 14.

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NEW ANTICIPATION REJECTION OF CLAIMS 1 AND 14
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claims 1 and 14 under 35 U.S.C. § 102(a)
as being anticipated by Appellant’s Admitted Prior Art.
Claim 1
Appellant acknowledges that it was known to provide spreadsheet
applications with the option to lock or freeze specified columns or rows of
the spreadsheet’s cells (hereafter referring to both of these functionalities
either as “freezing panes” or “locked headers”). Spec. ¶ 3. Appellant also
acknowledges that it was known that “locked rows or columns may be
relevant to one group (e.g., may correspond to row and column labels of that
group) but not to other groups [of cells].” Id.
Furthermore, Appellant acknowledges that it was known to include
visual effects of the presence of hidden rows or columns in a spreadsheet
application that employs freezing panes. See FIG. 1B (labeled as “Prior Art”
and depicting a spreadsheet application with freezing panes that includes a
bolded line between rows 1 and 5, indicating the hidden presence of rows 2–
4, as well as a bolded line between columns A and C, indicating the hidden
presence of column B); Spec. ¶ 8 (describing Figure 1B as illustrating “a
prior art example of freezing panes in a typical spreadsheet application.”).
Appellant’s invention, then, is to improve upon the freezing-pane
spreadsheet applications of the prior art by providing either of two
alternative visual effects for indicating the presence of hidden rows or
columns of cells under the locked headers. One alternative entails rendering
the floating cells of a table’s locked header with “a shadow that makes [the
locked cells] appear to float or hover above the table.” Spec. ¶
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24. We understand that these shadows do not appear in the locked cells,
themselves, but rather that the locked cells “cast[] a shadow visual effect
from the one or more [locked cells] onto one or more unlocked cells . . .
when actual relative positions of [some unlocked cells] have scrolled out of
view of the display.” Claim 1, Appeal Br. 20.
The second visual effect entails causing the “rows or columns of cells
[to] be scrolled such that they are partially out of view.” Spec. ¶ 33. For
example,
[i]n each of Figures 2B and 2C, the row directly below the
floating header rows in table 202 is partially scrolled out of view.
In Figure 2D, the row directly below the floating header rows in
table 204 is almost completely scrolled out of view, but a portion
of the row is still visible under the floating header rows.
Spec. ¶ 33.
We next analyze whether the shadow of claim 1, which is cast on the
unlocked cells when other cells are locked, is functionally related to the
operation of the spreadsheet—that is, whether the claimed shadow is
functionally related to underlying substrate on which it is depicted:
When presented with a claim including nonfunctional descriptive
material, an Examiner must determine whether such material
should be given patentable weight. The Patent and Trademark
Office (PTO) must consider all claim limitations when
determining patentability of an invention over the prior art. In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The PTO may
not disregard claim limitations comprised of printed matter. See
Gulack, 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S.
at 191. However, the PTO need not give patentable weight to
descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate.
See Gulack, 703 F.2d at 1386. See also In re Ngai, 367 F.3d
1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583–
84 (Fed. Cir. 1994). The burden of establishing the absence of a
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novel, nonobvious functional relationship rests with the PTO. In
re Lowry, 32 F.3d at 1584.
Ex Parte Halligan, 89 U.S.P.Q.2d 1355, 1367–68 (BPAI 2008) (non-
precedential).
In the case of Appellant’s claim 1, we find that no functional
relationship exists between the shadow and the spreadsheet. Casting a
shadow does not cause the spreadsheet to perform any function. The
shadow does not cause cells to lock or unlock. The shadow does not initiate
any spreadsheet macros or activate any functions. Rather, the shadow
constitutes printed matter—graphical shading that informs a user (1) where
the delineation is between the locked and unlocked cells and (2) that
additional out-of-view unlocked cells exist. E.g., Spec. ¶¶ 24–25.
Appellant acknowledges that all of claim 1, with the exception of the
final wherein clause of claim 1, is directed to computer structures and
functionalities found in prior-art spreadsheet applications. Claim 1’s final
wherein clause—the only portion of the claim not admitted to constitute
prior art—reads as follows:
wherein locking the one or more cells of the first group of cells
comprises casting a shadow visual effect from the one or more
cells of the first group of cells onto one or more unlocked cells
of the first group of cells when actual relative positions of the
one or more cells of the first group of cells have scrolled out of
view of the display.
Our reviewing court has held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
new. See, e.g., Ngai. 367 F.3d at 1338 (adding instructions to a kit that
describe a method of using it does not make the kit patentable over the same
kit with a different set of instructions.). Our reviewing court has identified
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cases in which the descriptive material can form a functional relationship
with the underlying substrate. For example, in In re Miller, the addition of
printed matter to the outside of a cup permitted an otherwise ordinary cup to
be used like a measuring cup to half recipes. In re Miller, 418 F.2d 1392,
1396 (CCPA 1969). The printed matter in Miller was determined to serve as
a computing or mathematical recipe conversion device permitting a cook to
perform calculations automatically with no further thought. However, as
discussed above, Appellant’s claim 1 is more like the claim in Ngai than
Miller. That the particular visual effect is a shadow does not change the
function of the locking feature, or the product for that matter, in any way.
The shadow merely describes a new, non-functional feature for a product
that already exists. This final wherein clause, therefore, solely recites non-
functional descriptive material. Moreover, even if functional, the claimed
shadow visual effect differs from the prior art only in the content of the
visual effect, which is not a patentable distinction. As a result, Appellant’s
claimed casting of a shadow visual effect does not distinguish the invention
from the prior art. To grant a patent for this claim would mean that each
novel visual effect used to distinguish between locked and unlocked cells in
a spreadsheet application is sufficient to warrant a separate patent, even if
the remainder of the invention is unchanged.
Therefore, the language of the final wherein clause does not
patentably distinguish claim 1 from the prior-art spreadsheet applications.
Accordingly, we newly reject claim 1 as being anticipated by Appellant’s
prior-art admissions.
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Claim 14
We now turn to independent claim 14:
14. A system, comprising:
a processor configured to:
receive an indication that a scroll bar provided with
a user interface of a spreadsheet application is being
exercised with respect to a workspace of the spreadsheet
application; and
scroll the workspace such that partial views of a
first set of cells of a first group of cells directly adjacent to
one or more locked cells of the first group of cells are
always viewable as any part of the first group of cells is
scrolled out of view using the scroll bar, wherein the
partial views of the first set of cells comprise less than an
entirety of content inside each cell of the first set of cells,
and wherein the first group of cells comprises a plurality
of rows or a plurality of columns; and
a memory coupled to the processor and configured
to provide the processor with instructions.
Claim 14, Appeal Br. 22–23 (emphasis added).
We addressed above in relation to claim 1 that Appellant
acknowledges that it was known to provide spreadsheet applications with
locked headers or frozen panes that allows a user to scroll through the
spreadsheet’s workspace. E.g. Spec. ¶¶ 3, 5, 8, FIG. 1B. As such, Appellant
acknowledges that it was known in the art at the time of the invention to
provide a processor configured to receive an indication that a scroll bar
provided with a user interface of a spreadsheet application is being exercised
with respect to a workspace of the spreadsheet application, as recited in
claim 14.
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Furthermore, Appellant’s express disclosure that spreadsheet
applications were known also constitutes an admission that it was known at
the time of the invention to provide a memory coupled to the processor and
configured to provide the processor with instructions. The only portion of
claim 14, that Appellant does not acknowledge constitutes prior art is the
scrolling limitation. We now turn to that limitation.
As noted, Appellant acknowledges that it was known to provide
spreadsheet applications with locking functions. E.g. Spec. ¶¶ 3, 5, 8,
FIG. 1B. According to Appellant,
the present claims are related to overcoming a problem
specifically arising in the realm of computer networks. For
example, when scrolling through a spreadsheet, it may be
difficult for a user to distinguish between locked and unlocked
cells. Accordingly, claim 14 is, in part, directed to clearly
emphasizing the difference between locked and unlocked cells
by also always showing partial views of unlocked cells directly
adjacent to locked cells, as the original location of the locked
cells is scrolled out of view.
Appeal Br. 10.
Like the shadows of claim 1, then, providing partial views of rows of
hidden cells adjacent to the frozen headers does not provide any computer
functionality. Rather, Appellant explains that the purpose of these partially
visible cells is to provide a visual indication to the user of the boundary of
the locked and unlocked cells. Appeal Br. 4. The partial-view cells, then,
are just another visual effect or aesthetic expression, similar to the bold lines
depicted by Appellant’s prior-art Figure 1B, analogous to printed matter and
not functionally related to the underlying substrate on which it is depicted,
i.e., the spreadsheet. Moreover, even if functional, the claimed use of
partial-view cells in a spreadsheet application differs from the prior art only
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in the content of the visual effect, which is not a patentable distinction. As a
result, Appellant’s claimed use of a partial-view cells visual effect does not
distinguish the invention from the prior art.
For these reasons, as well as the reasons set forth above in relation to
claim 1, then, the scrolling clause of claim 14 solely recites non-functional
descriptive material. That is, the language of the scrolling clause does not
patentably distinguish claim 14 from the prior-art spreadsheet applications.
Accordingly, we newly reject claim 14 as being anticipated by Appellant’s
prior-art admissions.
Other Claims
Although we decline to reject claims 2 through 13 and 15 through 20
pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
emphasize that our decision does not mean that the remaining claims are
necessarily patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
CONCLUSIONS4
The Examiner’s rejection of claims 1, 2, 3, 4, 5, 6, 7, 10, 12 on
nonstatutory double patenting is sustained.

4 In addition to considering the potential patent-eligibility rejection under
101, noted above (see n.3), upon further prosecution the Examiner also may
wish to consider whether the differences between the prior-art spreadsheets
and the two claimed inventions (the spreadsheet with the shadowed
unlocked cells and the spreadsheet with the partially depicted hidden
unlocked cells) constitute obvious aesthetic design choices under 35 U.S.C.
§ 103. See In re Seid, 161 F.2d 229 (CCPA 1947) (holding that matters
relating to ornamentation only, which have no mechanical function, cannot
be relied upon to patentably distinguish the claimed invention from the prior
Appeal 2019-003384
Application 14/975,299
21
The obviousness rejections of claims 1 through 20 are not sustained.
We exercise our discretionary authority under 37 C.F.R. § 41.50(b)
and newly reject independent claims 1 and 14 as anticipated over
Appellant’s prior-art admissions.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed New
Grounds
1–7, 10,
12
Nonstatutory
Double
Patenting
1–7, 10,
12

1–7, 10–
12
103 Fenkes,
Robertson,
Buczek
1–7, 10–
12

8–9, 13 103 Fenkes,
Robertson,
Buczek,
Parsons
8, 9, 13
14–20 103 Fenkes,
Buczek,
Parsons
14–20
1, 14 102(a) Appellant’s
Prior-Art
Admissions
1, 14

Overall
Outcome
1–7, 10,
12
8, 9, 11,
13–20
1, 14

art); see also generally MPEP § 2144.04(I) AESHTETIC DESIGN
CHANGES.
Upon any further prosecution, the Examiner also may wish to
consider in relation to claims 1–13, Appellant’s admitted prior art in
combination with Kjaer (US 2002/0091728 A1; published July 11, 2002),
e.g., FIG. 2; ¶¶ 49, 184 (teaching that visual shading can be used to create
shadow effects and thereby emphasize one set of spreadsheet cells relative to
others).
Appeal 2019-003384
Application 14/975,299
22

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 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.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, 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 prosecution 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. . . .

AFFIRMED IN PART;
37 C.F.R. § 41.50(b)