Ex Parte 6466238 et al

Board of Patent Appeals and Interferences

Jan 24, 2011

90009078 (B.P.A.I. Jan. 24, 2011)

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.
90/009,078 03/13/2008 6466238 14917.1219USRX 1612
27488 7590 01/24/2011
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/24/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICROSOFT CORPORATION
____________

Appeal 2010-010430
Reexamination Control 90/009,078
United States Patent 6,466,238 B1
Technology Center 3900
____________

Before SCOTT R. BOALICK, KARL D. EASTHOM, and STEPHEN C.
SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-010430
Reexamination Control 90/009,078
Patent 6,466,238 B1

2
Patent owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1, 4, 6-9, 11-18, 20, and 21.2 Claims 2, 3,
and 19 have been confirmed (See Final Rej. 15) and claims 5 and 10 were
cancelled (App. Br. 2). We have jurisdiction under 35 U.S.C. §§ 134(b) and
306. An oral hearing was held on November 3, 2010.
We reverse.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by James V. Costigan on March 13, 2008, of United States Patent 6,466,238
B1 (the ‘238 patent). Reexamination of claims 1-17 was requested. Claims
5 and 10 were cancelled, claims 18-21 were added, and claims 2, 3, and 19
were confirmed as patentable.
Patentee’s invention relates to a computing system in which the
operating system provides a common folder for default document storage to
application programs and a graphical user interface for access to the default
folder (col. 2, ll. 48-56).
Claim 1, which we deem to be representative, reads as follows:
1. A graphical user interface for a computer,
comprising:
a screen displaying a desktop of the graphical user
interface;

2 Patent owner, Appellant, Microsoft Corporation, is the real party in
interest for this appeal and assignee of record of U.S. Patent 6,466,238 B1
“Computer Operating System that Defines Default Document Folder for
Application Programs” (issued October 15, 2002 with listed inventors Jon R.
Berry, Robert F. Day, Eric R. Flo, Joseph H. Matthews, and Richard S.
Turner, Jr.).
Appeal 2010-010430
Reexamination Control 90/009,078
Patent 6,466,238 B1

3
a predetermined file-container icon displayed on
the desktop;
one or more registered or unregistered application
programs; and
one or more operating system provided file-
operation dialog boxes accessed by any of said one or
more registered or unregistered application programs
when any of said one or more registered or unregistered
application programs are executed, wherein said
operating system provided file-operation dialog boxes
are defined independently of the one or more application
programs to specify a file container associated with the
predetermined file-container icon as a default document
container for files related to the one or more application
programs, wherein the default document container and
the predetermined file-container icon are provided by the
operating system independently of the one or more
application programs.
(App. Br. 19, Claims Appendix).

The prior art references relied upon by the Examiner in rejecting the
claims are:
Alan Simpson, “Windows 95 Uncut,” IDG Books Worldwide, Inc., 1995
(“Simpson”).

Lonnie E. Moseley and David M. Boodey, “Mastering Microsoft Office 97
Professional Edition,” 2nd Edition, Sybex, Inc., 1996 (“Moseley”).

The Examiner rejected claims on the following bases:
(1) claims 1, 4, 6, 11-18, 20, and 21 under 35 U.S.C. § 102(b) as
being anticipated by Moseley (Ans. 4-14); and
(2) claims 7-9 under 35 U.S.C. § 103(a) as being unpatentable over
Moseley and Simpson (Ans. 14-15).

Appeal 2010-010430
Reexamination Control 90/009,078
Patent 6,466,238 B1

4
ISSUES
With respect to the anticipation rejection over Moseley, Appellant
argues that default storage folders associated with Microsoft Office 95 “was
not applied to other application programs” and “was not promoted by the
[Windows 95] operating system” (App. Br. 10) and therefore, according to
Appellant, Moseley fails to disclose a default document container that “is
provided by the operating system independently of the application
programs” (id.). Appellant further asserts that Moseley fails to disclose a
desktop link icon that, in response to selection by a user, displays the
predetermined file-container icon within the file-operation window (App.
Br. 15-16).
Regarding the obviousness rejection over Moseley and Simpson,
Appellant argues that Simpson “does not provide any of the teaching that is
missing from Moseley” (App. Br. 17).
Thus, we identify the following issue:
Did the Examiner err in finding that Moseley discloses a
predetermined default document file-container icon that is provided by the
operating system independently of the one or more application programs?

FINDINGS OF FACT
1. Moseley discloses “Windows 95 provides a folder named My
Documents” such that “[w]hen you save a presentation in PowerPoint, your
presentation files are saved in the My Documents folder” (p. 727).
Appeal 2010-010430
Reexamination Control 90/009,078
Patent 6,466,238 B1

5
2. Moseley discloses “[w]hen Word is installed, a folder called
My Documents is created and is used as the default location for your
documents” (p. 358).

PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS

We find Appellant’s argument to be persuasive that Moseley fails to
disclose a “default document container [that] is provided by the operating
system independently of the application programs” (App. Br. 10), as recited
in claim 1.
As described above, Moseley discloses that Windows 95 (i.e., an
operating system) provides a folder named “My Documents” (FF 1) which
the Examiner equates with the claimed “predetermined file-container icon”
Appeal 2010-010430
Reexamination Control 90/009,078
Patent 6,466,238 B1

6
(Ans. 4). However, claim 1 requires that the “predetermined file-container
icon” be provided independently of application programs. Even assuming
that the “the operating system ‘Windows 95’ provides a folder named ‘My
Documents’ as a default folder” (Ans. 17) as the Examiner states, Moseley
discloses that “My Documents” (equated with the “file-container icon by the
Examiner) is provided “[w]hen Word is installed” (FF 2). Therefore, the
“My Documents” folder is dependent on the Word application since the “My
Documents” folder would not be provided if Word (i.e., an application) is
not installed in Moseley. This is contrary to the claim limitation that the
“predetermined file-container” is provided independently of application
programs.
The Examiner does not find that Simpson makes up for the deficits of
Moseley by disclosing or suggesting a predetermined file-container icon
provided independently of application programs.
Claims 6, 12, and 18 recite similar features as claim 1.
Based on the foregoing discussion, we agree with Appellant that the
rejection of claims 1, 4, 6, 11-18, 20, and 21 as being anticipated by Moseley
and the rejection of claims 7-9 as being obvious over Moseley and Simpson
were in error.

CONCLUSION
The Examiner erred in finding and determining that Moseley discloses
a predetermined default document file-container icon that is provided by the
operating system independently of the one or more application programs.

Appeal 2010-010430
Reexamination Control 90/009,078
Patent 6,466,238 B1

7
DECISION
The Examiner’s decision to reject appealed claims 1, 4, 6-9, 11-18,
20, and 21 is reversed.
REVERSED

rvb

PATENT OWNER:

MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903

THIRD PARTY REQUESTER:

JAMES V. COSTIGAN
HEDMAN & COSTIGAN PC
1185 AVENUE OF THE AMERICAS
NEW YORK, NY 10036