Ex Parte Allen et al

Board of Patent Appeals and Interferences

Mar 16, 2011

10959820 (B.P.A.I. Mar. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY E. ALLEN, JENNIFER NEWNAM
and RICHARD REDPATH
____________

Appeal 2009-006882
Application 10/959,820
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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Invention
Appellants’ invention relates generally to the field of navigation in a
software application. More particularly, the invention on appeal is directed
to specifying menu navigation in a mobile device. (Spec. 1).

Representative Claim
1. A method for specifying menu structure and
content in a mobile device, the method comprising
the steps of:

extracting navigation data from a link locator
requesting the retrieval of a specified resource;

retrieving said specified resource and forwarding
said retrieved specified resource to a designated mobile
device; and,

configuring at least one of a menu bar control and
a context menu control in a host application in said
designated mobile device according to said extracted
navigation data.

Rejections
1. Claims 1-3 and 10-12 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Udler (US Pat. App. Pub. 2005/0010877 A1).
2. Claims 4-9 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Udler in view of Eldridge (US
6,421,716 B1).

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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

1. Under § 102, did the Examiner err in determining
that Udler discloses “configuring at least one of a
menu bar control and a context menu control in a
host application in said designated mobile device
according to said extracted navigation data,”
within the meaning of representative claim 1?

2. Under § 103, did the Examiner err in determining
that the cited combination of Udler and Eldridge
would have taught or suggested the following
limitations:
• embedding navigation data “responsive to
the selection of an entry in said list,” within
the meaning of claims 4 and 13, and
• “event handling logic configured to respond
to the activation of an entry in said list by
embedding a link locator and menu
navigation data for said entry in a request to
retrieve a resource associated with said
entry,” within the meaning of representative
claim 5, and
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• “team rooms in a collaborative space,”
within the meaning of claim 6?

FINDINGS OF FACT
1. Udler’s Fig. 2B depicts tabs 218, as reproduced below:

Udler’s Fig. 2B

2. Udler discloses that “[a]pplication tabs 218 provide a
mechanism for client 102 to tab between major application
areas in use and each tab 218 may be visible at all times.” (para.
[0025]).
3. Appellants’ Evidence Appendix states that “[n]o evidence
submitted pursuant to 37 C.F.R. §§ 1.130, 1.131, or 1.132 of
this title or of any other evidence entered by the Examiner has
been relied upon by Appellants in this Appeal and thus no
evidence is attached hereto.” (App. Br. 21).
4. Regarding the claimed “menu bar control” (claim 1)
Appellants’ Specification discloses that “[t]he common GUI
includes many stock user interface controls, most of which,
when combined, can accommodate most computer-human
interactions required by an application. To that end, a menu bar
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control can provide a fixed, navigable textual menu for
navigating the functionality of an application.” (Spec. para.
[0002])(emphasis added).
5. Udler discloses:
As used in this document, client 102 is intended to encompass a
personal computer, work station, network computer, kiosk,
wireless data port, personal data assistant (PDA), one or more
processors within these devices or other devices, or any other
suitable processing device. Moreover, ‘client 102’ and ‘user of
client 102’ may be used interchangeably without departing
from the scope of this disclosure.

(para. [0011])(emphasis added).
6. Udler discloses that client requests 135 may include a GUI
identifier (ID) operable to indentify a GUI profile 115, data
source information, contextual information, and/or other
suitable request information. (para. [0011]).
7. Eldridge discloses that:
FIG. 11 illustrates a sequence of display screens for offering
a specific class of service (e.g., printing) in a limited location
(e.g., "this building"). More specifically in FIG. 11, after a user
selects the reference link 927 and the open command 925 in the
display screen 920, the display screen 940 is presented to the
user, which includes a list of other available print services and
the rooms in which they are physically located.

(Col. 12, ll. 27-35; Fig. 11).

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ANALYSIS
Claims 1-3 and 10-12 rejected under § 102
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of representative claim 1 regarding the anticipation
rejection of claims 1-3 and 10-12. See 37 C.F.R. § 41.37(c)(1)(vii).
Upon our review of the record, we find the evidence supports the
Examiner’s finding of anticipation for the reasons discussed infra.
Regarding the limitation of “at least one of a menu bar control and a
context menu control” (independent claims 1 and 10), Appellants dispute the
Examiner’s findings:
Despite the Examiner's arguments to the contrary, the tabs 218
of Udler are neither a menu, nor a bar, nor a menu bar control.
A dictionary definition [1] of menu is "a list of options available
to a user, as displayed on a computer or TV screen." The tabs
218 of Udler are not a list of options. Moreover, "tabs" are not
"bars." In this regard, Appellants note that the Examiner has not
provided any factual evidence that supports a finding
that one having ordinary skill in the art would consider a
"tab" to be comparable to a "bar." Thus, Appellants
maintain that the Examiner has failed to establish that
Udler identically discloses the limitations at issue.

(App. Br. 6).

1 Appellants rely on the dictionary definition of “menu” found in Webster's
College Dictionary, Random House, 1995, pg. 847.

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The Examiner disagrees. The Examiner contends that “Udler's
teaching of the ‘plurality of tabs 218’ encompasses applicant's ‘menu bar’ in
that the tabs are a ‘navigable textual menu’ and assist in ‘navigating the
functionality of an application’, because each tab will present a different
display of a major application area.” (Ans. 13).
For essentially the same reasons articulated by the Examiner (Ans. 11-
15), we agree that a broad but reasonable interpretation of the claimed
“menu bar control” at least covers (but is not limited to) a “menu bar
control” of the type described in Appellants’ Specification. (See FF 4: “To
that end, a menu bar control can provide a fixed, navigable textual menu for
navigating the functionality of an application.”). Udler discloses that
“[a]pplication tabs 218 provide a mechanism for client 102 to tab between
major application areas in use and each tab 218 may be visible at all times.”
(FF 1-2). On this record, we agree with the Examiner that the claimed
“menu bar control” is anticipated by Udler’s tabs 218.
Moreover, we decline to construe Appellants’ claims in accordance
with the extrinsic dictionary evidence that Appellants’ attempt to import into
the record in a manner inconsistent with the statement found in the Evidence
Appendix to the principal Brief. (FF 3). The Evidence Appendix is silent
regarding a statement setting forth where the “Webster’s College
Dictionary” (App. Br. 6, n.4) was entered into the record by the Examiner.
Reference to unentered evidence is not permitted in the Brief. See 37 C.F.R.
§ 41.37(c)(1)(ix).2 For the same reason, we decline to consider the

2 37 C.F.R. § 41.37(c)(1)(ix) “Evidence appendix. An appendix containing
copies of any evidence submitted pursuant to §§1.130, 1.131, or 1.132 of
this title or of any other evidence entered by the examiner and relied upon
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additional extrinsic dictionary evidence Appellants refer to on page 3 of the
Reply Brief. See also 37 C.F.R. § 41.33(d)(2).
Appellants additionally contend that Udler does not disclose the
controls are configured in a host application in the designated mobile device.
(App. Br. 6-7). We disagree for essentially the same reasons argued by the
Examiner on pages 15-18 of the Answer.
In particular, we agree with the Examiner that representative claim 1
does not specify what entity (who or what) performs the step of configuring.
(Ans. 17). Appellants’ argument notwithstanding, we conclude that
representative claim 1 broadly reads on, e.g., a server remotely performing
the claimed configuring, or the same or another mobile device (client)
performing the configuring, or even a person performing the step of
configuring. Thus, we conclude that a broad but reasonable interpretation of
claim 1 does not preclude the Examiner’s reading of the claim on the Udler
reference. (See Ans. 15-18). Because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).

by appellant in the appeal, along with a statement setting forth where in the
record that evidence was entered in the record by the examiner. Reference to
unentered evidence is not permitted in the brief. See §41.63 for treatment of
evidence submitted after appeal. This appendix may also include copies of
the evidence relied upon by the examiner as to grounds of rejection to be
reviewed on appeal.” (Emphasis and underline added).

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We also agree with the Examiner that Udler describes a mobile device
in accordance with at least one disclosed embodiment where client 102 is a
personal data assistant (PDA). (FF 5).
Appellants further aver that Udler’s GUI ID does not identically
disclose the claimed “navigation data” (App. Br. 8). However, we find
Appellants’ argument unpersuasive because Appellants ground their
argument on limitations found in the Specification. See App. Br. 8 (referring
to paragraph [0016] of the Specification). Claim 1 does not require the
navigation data to specify the content or structure of a control, as argued by
Appellants. (App. Br. 9, ¶1). Thus, Appellants’ argument urging
patentability is not commensurate with the broader scope of the claim.3
Representative claim 1 places no limitation on the particular content of the
navigation data that is extracted and used for configuring at least one
control.
For the aforementioned reasons, we agree with the Examiner’s finding
of anticipation regarding rejecting representative claim 1. We affirm the
§ 102 rejection of claim 1, as well as claims 2, 3, and 10-12 (not argued
separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

3 “[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments. . . . [C]laims may embrace ‘different
subject matter than is illustrated in the specific embodiments in the
specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc) (citations and internal quotation marks omitted).

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Claims 4 and 13 rejected under § 103
Appellants contend that the embedding in Udler does not occur in
“response to the selection of an entry in said list,” as recited in claims 4 and
13. (App. Br. 9).
The Examiner responds that Udler teaches the “embedding of the GUI
ID in the request would be responsive to the selection of the link, as the
request is not created until the link is selected.” (Ans. 24).
We observe that “Udler discloses the client requests 135 may include
a GUI identifier (ID) operable to indentify a GUI profile 115, data source
information, contextual information, and/or other suitable request
information.” (FF 6).
In the rejection of dependent claims 4 and 13, the Examiner looks to
the secondary Eldridge reference for teaching or suggesting the association
of the claimed navigation data with entries in a list of resources. (Ans. 7; see
Eldridge Abstract: “Responsive to the query, a hierarchical list of available
services is displayed at the user interface.”).
Even if we assume arguendo (without deciding) that Udler is silent as
to when the GUI ID (navigation data) is embedded into the resource request
(as argued by Appellants, App. Br. 6-7), we note that the Examiner’s
rejection is based upon the combination of Udler and Eldridge. We observe
that Appellants attack Udler in isolation in the Briefs. Because Eldridge
teaches the well known concept of selecting an entry in a list (Abstract), we
conclude that the Examiner’s proffered combination of Udler and Eldridge
would have at least suggested embedding the claimed navigation data
responsive to the selection of an entry in the list, within the meaning of
dependent claims 4 and 13.
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The Supreme Court has given clear guidance that the analysis under
§103 “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted).
This reasoning is applicable here. Therefore, we are in accord with the
Examiner’s ultimate legal conclusion of obviousness regarding dependent
claims 4 and 13. Accordingly, we sustain the § 103 rejection of dependent
claims 4 and 13 over the combination of Udler and Eldridge.

Independent claim 5 rejected under § 103
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of representative claim 5 regarding the obviousness
rejection of claims 5 and 7-9. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 5 recites “event handling logic configured to
respond to the activation of an entry in said list by embedding a link locator
and menu navigation data for said entry in a request to retrieve a resource
associated with said entry.” Appellants acknowledge that “[t]his limitation is
similar to the limitation previously discussed in claim 4 which recites that
the embedding occurs in response to a selection of an entry in the list.”
(App. Br. 11). However, Appellants contend that “even if the GUI ID is
included within a request, as taught by the combination of Udler and
Eldridge, the Examiner has failed to establish that the ‘request’ in which the
GUI ID is embedded is a request to retrieve a resource associated with an
entry in the list.” (App. Br. 13).
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As acknowledged by Appellants (App. Br. 12), the aforementioned
disputed limitation is similar to the limitation we addressed supra regarding
claims 4 and 13. We observe that Udler teaches that client requests 135 may
include multiple types of associated data, such as a GUI identifier (ID), data
source information, contextual information, and/or other suitable request
information. (FF 6). As also discussed above, Eldridge teaches the concept
of selecting (i.e., activating) an entry in a list in a mobile device to retrieve a
resource (document services) where the resources are associated with entries
in the list. (Abstract).
Given these teachings, we agree with the Examiner that the
combination of Udler and Eldridge would have at least suggested the
embedding of data for an entry in a request to retrieve a resource associated
with the entry, within the meaning of independent claim 5. Thus, we find
the weight of the evidence supports the Examiner’s ultimate legal conclusion
of obviousness regarding independent claim 5. Therefore, we sustain the
§ 103 rejection of independent claim 5 over the combination of Udler and
Eldridge. Claims 7-9 (not argued separately) fall with claim 5.
See 37 C.F.R. § 41.37(c)(1)(vii).

Dependent claim 6 rejected under § 103
Claim 6 recites: “The system of claim 5, wherein said list of resources
comprises individual team rooms in a collaborative space.” Appellants
contend that “[t]he Examiner has not established that one having ordinary
skill in the art, given the ordinary and customary meaning associated with
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the claimed phrase, would recognize that the rooms described in Fig. 11 of
Eldridge (i.e., Room 2.1, Room 2.2, Room 2.3) teaches the claimed
limitations.” (App. Br. 13).
Eldridge describes Figure 11 as “illustrat[ing] a sequence of display
screens for offering a specific class of service (e.g., printing) in a limited
location (e.g., "this building"). More specifically in FIG. 11, after a user
selects the reference link 927 and the open command 925 in the display
screen 920, the display screen 940 is presented to the user, which includes a
list of other available print services and the rooms in which they are
physically located.” (FF 7)(emphasis added). Given this clear suggestion of
Appellants’ retrieved resource (“team rooms in a collaborative space”), we
sustain the § 103 rejection of dependent claim 6 for essentially the same
reasons argued by the Examiner on page 28 of the Answer.
DECISION
We affirm the § 102 rejection of claims 1-3 and 10-12.
We affirm the § 103 rejection of claims 4-9 and 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).

ORDER
AFFIRMED

APJ Initials:

pgc

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