Ex Parte Anwar et al

Patent Trial and Appeal Board

Jul 29, 2013

11061185 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAJID ANWAR, JACK MCGINLEY,
SCOTT A. JENSON, and JAMES CLEWETT
____________

Appeal 2011-002168
Application 11/061,185
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 3-47. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants describe their invention as “a graphical user interface for a
data processing device providing a user friendly menu system and
navigation capabilities.” Spec., Abstract.
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Independent claim 1 is illustrative, with a key disputed limitation
emphasized:
1. A graphical user interface for use in a data
processing system comprising:
a menu system for providing a first plurality of primary
menu items to a display, each of the primary menu items having
a visual field;
a navigation module for enabling a user to navigate the
menu system; and
a reveal process for displaying within the visual field of a
first primary menu item, a first plurality of secondary menu
items associated with the first primary menu item while
continuing to display a remainder of the first plurality of
primary menu items, and in response to a navigation to a
second primary menu item removing the first plurality of
secondary menu items from the display; and
a processor configured for executing the menu system,
the navigation module, and the reveal process.
The Examiner relies on the following references as evidence of
unpatentability:
Martyn US 2004/0051726 Al Mar. 18, 2004
Bowden US 5,588,107 Dec. 24, 1996
Os US 6,781,610 B2 Aug. 24, 2004
Shein US 6,075,575 Jun. 13, 2000
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REJECTIONS
The Examiner rejected claims 1, 3-23, 33-38, and 45-47 under 35
U.S.C. § 103 as unpatentable over Bowden and Martyn. Ans., pp. 4-13.1
The Examiner rejected claims 24-32 and 39-41 under § 103 as
unpatentable over Bowden, Martyn, and Os. Id. at pp. 14-18.
The Examiner rejected claims 42-44 under § 103 as unpatentable over
Bowden, Martyn, and Schein. Id. at pp. 18-20.
ANALYSIS
Claims 1 and 3-45
Appellants present claims 1, 3-23, 33-38, and 45 as standing or falling
with claim 1 (App. Br., p. 8), which is rejected as obvious over Bowden and
Martyn. For the reasons below, Appellants have not shown a reversible
error in the rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[T]he Board would not have erred in framing the issue as one of
‘reversible error.’”).
The Examiner reads the claim principally on Bowden’s “master
menu,” shown by Bowden’s Figures 3 and 4 below (left and right,
respectively; reproduced in part).

1 Throughout this opinion, we refer to the Appeal Brief filed June 10, 2010
(“App. Br.”), Examiner’s Answer mailed July 2, 2010 (“Ans.”), and Reply
Brief filed August 26, 2010 (“Reply Br.”).
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Bowden’s Figures 3 and 4 (left and right, respectively;
reproduced in part) illustrate a menu cited by the rejection.
Figure 3 illustrates the menu in a fully contracted form. Bowden, col.
4, ll. 15-17. Figure 4 illustrates an expanded portion of the menu and,
particularly, three menu panels 208/308, 210/310, 212/312 expanded by
selection of their respective expansion icons 220. Id. at col. 4, ll. 18-21.
The menu panels are contracted by selection of their respective contraction
icons 320. Id. at col. 5, ll. 64-67.
The Examiner reads the claimed “first primary menu item” and
included “secondary menu items” respectively on Bowden’s first expanded
menu panel 308 and included tools. Ans., p. 4. The Examiner
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acknowledges that the menu does not, “in response to a navigation to a
second primary menu item[,] remov[e] the first plurality of secondary menu
items from the display” as claimed (id. at p. 5); that is, does not contract a
menu panel in response to the user’s navigation of another menu panel.
Based on Martyn’s automatic expansion/contraction of menu panels, the
Examiner determined it would have been obvious to expand only a currently
navigated menu panel and to therefore automatically contract it in response
to another panel being navigated. Id. at pp. 5 and 21-22.
Appellants argue that Bowden teaches away from such automated
expansion/contraction of a menu panel, particularly because Bowden touts
an increased efficiency in maintaining expansion of the most popular menu
panels. Reply Br., pp. 4-5 (citing Bowden, col. 1, ll. 49-60; col. 2, ll. 64-67).
The argument is not persuasive for three reasons.
First, the argument addresses only an automated
expansion/contraction of Bowden’s cited embodiment. However, “[t]he test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference[.]” See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. Taken collectively, Bowden and Martyn
suggest that: (i) Bowden’s manual expansion/contraction is preferred when
screen space is plentiful, such as for the “workstation” display of Bowden’s
cited embodiment (Bowden, col. 5, ll. 16-28); and (ii) Martyn’s automated
expansion/contraction is preferred when screen space is highly limited, such
as for the small cellphone display of Martyn’s menu cited embodiment
(Martyn, ¶ 2). These mere preferences do not discredit an automated
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expansion/contraction of Bowden’s menu panels, much less an automated
expansion/contraction of menu panels generally as are encompassed by
claim 1. “A reference does not teach away … if it merely expresses a
general preference … but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.” See DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
((quotation marks and citation omitted)). Because neither Bowden nor
Martyn discredit or discourage automated expansion/contraction of menu
panels, Appellants’ argument (Reply Br., pp. 4-5) that Bowden teaches away
from automated expansion/contraction of a menu panel in not persuasive.
Second, whereas Bowden’s large workstation display accommodates a
manual expansion of multiple panels without any overlaying of (i.e.,
shuffling of an expanded panel over) neighboring panels (see Bowden’s
Figs. 3 and 4), it is self-evident that a smaller display might accommodate
only either a manual expansion of multiple panels with such overlaying or
an automated expansion of one panel without such overlaying as in the
claimed invention. Appellants’ argument fails to address Bowden and
Martyn in light of these self-evident considerations, which would of course
be understood by skilled artisans. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also id. (“Rigid preventative
rules that deny factfinders recourse to common sense, however, are neither
necessary under our case law nor consistent with it.”). In this light, we also
find Appellants’ teaching away argument unpersuasive, because a person of
ordinary skill in the art would understand that a smaller display might
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accommodate either a manual expansion of multiple panels with overlaying
or an automated expansion of a single panel without overlaying.
Third, even assuming arguendo the rejection rests on an automated
expansion/contraction of Bowden’s master menu, Bowden’s discussion of
the background art demonstrates that a similar (perhaps identical)
combination of features had already been practiced in the art. Bowden, col.
1, ll. 51-60 (“[T]he conventional menu system is designed to allow only a
single selection before reverting back to the initial state.”). In fact,
Appellants acknowledge as much when stating “Martyn describes a menu
system that includes the very inefficiency Bowden aims to eliminate.” App.
Br., p. 7 (emphasis added). It is axiomatic that reintroduction of an
eliminated feature – i.e., reintroduction of automated expansion to Bowden’s
teachings – is obvious unless somehow uniquely challenging. In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious composition does
not become patentable simply because it has been described as somewhat
inferior to some other product for the same use.”). And in the instant case,
Appellants have not made any argument or submitted any evidence to
demonstrate that the reintroduction of automated expansion into Bowden’s
teachings was uniquely challenging or otherwise nonobvious.
For the foregoing reasons, we sustain the obviousness rejections of:
claims 3-23, 33-38, and 45 over Bowden and Martyn; claims 24-32 and 39-
41 over Bowden, Martyn, and Os; and claims 42-44 over Bowden, Martyn,
and Schein.
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Claims 8-10
Claims 8-10 stand rejected as obvious over Bowden and Martyn.
Claim 10 depends from claim 9, which depends from claim 8, which
depends from claim 1. Claims 8-10 recite:
8. A graphical user interface according to claim 1,
wherein the first plurality of secondary menu items is context
sensitive.
9. A graphical user interface according to claim 8,
wherein the context sensitive first plurality of secondary menu
items is dependent on the status of a device incorporating the
user interface.
10. A graphical user interface according to claim 9,
wherein the status of the device includes at least one of the
availability of a network connection and the availability of a
peripheral.
Collectively, claims 8-10 require the secondary menu items to be: (i)
context-sensitive and (ii) dependent on the status of a network connection or
peripheral device. As explained for claim 1, the Examiner reads the claimed
secondary menu items on the tools of Bowden’s “shapes” menu panel
208/308. Ans., p. 4; see also supra, p. 4-5. As to claim requirement “(i),”
the Examiner finds the tools are context-sensitive by way of relating to the
category of their expanded panel, i.e., are shaping tools of the “shapes”
menu panel. Ans., p. 23. As to claim requirement “(ii),” the Examiner finds
the tools are dependent upon the peripheral device used to expand the menu
panel, e.g., presented only upon selection of the panel’s expansion icon 220.
Id.
Appellants argue that, “since the ‘tools’ of Bowden are always
displayed upon expansion of a menu panel regardless of the context, they are
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not [context] sensitive at all.” Reply Br., p. 7. And, Appellants further
argue that “Bowden fails to teach or suggest that the menu panels change in
relation to the status of the input device being used.” Id. These arguments
are not persuasive for each of two reasons.
First, the arguments rest on unsubstantiated claim restrictions as to the
terms “context sensitive” and “dependent,” merely alleging that these terms
require a change in the availabilities of the claimed secondary menu items
(and, by extension, require a change in the availabilities of Bowden’s tools).
Appellants do not explain why – and we likewise will not attempt to confirm
for Appellants – such a change in availability is required by the claims. See
Jung, 637 F.3d at 1363 (affirming in part because Appellant failed to
meaningfully explain “what gaps, in fact, exist between [the claimed
invention and the applied prior art] that needed filling by examiner
explanation”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant[.]”).
Second, even assuming arguendo the claims require a change in the
availabilities of the secondary menu items, Appellants’ argument merely
speculates that all of Bowden’s shape tools are invariably available upon
expansion of the menu panel.2 “[A]rgument in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation
omitted).

2 Software applications have long differentiated available and unavailable
menu items for users, e.g., dimmed or gray-scaled the unavailable options.
Thus, in addition to being speculative, Appellants’ argument contradicts
common experience.
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For the foregoing reasons, the obviousness rejection of claims 8-10
over Bowden and Martyn is sustained.
Claims 17-19
Claims 17-19 stand rejected as obvious over Bowden and Martyn.
Claim 19 depends from claim 18, which depends from claim 17, which
depends from claim 11, which depends from claim 1. Claims 11 and 17-19
recite:
11. A graphical user interface according to claim 1,
comprising a highlighting process for visually indicating the
successful navigation to at least one of a primary menu item
and a secondary menu item, wherein the processor is configured
to execute the highlighting process.
17. A graphical user interface according to claim 11,
comprising a double reveal process for displaying, within the
visual field of the first primary menu item, additional
information associated with a first of the plurality of secondary
menu items in response to the highlighting of the first of the
plurality of secondary menu items, wherein the processor is
configured for executing the double reveal process.
18. A graphical user interface according to claim 17,
wherein the secondary menu item includes an icon and said
additional information includes a text description of the
secondary menu item.
19. A graphical user interface according to claim 18,
wherein said additional information includes visual
representations of data associated with the highlighted
secondary menu item.
Collectively, claims 11 and 17-19 require: (i) highlighting a navigated
secondary menu item that includes an icon; and (ii) displaying, within the
visual field of the corresponding primary menu item, a textual description
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and visual representation of the secondary menu item. The Examiner reads
the claimed and primary and secondary menu items on the “file” and
“preference” menu items of Bowden’s Figure 10 below (annotations added).
Ans., pp. 9 and 22-23.

Bowden’s Figure 10, above (annotations added), illustrates red
and blue submenus that the Examiner proposes to incorporate
into Bowden’s master menu.
The Examiner particularly determined, in view of Bowden’s Figure
10, that it would have been obvious for Bowden’s master menu of Figures 3
and 4 (reproduced supra, p. 4) to substitute a menu options listing (red box)
and corresponding fly-outs (blue box) for the tools of the first expanded
menu panel 308 of Figure 4. Id.
Appellants argue:
Claims 17-19 relate to a double reveal process. The
double reveal process displays additional information
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associated with secondary menu items in response to the
highlighting of the secondary menu items. The additional
information is displayed within the visual field of the primary
menu item for which the secondary menu item is displayed.
For example, Appellants’ Fig. 4C, reproduced below, shows
that in response to highlighting secondary menu item 462d’, the
additional information ‘New Message’ is displayed within the
visual field of the primary menu item 460b”. In the Examiner’s
Answer, the Examiner states that the fly-out menu 508 of Fig.
10 of Bowden allegedly shows this subject matter (Examiner’s
Answer, pgs. 23-24). Appellants respectfully disagree. The
labels in Fig. 10 of Bowden (e.g., “Task Manager”, “Screen
Saver”, “Windows”, etc.) are merely labels for new menu
items. The fly-out menu 508 does not present any new
information associated with a secondary menu item. Moreover,
contrary to the Examiner’s assertion, the fly-out menu 508 is
not within the visual field of the primary menu item.
Reply Br., p. 6.
The argument is not persuasive. Appellants are again relying on
unsubstantiated claim restrictions. Particularly, Appellants are reading
illustrated features of the application’s Figure 4C (reproduced supra, p. 4)
into the claims, merely alleging in view of the figure that the claimed “visual
field” and “additional information” (textual description and visual
representation of claim requirement “(ii)”) of the secondary menu item
cannot be a menu fly-out. “[A]bsent a clear disclaimer in the specification,
the embodiments in the specification do not limit broader claim language.”
See Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1336 (Fed.
Cir. 2005). No such disclaimer has been presented. Accordingly, turning to
Bowden’s Figure 10, we find no error in the Examiner’s implicit findings
that: fly-outs of a menu options listing (red box) increase the visual field of
the listing’s primary menu item (“file” item); and a given fly-out (blue box)
provides additional information on the corresponding secondary menu item
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(“preferences”), namely insofar that the fly-out’s menu item buttons provide
a textual description and visual representation of the types and number of
available options for the secondary menu item.3
For the foregoing reasons, we sustain the obviousness rejection of
claims 17-19 over Bowden and Martyn.
Claims 46 and 47
Claims 46 and 47 stand rejected as obvious over Bowden and Martyn.
Claim 47 depends from claim 46. Claims 46 and 47 recite:
46. A graphical user interface for use in a data
processing system comprising:
a menu system for providing a first plurality of primary menu
items to a display, each of the primary menu items having a
visual field;

3 Appellants argue that the fly-out’s menu item buttons do not provide
additional information associated with the “preference” menu item
(secondary menu item), not that the buttons fail to provide textual and visual
representations of the “preference” menu item (see block quote, supra, pp.
11-12). Thus, though the claimed additional information’s association with
the secondary menu item is at issue, the claimed additional information’s
composition of textual and visual representations for the secondary menu
item is not at issue. However, we note that this composition constitutes
mere informational content of the claimed Graphically-oriented User
Interfaces (GUI) and, accordingly, is not entitled to patentable weight under
35 U.S.C. §§ 102 and 103. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
1994); see also Ex parte Mathias, 84 U.S.P.Q.2d 1276, 1279 (BPAI 2005)
(informative) (listing “common situations involving nonfunctional
descriptive material” as including “a computer that differs from the prior art
solely with respect to nonfunctional descriptive material that cannot alter
how the machine functions”) aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006).
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a navigation module for enabling a user to navigate the
menu system; and
a reveal process for, in response to a navigation to the
first primary menu item, displaying within the visual field of a
first primary menu item i) a first plurality of secondary menu
items associated with the first primary menu item, and ii) a
visual representation of data associated with the first primary
menu item, while continuing to display a remainder of the first
plurality of primary menu items; and
a processor configured for executing the menu system,
the navigation module, and the reveal process.
47. The graphical user interface of claim 46, wherein
the first primary menu item comprises a message and the
associated data comprises at least a portion of the message.
Collectively, claims 46 and 47 require associated data of a primary
menu item to be visually represented and comprise a message. The
Examiner rejects claims 46 and 47 “based upon the same reasoning used to
reject claims 20 and 45.” Ans., p. 13. Thus, the Examiner reads the claimed
primary menu item on the first expanded menu panel 308 of Bowden’s
Figure 4 “master menu.” See supra, p. 4 (discussing the rejection of claim 1
and reproducing Bowden’s master menu).
With respect to the above claim requirement, Appellants argue:
[A]s described by Bowden, menu panel 308 of Fig. 4 provides a
palette of shapes and other options available to a user which a
user can select as ‘tools’ (Bowden, col. 5, line 60 – col. 6, line
17). These ‘tools’ are merely specific applications to be
selected by a user and not visual representations of data
associated with the primary menu item.
Reply Br., pp. 7-8 (Appellants’ emphasis). The argument is not persuasive
for each of two reasons.
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First, Appellants are again relying on unsubstantiated claim
restrictions, merely alleging that the claimed “visual representation of data
associated with the first primary menu item” cannot encompass the tools of
Bowden’s expanded menu panel 308. As explained above, Appellants must
meaningfully explain the asserted differences between the claimed invention
and the applied prior art. See supra, p. 8 (citing Jung, 637 F.3d at 1363;
Baxter, 952 F.2d at 391). It is insufficient to merely highlight the term
“data” within the claim language (see above block quote) and leave the
question of how this subject matter distinguishes over Bowden’s cited
teachings to speculation.
Second, assuming Appellants contend the shape tools of Bowden’s
expanded menu panel 308 lack data that is visually represented and
comprises a message (as required of the claimed “associated data”), the
visual representations and message constitute mere informational content of
the claimed GUI that is not entitled to patentable weight. Cf., fn. 3 (citing
Lowry, 32 F.3d at 1583; Mathias, 84 U.S.P.Q.2d at 1279). Further, even if
the visual representations and message limitations were entitled to patentable
weight, these features would be nonetheless taught insofar that the “filled
antialies” item of Bowden’s cited menu panel 208/308 (Fig. 4) is a check
box that visually represents stored data (yes/no) and includes a message (yes
or no).
For the foregoing reasons, we sustain the obviousness rejection of
claims 46 and 47 over Bowden and Martyn.
ORDER
The Examiner’s decision rejecting claims claims 1 and 3-47 is
affirmed.
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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).
AFFIRMED

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