Ex Parte Batalden et al

Board of Patent Appeals and Interferences

Mar 30, 2009

10020026 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLENN DARRELL BATALDEN, KEITH EVANS BRIGHT,
and MARK EARL PLUNKETT
____________

Appeal 2008-2289
Application 10/020,026
Technology Center 2100
____________

Decided:1 March 30, 2009
____________

Before JAMES D. THOMAS, JAY P. LUCAS,
and CAROLYN D. THOMAS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
Appeal 2008-2289
Application 10/020,026

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 4, 7, 9 through 15, 17, 20 through 26, 28, and
30 through 36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm
Invention
A controlling browser window is configured to control aspects of a
controlled browser window. Event handlers within the software
implementing the controlling browser window produce a predetermined
result in response to events occurring with respect to user actions in the
controlled browser window. These event handlers may override a
predetermined response to cause a response different from the predetermined
response. (Claim 1, Abstract 23).
Representative Claim
1. A method for controlling a viewable browser window, comprising:

opening a controlling browser window configured to control aspects
of controlled browser window, wherein the controlling browser window
establishes at least one event handler prior to opening the controlled browser
window; and

opening the controlled browser window, wherein the controlled
browser window includes a display area for rendering viewable content
received from network locations, and wherein the controlling browser
window controls at least one functional aspect of the controlled browser
window during a browsing session engaged in by a user;

receiving user input to which the controlled browser window is
configured to produce a predetermined response; and

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overriding the predetermined response by executing an action
specified by the at least one event handler to cause a response different from
the predetermined response.

Prior Art and Examiner’s Rejections
The Examiner relies upon the following references as evidence of
unpatentability:
Hodgkinson US 2002/0016802 Feb. 7, 2002
(Filing date Aug. 1, 2001)
Yen US 2002/0054141 A1 May 9, 2002
(Filing date Jul. 20, 2001)
Netscape® Communicator 4.75, copyright 2000 (Select screenshots
1-5).

All claims on appeal, claims 1 through 4, 7, 9 through 15, 17, 20
through 26, 28, and 30 through 36 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness as to claims 1, 2, 4, 7, 12 through 15, 20, 25, 26,
28, 32 through 34, and 36, the Examiner relies upon Yen in view of
Hodgkinson. In a second stated rejection, the Examiner relies upon this
combination of references, further in view of Netscape, as to claims 3, 9
through 11, 17, 21 through 24, 30, 31, and 35.2
Claim Groupings
Based upon Appellants’ arguments at page 14 of the Brief, claim 1 is
considered to be representative of independent claims 1, 14, 25, and 34. We
will likewise consider claim 1 representative. Separate arguments are

2 At pages 2-3 of the Answer, the Examiner has withdrawn a rejection under
the first paragraph of 35 U.S.C. § 112 of certain claims.
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presented beginning at page 17 of the principal Brief as to claim 3, which is
considered representative of all claims within the second stated rejection.
ISSUES
1. Have Appellants shown that the Examiner erred in finding that the
feature of representative independent claim 1 on appeal of receiving user
input to which a controlled browser window is configured to produce a
predetermined response is taught among Yeh and Hodgkinson?
2. Have Appellants shown that the Examiner erred in finding that this
combination of references teaches the feature of representative independent
claim 1 of overriding the predetermined response by executing an action
specified by at least one event handler to cause a response different from the
predetermined response?
3. Have Appellants shown that the Examiner erred in finding that the
applied prior art to Yen, Hodgkinson, and Netscape collectively teach the
feature of dependent claim 3 of the controlling browser window further
controlling a graphical aspect of a controlled browser including at least one
chrome element displayed by a graphical user interface displayed by the
opened controlled browser window?
FINDINGS OF FACT
1. Specification pages 1 and 2 in paragraphs [0003-0005] and figure 1
teach and illustrate prior art features with respect to browsers and browser
windows. Well known browsers are noted in paragraph [0003] to include
features relating to graphical aspects or imaging. In paragraph [0004]
various illustrated features of prior art figure 1 including a title bar 102, a
menu bar 104, a navigation tool bar 106, an address field 108, a personal
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tool bar 110 and a viewing area 112 were known in the art to be
customizable by users such as to permit them to generally add or remove
various buttons from the navigation bar 106, for example. Significantly,
paragraph [0005] teaches that users were capable of configuring the
browser’s operations themselves such as to permit, for example, a user to
elect to disable or enable a browser’s ability to render Java content. (These
are believed to be consistent with the disclosed ability to control the
operation of a browser by so-called event handlers.)

2. Yen’s prior art figure 2 is discussed at page 1, paragraph [0007]:
FIG. 2 is a schematic view, wherein a prior art computer system 12
automatically arranges all window displays to be viewed
simultaneously by executing the option “arrange all” from the
application program menu. For example, in the application program
Acrobat Reader (a processor for PostScript/PDF files), users open
multiple window displays to display different files. Users view
multiple window displays simultaneously by selecting the option
“Tile” (both horizontal and vertical tile viewing mode are available).

Thus, the artisan would well appreciate that utilizing the so-called “Tile”
capability permits the use of a controlling window to control the display or
rendering of a controlled window.

3. With respect to Yen’s figures 3 and 4, the following portions of pages
2 and 3 are reproduced here:
[0026] FIG. 3 is a schematic view of the present invention where a
computer system 20 displays multiple window displays 30. The
computer system 20 is used for executing an application program 22.
The computer system 20 comprises a display screen 24 and input
device 26, 28. The input device 26 is a keyboard and the input device
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28 is a mouse. When the computer system 20 executes application
program 22, the application program 22 generates a graphical user
interface display 31 on display screen 24. The graphical user
interface display 31 comprises a predetermined amount of window
displays 30a-i (In the preferred embodiment of the invention, the
predetermined amount of window displays are nine), and a plurality of
function buttons 33. The function button 33 comprises a close
function button 33a, a minimize function button 33b, a maximize
function button 33c, and a restore function button 33d respectively.
Each window display 30 comprises a display area 38 and a plurality of
application program function buttons 32.

[0027] The application program 22 comprises a plurality of window
components 34. Each window component 34 corresponds to a
window display 30. Each window component 34 comprises a address
parameter 36 for labeling the storage address of the displayed data in
the display area 38 of the window display 30 corresponding to the
window component 34, a display parameter 40 for labeling display
status of the window display 30 corresponding to the window
component 34, and a identity parameter 42 for labeling the display
status of the window display 30 corresponding to the window
component 34. When the display parameter 40 is set as visible, the
application program 22 displays the window display 30 corresponding
to the window component 34, and when the display parameter is set as
invisible, the application program does not display the window
display 30 corresponding to the window component 34.

[0029] The window displays 30 on the graphical user interface 31 are
linked in an array based on the order of the identity parameters 42 of
the window components 34. The window component 34 with a
relatively lower identity parameter 42 subordinates to window
component 34 with a relatively higher identity parameter 42. When a
display parameter 40 of a window component 34 is set as invisible,
the display parameter 40 of the next window component 34 in the
array correspondingly and automatically set as invisible. In FIG. 3,
window display 30a-i are linked in an array based on the order of the
identity parameters 42 of the window components 34. The array
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follows a top-down and left to right order. For example, the window
display 30b is subordinate to the window display 30a and the window
display 30c is subordinate to the window display 30b respectively.

[0030] FIG. 3 illustrates the window display 30g-i (indicated as a
dotted line), wherein the display parameter 40 is set as invisible. As
a result, the application program 22 displays the window display
30a-f and does not display the window display 30g-l.

[0031] FIG. 4a-c are schematic views illustrating steps wherein the
application program generates window displays 30a-c. When a user
first launches the application program 22 in a computer system 20,
the application program 22 generates the graphical user interface
display 31 on the display screen 24. Concurrently, the application
program 22 displays the window display 30a on the graphical user
interface display 31. At the same time, only the display parameter
40 of the window display 30a is set as visible, the remaining other
display parameters 40 are set as invisible. As a result, the
application program 22 only displays window display 30a in
response to set up of the display parameter. On the window display
30a, there are also a close function button 33a, a minimize function
button 33b, and a extend function button 33c displayed on the
window display 30a.

[0032] When a user selects the extended function button 33c with a
mouse 28, the application program 22 displays window display 30b,
shifts the extend function button 33c the window display 30b and
displays folding function button 33d on the window 30b. As shown
in the FIG. 3, the window display 30b lies next to the window
display 30a and the window display 30b is subordinate to the
window display 30a.

[0033] When a user selects the extend function button 33c, the set up
of the display parameter 40 of the window display 30b is alternated
from invisible to visible. As a result, the application program 22
displays the window display 30b.

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4. From these extensive teachings and the showings in figures 3 and 4
just mentioned, the artisan would generalize that each subwindow comprises
a controlled window that in turn functions as a controlling window for
purposes of still further yielding other subsequent to be opened controlled
windows. Based on these teachings, we therefore agree with the Examiner’s
statements in the Responsive Argument portion of the Answer at page 12,
“[t]herefore, Yen teaches that the controlling browser window (i.e. the first
main window) controls functional aspects (such as the position and the
visibility of) the controlled browser windows (i.e. the first sub-window and
the second main window, etc.), as recited by the present claims.” The
Examiner’s assessment at page 12 of the Answer of Yen is not contested by
Appellants in the Reply Brief.

5. Hodgkinson’s figures 1 through 3 show a prior art rendering of
browser retrieved web pages, where figures 4 and 5 illustrate the technique
of his contribution in the art. The Abstract also teaches:
The invention relates to the generation of user selected pages from an
internet site and the delay in the reformatting of the same following a
user selection of a new data event i.e. the selection of a new page
which is to be displayed. In accordance with the invention, upon a
user selection, reformatting of the page is delayed either for a
predesignated time interval from the previous page reformatting or
until all or predefined amount of the data for the new page has been
received. This allows the processor to be controlled hence preventing
delays and/or errors in navigational functions and also can reduce the
generation of “flicker” on the on-screen display.

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Additionally, the teachings at page 2, paragraphs [0015-0016] are noted:
[0015] In accordance with a further aspect of the invention there is
provided a management system for the operation of an on screen page
display which is generated from a user selected internet site, said
system including a deferring system which prevents the web browser
from reformatting pages during the reception of data each time the
display page layout needs to change in response to a user selection
characterized in that the web browser reformats at no more often than
a predesignated time interval or when a predetermined amount of the
data for the new page has been received.

[0016] In one embodiment when a new data event occurs that would
normally cause a immediate page reformat, the browser takes note of
the highest point in the page that would be affected and starts a time
and no reformat occurs until a predesignated time elapses. Typically
the reformat is delayed for the duration of a predesignate time period
from the occurrence of a user selection. In addition or alternatively
the reformat is delayed until all data for the entire page is received.

6. As reproduced in Finding of Fact 5, the last portion of the Abstract
presents to the reader an advantage over the prior art approaches to
rendering retrieved web pages by a local browser.
Additionally, paragraph [0027] from page 2 is also reproduced here:
[0027] This invention solves problems associated with these two
reasons. Repeated reformatting, particularly if data is arriving in
many small groups punctuated by short delays, can lead to a lot of
flickering of the page display on screen, especially as the web browser
function when provided as part of a BDR device, typically has
insufficient Ram and/or processor power to implement a storage
system where all the data for the page is stored in memory and then
displayed. Thus, the occurrence of many reformats, typically for
relatively trivial data changes can only be conventionally dealt with
by the provision of relatively expensive high capacity memory.

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With respect to the showings in Hodgkinson’s figures 4 and 5, it further is
stated in part in paragraph [0043] at page 3 of Hodgkinson that “[t]hus it will
be appreciated that this single reformat at the time interval changes the
appearance of the display to a significantly greater amount than is the case
with each reformat in the conventional method.”
Still further, paragraph [0044] states:
[0044] Reformats occur less often and encompass more changes
using a the invention in comparison with the conventional method
over a traditional model. Consequently, deferred reformatting can
prove sufficiently beneficial that in embedded devices it becomes
possible to select a lower power processor than would otherwise be
required, reducing the cost of the hardware. The user of the device
sees less flicker and smoother highlight-based navigation during page
fetches, making the device more appealing to consumers.

7. With respect to the teachings of Netscape, we reproduce a portion of
the Examiner’s Responsive Arguments at pages 15 and 16 of the Answer:
Therefore, a teaching in which a controlling browser window controls
the browser chrome element displayed by the GUI of an opened
controlled browser window at least once teaches the recited claim
limitations. Netscape teaches that when a user selects a link in a first
browser window, a second browser window is opened (Screenshots 2-
4). The second browser window is opened from the first browser
window with a portion of the browser chrome, i.e. the back and
forward buttons displayed in a manner that is different than the
normal appearance of the buttons, i.e. the buttons are grayed out and
deactivated in the sense that the user cannot select the back and
forward buttons on the second opened browser window (Screenshots
2-4). Therefore, even assuming that the first browser window does
not control any aspects of the second browser window from this point
on, i.e. after first opening the second browser window, the first
browser window controls the graphical or visual aspect of the second
browser window at least once, namely when the first browser window
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first opens the second browser window with graphical buttons grayed
out. The applicant argues that the buttons are not deactivated, nor has
the functional operations of these buttons been modified in any way,
but rather that the buttons appear grayed out because there are no
“forward” or “back” browsed pages to access. The examiner
respectfully disagrees. When the second browser window is opened
form the first browser window, it is displayed with the “forward” and
“back” buttons grayed out; therefore, the visual appearance of the
second browser window is displayed from the first browser window
with the buttons deactivated, i.e. not selectable by the user. Since the
second browser window was opened from the first browser window,
the first browser window controlled the opening of the second
browser window and since the second browser window was opened
from the first browser window with a part of the browser chrome
visually displayed in a grayed out manner, the first browser window
controlled the visual aspect of the second browser window when it
was opened.

PRINCIPLES OF LAW

"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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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., 127 S. Ct. 1727, 1734 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 1740.
We must determine whether or not 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.
See KSR, 127 S. Ct. at 1734. Obviousness determination is not the result of
a rigid formula, and we will consider the facts of a case and the common
sense of those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is
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rather what the combined teachings of the references would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
ANAYLSIS
Finding of Fact 1 indicates that it was known in that art that users may
not only customize various viewing bars on a browser-retrieved web page by
adding or deleting buttons from them, but also the ability to configure the
operation of a browser itself to selectively enable or disable a browser’s
ability to perform certain functions, such as, rendering or otherwise
displaying or not Java content. Finding of Fact 2 reveals that it was also
known in the art for a user to utilize a controlling window to exercise control
by a user over a controlled window. The lengthy recitations in Finding of
Fact 3 justify our and the Examiner’s separate conclusions that the teachings
of the various features in Yen itself illustrate that it was known in the art for
a controlled window to become a controlling window for subsequently
displayed windows.
Appellants’ admitted prior art in Finding of Fact 1 as well as those set
forth in the quoted material in Finding of Fact 3 from Yen justify the
Examiner’s conclusion that Yen teaches event handlers that cause responses
upon user input. On the other hand, they also justify the conclusion that user
input may be used in such a manner to control a browser window to produce
a predetermined response, contrary to the Examiner’s views as a part of the
reasoning of the combinability of Yen and Hodgkinson, such as that
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expressed at the bottom of page 4 of the Answer. Conventionally in the art,
a user provides an input such as the actuation of a given button to produce a
predetermined response (issue 1) of a desired display, for example.
On the other hand, we agree with the Examiner’s views that Yen fails
to teach the overriding capability required by the second issue before us such
as to produce a different predetermined response. For example, Yen’s
paragraph [0026] at page 2 that we noted in Finding of Fact 3 indicates that
there are a predetermined number of windowed displays that are arranged
within a certain tile-like arrangement with no specific teaching in the
following paragraphs other than figure 3 to indicate that a different response
other than a predetermined response is contemplated within Yen. However,
it is to be noted that the fact that this is taught to be predetermined would
have indicated to the artisan that in some manner a determination was made
as to the specific number and/or arrangement of separate window displays
such as those in Yen’s figure 3. As noted in Finding of Fact 4, the Reply
Brief does not challenge the Examiner’s final view with respect to Yen as
expressed in the responsive arguments portion of the Answer.
The Examiner properly relies upon teaching value of Hodgkinson to
modify the browser-based teachings of Yen with a corresponding browser-
based modification in Hodgkinson. Finding of Fact 5 plainly indicates to the
artisan that this reference teaches the ability of his “system” to modify a
predetermined result such as the manner in which the retrieved web page
and/or user selection of a given web site and the display of any of a plurality
of pages from a given web site are essentially overridden, as claimed, by a
new and different response. Contrary to the view expressed at page 16 of
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the principal Brief, deferring the reformatting of a web page as it is being
downloaded does disclose a broadly recited feature of receiving user input
and overriding a predetermined response. The artisan would understand that
the broadly recited predetermined response, and the teachings in
Hodgkinson to change such a predetermined response by delaying according
to a time interval or until all of a certain predefined amount of data has
arrived from a given web site for display on a client machine by its browser,
alters/overrides the normal expected, predetermined, conventional response
(issue 2). Moreover, Finding of Fact 5 clearly teaches that it is the system
within Hodgkinson’s modified browser that performs this functionality.
Appellants’ corresponding remarks at pages 2 and 3 of the Reply Brief are
equally unpersuasive.
We would tend to agree with Appellants’ arguments in the paragraph
bridging pages 16 and 17 of the principal Brief that the Examiner’s proffered
motivation to combine Yen and Hodgkinson (to provide a management
system that keeps user from conducting harmful or unauthorized action on
data, maintaining data integrity and security) is fundamentally flawed since
the material relied upon does not support the Examiner’s conclusion. On the
other hand, there is ample evidence of the combinability within 35 U.S.C. §
103 and the above-noted case law to support the Examiner’s conclusion of
combinability as set forth in Finding of Fact 6. As the Examiner has
properly noted at the bottom of page 14 of the Answer, Hodgkinson
explicitly provides sufficient motivation for the combination of
Hodgkinson’s teachings to modify those of Yen.
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Turning to the subject matter of dependent claim 3 relating to
controlling a graphical aspect of a browser in such a manner as to control at
least one browser chrome element displayed in an opened controlled
browser window, the extensive teachings of the ability of graphical
interfaces among Yen, Hodgkinson, and Netscape buttress what the artisan
already knows from Appellants’ discussion of known browsers as reflected
from Finding of Fact 1. The Examiner’s reasoning with respect to Netscape
in Finding of Fact 7 is consistent with the Examiner’s basic position with
respect to Yen, that essentially an open window becomes a controlling
window for a subsequently opened controlled window. Netscape’s
screenshot 4 clearly demonstrate that the so-called “back” and “forward”
buttons are deactivated functionally by the user’s actuation of the
functionality available and displayed to the user in the first opened window.
Appellants’ positions at pages 4 and 5 of the Reply Brief are unpersuasive
even though it is noted and recognized that these buttons are “grayed out”
since there may be no forward or backward browser pages to access. The
fact that this may be the case for a given web site or access does not detract
from the fact that the graphical aspect in the chrome element has been
altered by the actuation of the opened window functioning as a controlling
window. The generalized teachings still selectively apply to plural browser
pages. Screenshot 5 also illustrates that certain functional buttons in the bar
at the top of the page have been eliminated from a user’s ability to utilize
them much like Appellants’ own disclosed approach in figure 3, which
removes certain chrome elements.

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CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred that the feature of
representative independent claim 1 on appeal of receiving user input in a
controlled browser window produces a predetermined response and the
separate feature of overriding this predetermined response with a different
response. Thus, no error has been persuasively shown to exist with respect
to issues 1 and 2. Correspondingly, the feature of controlling a graphical
aspect of a browser chrome element in representative dependent claim 3, in
issue 3, was not shown by Appellants to be an erroneous conclusion of the
Examiner.
DECISION
The Examiner’s two-stated rejections of all claims on appeal under
35 U.S.C. § 103 are affirmed. All claims on appeal are unpatentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

pgc

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
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