Ex parte Bates et al.

Board of Patent Appeals and Interferences

Jun 12, 2000

08357678 (B.P.A.I. Jun. 12, 2000)

The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CARY L. BATES
and EDWIN E. BURRIS
____________
Appeal No. 1998-1388
Application No. 08/357,678
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1, 2, 4-8, and 10-22. We
reverse.
BACKGROUND
A graphical user interface creates a window on the
display screen of a computer each time a computer program is
started. A user interacts with the program through its
Appeal No. 1998-1388 Page 2
Application No. 08/357,678
associated window. When the computer allows the user to run
several programs simultaneously, he has access to several
windows simultaneously.
Simultaneous access can require the user to manipulate the
windows to access the different programs. Such manipulation
includes moving a window about the screen, changing the size
of a window, and minimizing a window into an icon.
The user typically manipulates a window by using a cursor
associated with a mouse to perform a "drag and drop"
operation. When the user wants to move a window, for example,
he moves the cursor to the window, depresses a button on the
mouse, "drags" the window to a location by moving the cursor
thereto, and "drops" the window by releasing the button. When
the user wants to resize a window, for another example, he
moves the cursor to an edge of the window, depresses the
button, moves the cursor to a position that approximates the
desired size of the window, and releases the button. Repeated
performance of the move and resize operations requires the
user to repeat mechanical muscle movement throughout the day.
Such repeated movements can produce carpal tunnel syndrome.
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Application No. 08/357,678
The invention at issue in this appeal enables a user to
move or resize a window without having to depress a button on
a mouse.
Specifically, a display screen features specialized regions
called “object handles.” Associated with each object handle
are a geometric shape and an object handle type. The
geometric shape of the object handle identifies its bounds;
the shape is designed so that the user is unlikely to cause a
cursor to enter the associated object handle region by
mistake. The object handle type identifies the manipulation
enabled by the handle.
To manipulate a window according to the invention, a user
employs a mouse to move the cursor into the object handle
region of a handle corresponding to the desired manipulation.
To move a window, for example, the user moves the cursor into
an object handle region corresponding to a window move
operation. The user then moves the window by causing the
cursor to move to another location on the display screen.
Once the window has been moved, the user moves the cursor out
of the object handle region identified by the object handle.
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Application No. 08/357,678
Claim 13, which is representative for our purposes,
follows:
13. A computer-implemented method for manipulating
viewable objects on a display screen of a computer apparatus,
said method comprising the step of:
moving a position identifier via a specialized path into
a specialized region on said display screen, said specialized
region being associated with at least one of said viewable
objects, said specialized path being contained within said
specialized region.
The references relied on in rejecting the claims follow:
Kerr et al. (Kerr) 5,227,771 Jul. 13, 1993
Goldman et al. (Goldman) 5,485,569 Jan. 16, 1996
(filing May 4,
1994).
Claims 1, 2, 5, 7, 8, 11, 13, 14, 16, 18, 19, and 21
stand rejected under 35 U.S.C. § 102(e) as anticipated by
Goldman. Claims 4, 6, 10, 12, 15, 17, 20, and 22 stand
rejected under
35 U.S.C. § 103 as obvious over Goldman in view of Kerr.
Rather than repeat the arguments of the appellants or examiner
in toto, we refer the reader to the brief and answer for the
respective details thereof.
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Application No. 08/357,678
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejections advanced by
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellants and examiner. After
considering the totality of the record, we are persuaded that
the examiner erred in rejecting claims 1, 2, 4-8, and 10-22.
We begin by noting the following principles from Rowe v.
Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir.
1997).
A prior art reference anticipates a claim only if
the reference discloses, either expressly or
inherently, every limitation of the claim. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
"[A]bsence from the reference of any claimed element
negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84
(Fed. Cir. 1986)).
We also note the following principles from In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
In rejecting claims under 35 U.S.C. § 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
Appeal No. 1998-1388 Page 6
Application No. 08/357,678
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these principles in mind, we address the appellants’
argument and the examiner’s reply.
The appellants argue, “the Goldman reference does not
disclose a specialized path. While the Kerr mechanism is an
important addition to the art, it similarly does not teach,
disclose, or suggest of a specialized path.” (Appeal Br. at
6.) The examiner’s reply follows.
Goldman teaches at col. 5, lines 51 - 55, that "an
event may occur when the cursor enters a predefined
region or when the cursor exits from a predefined
region". Goldman teaches a specialized path because
in order for an event to occur, the cursor must
cross the boundary between the predefined region and
the area outside of the predefined region. The
specialized path of Goldman involves crossing the
outside of/inside of predefined region boundary.
(Examiner’s Answer at 6.)
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Application No. 08/357,678
“[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
each claim defines is patentable. [T]he name of the game is
the claim ....’” In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich,
The Extent of the Protection and Interpretation of Claims
--American Perspectives, 21 Int'l Rev. Indus. Prop. &
Copyright L. 497, 499, 501 (1990)). Here, claims 1, 2, and 4-
12 each specify in pertinent part the following limitations:
an input mechanism for moving a position
identifier, said input mechanism being capable of
generating cursor events;
...
a Viewable Object Processor that allows a user
to manipulate said at least one viewable object by
using only said cursor events, said cursor events
being generated when said position identifier is
moved into a specialized region via a specialized
path.
Similarly, claims 13-17 each specify in pertinent part the
following limitations: “moving a position identifier via a
specialized path into a specialized region on said display
screen, said specialized region being associated with at least
one of said viewable objects ....” Also similarly, claims 18-
22 each specify in pertinent part the following limitations:
Appeal No. 1998-1388 Page 8
Application No. 08/357,678
“a Viewable Object Processor that allows a user to manipulate
a viewable object by using only cursor events, said cursor
events being generated when a position identifier is moved
into a specialized region via a specialized path ....” In
short, the claims each recite moving a position identifier
into a specialized region on a display screen via a
specialized path.
The examiner fails to show a suggestion of the claimed
limitations in the prior art. “The Patent Office has the
initial duty of supplying the factual basis for its rejection.
It may not ... resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual
basis.”
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967).
It is true that the passage of Goldman relied on by the
examiner teaches moving a position identifier into a
specialized region on a display screen. Specifically, “an
event may occur when the cursor enters a predefined region
Appeal No. 1998-1388 Page 9
Application No. 08/357,678
....” Col. 5, ll. 53-54. The passage fails to teach,
however, a specialized path for any purpose, let alone one for
moving a position identifier into a specialized region. To
the contrary, it appears that the reference’s cursor may be
moved into its predefined region by any path with the same
effect. The examiner’s assertion that “[t]he specialized path
of Goldman involves crossing the outside of/inside of
predefined region boundary,” (Examiner’s Answer at 6),
supports such an interpretation of the reference.
In view of this interpretation, we are not persuaded that
Goldman teaches the claimed limitations of moving a position
identifier into a specialized region on a display screen via a
specialized path. The absence of this teaching negates
anticipation. The examiner also fails to allege, let alone
show, that Kerr remedies the defects of Goldman. In view of
these failures, we are also not persuaded that teachings from
the prior art would appear to have suggested the same claimed
limitations. Therefore, we reverse the rejection of claims 1,
2, 5, 7, 8, 11, 13, 14, 16, 18, 19, and 21 as anticipated by
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Application No. 08/357,678
Goldman and the rejection of claims 4, 6, 10, 12, 15, 17, 20,
and 22 as obvious over Goldman in view of Kerr.
CONCLUSION
To summarize, the rejection of claims 1, 2, 5, 7, 8, 11,
13, 14, 16, 18, 19, and 21 under 35 U.S.C. § 102(e) as
anticipated by Goldman is reversed. Furthermore, the
rejection of claims 4, 6, 10, 12, 15, 17, 20, and 22 under 35
U.S.C. § 103 as obvious over Goldman in view of Kerr is also
reversed.

REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Appeal No. 1998-1388 Page 11
Application No. 08/357,678
Administrative Patent Judge )
LLB/kis
Steven W. Roth
IBM CORPORATION
Dept. 917
3605 Highway 52 N
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