Ex Parte Bates et al

Board of Patent Appeals and Interferences

Jan 29, 2004

09329135 (B.P.A.I. Jan. 29, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CARY LEE BATES and PAUL REUBEN DAY
____________
Appeal No. 2002-2053
Application No. 09/329,135
____________
ON BRIEF
____________
Before THOMAS, BARRY, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1, 2, 8, 9, 11, 19, 21, 22,
28, 29, 31, 36, 38-41, 47-50, 52, and 60. Claims 3-7, 10, 12-18,
20, 23-27, 30, 32-35, 37, 42-46, 51, 53-59, and 61 have been
indicated as allowable if rewritten in independent form (final
rejection, page 5).

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Application No. 09/329,135
Page 2
BACKGROUND
Appellants' invention relates to an automatic color contrast
adjuster. An understanding of the invention can be derived from
a reading of exemplary claim 21, which is reproduced as follows:
21. A method for improving color contrast between computer
displayed text objects and background objects, the method
comprising the steps of:
determining if a current color combination for at least one
text object and a background object is a problem color;
selecting one of a plurality of color combinations for at
least one text object and a background object based on the
current color combination, if the current color combination is a
problem color; and
applying the selected color combination to the at least one
text object and the background object.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Cowart, “Mastering Windows 3.1 Special Edition” (Mastering
Windows), Sybex, p. 154-157, 1993
Kirkner, “Running A Perfect Netscape Site” (Netscape), Que,
p. 400-405, 1996
Claims 1, 2, 8, 21, 22, 28, 38-41, and 47 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Mastering
Windows.
Claims 9, 11, 19, 29, 31, 36, 48-52, and 60 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Netscape.
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Application No. 09/329,135
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Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellants regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 12, mailed
April 26, 2002) and the final rejection (Paper No. 7, mailed
September 20, 2001) for the examiner's complete reasoning in
support of the rejections, and to appellants' brief (Paper No.
11, filed March 18, 2002) for appellants' arguments thereagainst.
Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been
considered. See 37 CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of anticipation relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the brief along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
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Application No. 09/329,135
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1 The rejections set forth in the final rejection have been incorporated
into the examiner's answer (answer, page 3).
Upon consideration of the record before us, we affirm-in-
part. Appellants (brief, page 3) lists independent claim 21 as
representative of the claims rejected under 35 U.S.C. § 102(b) as
anticipated by Mastering Windows. Appellants (brief, pages 3 and
4) additionally list independent claim 29 as representative of
the claims rejected under 35 U.S.C. § 103(a) as anticipated by
Netscape. Consistent with these representations, appellants only
argue the limitations of independent claims 21 and 29.
Accordingly, we select claims 21 and 29 as being representative
of the rejected claims. We begin with the rejection of claims 1,
2, 8, 21, 22,28, 38-41, and 47 under 35 U.S.C. § 102(b) as being
anticipated by Mastering Windows. We turn to independent claim
21.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). The examiner's position is set
forth, in detail, on pages 2 and 3 of the final rejection1.
Appellants' position (brief, page 4) is that Mastering Windows
does not disclose a mechanism that “1) determines whether a
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Application No. 09/329,135
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particular color combination is problematic for a particular text
object and background, 2) selects an alternate color combination
based on the current color combination, and 3) applies the
selected color combination to the particular text object and
background.” It is argued that instead, Mastering Windows
describes a settings page that informs a user as to a current
color combination and a series of alternate combinations, with
which a user can change a current color combination to an
alternate combination. It is further argued (id.) that Mastering
Windows does not anticipate the claims of Group I because the
reference simply does not describe, in any way, “1) problem
colors, 2) how problem colors are determined, and 3) how
alternate color combinations can be selected based upon the
current/problem combination.”
Before addressing the examiner's rejections based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. Analysis of whether a claim is
patentable over the prior art begins with a determination of the
scope of the claim. The properly interpreted claim must then be
compared with the prior art. Claim interpretation must begin
with the language of the claim itself. See Smithkline
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Application No. 09/329,135
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Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878,
882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Before turning to the proper construction of the claim, it
is important to review some basic principles of claim
construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock
Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of
letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the specification.");
Autogiro Co. of Am. v. United States, 384 F.2d 391, 396, 155 USPQ
697, 701 (Ct. Cl. 1967) ("Courts can neither broaden nor narrow
the claims to give the patentee something different than what he
has set forth [in the claim]."). See also Continental Paper Bag
Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti
Unhairing Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary and
accustomed meaning, unless it appears that the inventor used them
differently." Envirotech Corp. v. Al George, Inc., 730 F.2d 753,
759, 221 USPQ 473, 477 (Fed. Cir. 1984). Second, it is equally
"fundamental that claims are to be construed in the light of the
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Application No. 09/329,135
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specification and both are to be read with a view to ascertaining
the invention." United States v. Adams, 383 U.S. 39, 49, 148
USPQ 479, 482 (1966).
Furthermore, the general claim construction principle that
limitations found only in the specification of a patent or patent
application should not be imported or read into a claim must be
followed. See In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15
(CCPA 1978). One must be careful not to confuse impermissible
imputing of limitations from the specification into a claim with
the proper reference to the specification to determine the
meaning of a particular word or phrase recited in a claim. See
E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir.), cert. denied, 488
U.S. 986 (1988).
What we are dealing with in this case is the construction of
the limitations recited in the appealed claims. As stated by the
court in In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998) "[t]he name of the game is the claim."
Claims will be given their broadest reasonable interpretation
consistent with the specification, and limitations appearing in
the specification are not to be read into the claims. In re
Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
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Page 8
We find that the claimed steps “determining if a current
color combination for at least one text object and a background
object is a problem color; selecting one of a plurality of color
combinations for at least one text object and a background object
based on the current color combination, if the current color
combination is a problem color; and applying the selected color
combination to the at least one text object and the background
object” as broadly recited, do not set forth a mechanism for
carrying out the steps, as asserted by appellants. In addition,
we note that the steps are not presented in a format of "step
plus function" that would invoke the sixth paragraph of 35 U.S.C.
§ 112. Instead, as drafted, the steps as broad enough to be
carried out by a user utilizing the Mastering Windows reference,
as set forth by the examiner (answer, page 5, para. 2 through the
end of page 6).
From our review of Mastering Windows, we find that the step
of "determining if a current color combination for at least one
text object and a background object is a problem color" is met by
the disclosure of Mastering Windows (page 154) that "[i]f you
don't like the color schemes supplied, you can make up your own,"
see also "[i]f you don't like the colors that are available, you
can create your own." (page 155) Although these passages do not
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recite the phrase "problem color" we find that if a user does not
like the color and decides to change the color, the color that is
not liked may be considered by the user to be a problem color.
In addition, because a user can select a different color to
replace a color that the user does not like by "[c]lick [ing] on
one of the 48 colors ... to assign it to the chosen element”
(page 155), we find that Mastering Windows meets the claimed step
of "selecting one of a plurality of color combinations for at
least one text object and a background object based on the
current color combination, if the current color combination is a
problem color." See also the disclosure on page 154 of using
solid colors for window text and background. Moreover, the
claimed "applying the selected color combination to the at least
one text object and the background object" is met by the
disclosure (page 155) of clicking the OK button and saving the
selected color scheme. Thus, although we are cognizant of the
fact that Mastering Windows does not disclose automatic contrast
adjustment, we find that claim 21, as drafted, is broad enough to
read on the disclosure of Mastering Windows. Moreover, although
the examiner has not given weight to the preamble of the claim
(answer, page 5), we find that the language of the preamble is
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met by Mastering Windows because the reference provides for
changing the color of text and background, which will improve
color contact.
From all of the above, we find that the examiner has set
forth a prima facie case of anticipation of independent claim 21,
which has not been successfully rebutted by appellants.
Accordingly, the rejection of claim 21 under 35 U.S.C. § 102(b)
is affirmed. As claims 1, 2, 8, 22, 28, 38-41, and 47 fall with
independent claim 21 (brief, page 3), the rejection of claims 1,
2, 8, 22, 28, 38-41, and 47 under 35 U.S.C. § 102(b) is affirmed.
We turn next to the rejection of claims 9, 11, 19, 29, 31,
36, 48-50, 52, and 60 under 35 U.S.C. § 102(b) as being
anticipated by Netscape. We turn to independent claim 29. The
examiner's position can be found on page 4 of the final
rejection. Appellants assert (brief, page 4) that Netscape
simply describes a mechanism for identifying custom colors, and
that (brief, page 5) “[t]here is no discussion whatsoever about
problem color combinations, comparing a current combination
against one or more problem color combinations, or selecting and
applying a preferred color combination when a current color
combination matches a problem color combination.”
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From our review of claim 29, we find that the claim requires
user preferences comprising problem color combinations and
preferred color combinations, both of which reside in memory.
The claim additionally recites searching user preferences and
comparing the current color combination with at least one of the
plurality of problem color combinations. The claim additionally
recites selecting and applying the preferred color combination if
it matches the problem color combination in the user preferences.
Because the claim recites that the problem color combinations and
the preferred color combinations reside in memory, we find that
the claim is not anticipated by Netscape because there is no
disclosure in Netscape of having problem and preferred color
combinations in memory, which are compared to select and apply a
preferred color combination that matches the problem color
combination. We are not persuaded by the examiner’s assertion
(answer, page 9) that because Netscape discloses a plurality of
color combinations in memory, that whether the combination is
problematic or preferred is up to the user’s interpretation of
what color the user wants to use. The fact that there are colors
residing in memory is not a disclosure of the memory having a
plurality of problem color combinations and a plurality of
preferred color combinations, from which the user can compare a
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select a preferred color combination which matches the problem
color combination. Nor are we persuaded by the examiner’s
assertion (answer, page 10) that with respect to the selecting
step, the user makes the comparison and does the matching.
Because the problem and preferred color combinations are stored
in memory, we find that the claim requires that the comparison is
done by a comparison of the two sets of data in the memory, and
is not broad enough to read upon the user looking at the possible
color combinations and deciding which combination to choose.
From all of the above, we find that the examiner has failed to
establish a prima facie case of anticipation of claim 29 under 35
U.S.C. § 102(b). Accordingly, the rejection of independent claim
29, and claims 31 and 36 which depend therefrom, is reversed.
In addition, we reverse the rejection of independent claim
9, as well as claims 11 and 19 which depend therefrom, because
the claim also recites that problem color combinations and
preferred color combinations reside in memory, which is not
taught by Netscape, and does not read on the step being performed
by a user, as advance by the examiner. We additionally reverse
the rejection of independent claim 9 because the claim requires
that the color contrast adjuster resides in memory and performs
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the selecting and applying steps, which is not taught by
Netscape.
Turning to independent claim 48, we reverse the rejection of
this claim, as well as claims 49, 50, 52, and 60 which depend
therefrom, because the claim requires that the color contrast
adjuster selects the preferred color combination that corresponds
to the problem color combination, which distinguishes from the
user performing the limitation, as advanced by the examiner.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 2, 8, 21, 22, 28, 38-41, and 47 under 35 U.S.C. § 102(b) is
affirmed. The decision of the examiner to reject claims 9, 11,
19, 31, 36, 48-50, 52, and 60 under 35 U.S.C. § 102(b) is
reversed. No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2002-2053
Application No. 09/329,135
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