Ex parte Berry et al.

Board of Patent Appeals and Interferences

Sep 18, 1998

08176335 (B.P.A.I. Sep. 18, 1998)

Application for patent filed January 3, 1994. 1
According to the appellants, the application is a continuation
of Application 07/888,221, filed May 26, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
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not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD E. BERRY, SUSAN F. HENSHAW
and DAVID J. ROBERTS
__________
Appeal No. 96-1396
Application 08/176,3351
___________
ON BRIEF
___________
Before THOMAS, JERRY SMITH and CARMICHAEL, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-15, which constitute
Appeal No. 96-1396
Application 08/176,335
2
all the claims in the application. An amendment after final
rejection was filed on April 10, 1995 and was entered by the
examiner.
The invention pertains to a method and apparatus for
operating a graphical user interface on the display of a
computer. More particularly, an icon is placed in the menu
bar of a window being displayed. The icon is associated with
one or more actionable objects, and a selection message is
sent to the associated actionable objects in response to
selection of the icon in the menu bar.
Representative claim 1 is reproduced as follows:
1. An apparatus for operating a user interface
having one or more icons in a menu bar of a window on a
display, comprising:
(a) means for producing a menu bar in a window on
the display;
(b) means for placing a menu bar icon in the menu
bar;
(c) means for associating one or more actionable
objects in said window with said menu bar icon, each of said
actionable objects represented by a different icon, said
actionable objects having data and procedural information and
being operable independent of said menu bar icon; and

(d) means for sending a selection message to the one
or more associated actionable objects in response to operator
selection of the menu bar icon
Appeal No. 96-1396
Application 08/176,335
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The examiner relies on the following references:
Muller 4,984,152 Jan. 08, 1991
Fleming et al. (Fleming) 5,140,677 Aug. 18, 1992
(Filed May 11,
1990)
Claims 1-15 stand rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the invention. Claims 1-15 also stand
rejected under 35 U.S.C. § 103. As evidence of obviousness
the examiner offers Fleming and Muller taken together.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
Appeal No. 96-1396
Application 08/176,335
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rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that claims 1-15 particularly point out the
invention in a manner which complies with 35 U.S.C. § 112. We
are also of the view that the rejection as formulated by the
examiner does not support the obviousness of the invention in
the manner suggested by the examiner. Accordingly, we reverse
the examiner’s rejections. Nevertheless, we add a new
rejection of independent claims 1, 6 and 11 using our
authority under 37 CFR § 1.196(b).
We consider first the rejection of claims 1-15 under
the second paragraph of 35 U.S.C. § 112. The examiner’s
rejection states the following:
The recitation of "each of said
actionable objects represented by a
different icon, having data and
procedural information and being
operable independent of said menu bar
icon; and means for sending a
selection message to the one or more
associated actionable objects in
response to operator selection of the
menu bar icon" in claims 1, 6 and 11
is confusing since if actionable
objects are operable independent of
the menu bar icon, the actionable
objects will not have response to the
selection of the menu bar icon
Appeal No. 96-1396
Application 08/176,335
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[answer, pages 2-3].
Appellants argue that the criticized terms would be clear to
the person skilled in the art when the claims are read in
light of the specification [brief, pages 7-9].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
The examiner appears to misapprehend the meaning of
what is recited in the independent claims. The fact that an
actionable object is operable independently of the menu bar
icon does not preclude it also being operable in response to
the menu bar icon. For example, in figure 2 of this
application, the actionable object "March Reports" is operable
by either selecting icon 250, which is independent of the menu
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Application 08/176,335
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bar icon, or by selecting icon 222 which is not independent of
the menu bar icon. Thus, the independent claims recite nothing
more than that the actionable objects can be operated without
using the menu bar icon. We agree with appellants that the
artisan having considered the specification of this
application would have no difficulty ascertaining the scope of
the invention recited in claims 1-15. Therefore, the
rejection of claims 1-15 under the second paragraph of 35
U.S.C. § 112 is not sustained.
We now consider the rejection of claims 1-15 under 35
U.S.C. § 103 as unpatentable over the teachings of Fleming and
Hoki. Appellants have indicated that the claims on appeal
stand or fall together for purposes of this rejection [brief,
page 7]. Consistent with this indication appellants have made
no separate arguments with respect to any of the claims on
appeal. Consequently, all contested claims stand or fall
together. See In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217
USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we will only
consider the rejection against claim 1 as representative of
all the claims on appeal.
Appeal No. 96-1396
Application 08/176,335
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In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
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Application 08/176,335
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In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
With respect to representative claim 1, the examiner
has basically read the claim on the disclosure of Fleming, and
the examiner asserts that Fleming teaches the invention of
claim 1 except for the claimed plurality of menu icons
[answer, page 3]. The examiner relies on Muller as teaching a
plurality of menu icons and suggests that it would have been
obvious to replace the menu titles of Fleming with the plural
icons of Muller [Id. at pages 3-4].
Appellants argue inter alia that
Fleming et al provide no "means for
associating one or more actionable
objects in said window with said menu
bar icon..." Instead they provide
only a proxy icon for the window
itself - there is no ability to
associate another object within the
window with a[n] menu bar icon. As a
result, there is no "means for sending
a selection message to the one or more
associated actionable objects" [brief,
page 12].

The examiner responds that the menu bar icon and the objects
in Fleming are associated by merely being icons displayed on
the same window [answer, page 6].
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Application 08/176,335
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Although many of appellants’ arguments are not
commensurate in scope with the invention of claim 1, we are
unable to find motivation to combine the teachings of Muller
with Fleming so as to arrive at the claimed invention. First,
we cannot agree with the examiner that "associating" can be
satisfied by the mere presence of two unrelated items on a
display window. Claim 1 recites an association that requires
functionality between the actionable object and the menu bar
icon which is not met by the actionable objects identified by
the examiner. Second, we can find no motivation for replacing
the action line items of Fleming, such as File, View and
Options, with a plurality of menu bar icons based on the
teachings of Muller. The plurality of icons in Muller would
not fit within the menu bar and would provide no advantage to
the Fleming interface. Therefore, we do not sustain the
rejection under 35 U.S.C. § 103 as formulated by the examiner.
Notwithstanding our view that the examiner’s rejection
of the claims cannot be sustained, we are also of the view
that the invention as broadly recited in independent claims 1,
6 and 11 is fully met by the teachings of Fleming. Therefore,
we exercise our authority under 37 CFR § 1.196(b) to make a
Appeal No. 96-1396
Application 08/176,335
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new rejection of independent claims 1, 6 and 11 under 35
U.S.C. § 102(e) as being anticipated by the disclosure of
Fleming.
For purposes of reading the claimed invention on the
disclosure of Fleming, we will use claim 1 as the
representative claim. We also interpret claim 1 in its
broadest form which means that we interpret "one or more
icons" as meaning one icon and "one or more actionable
objects" as meaning one actionable object. Claim 1 reads on
Fleming as follows:
(a) means for producing a menu bar in a window is met
by menu bar 37 of Fleming;
(b) means for placing a menu bar icon in the menu bar
is met by icon 45 of Fleming;
(c) means for associating one...actionable object in
said window with said menu bar icon ... and being operable
independent of said menu bar icon is met by actionable object
"project X" of Fleming and by menu bar icon 45 of Fleming;
[note that actionable object "Project X" is operable
independent of menu bar icon 45 by use of icon 21];
(d) means for sending a selection message to the
one...associated actionable object in response to operator
selection of the menu bar icon is met by icon 45 of Fleming;
[note that selection of icon 45 causes a selection message to
be sent to actionable object "Project X"].
Since the broadest reasonable interpretation of
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Application 08/176,335
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independent claims 1, 6 and 11 is fully met by the disclosure
of Fleming as explained above, we make this new ground of
rejection of claims 1, 6 and 11. We designate this as a new
ground of rejection because our reasoning is substantially
different from that used by the examiner in his combination of
prior art references. We also only address the three
independent claims at this time. We leave it to the examiner
to decide the extent to which the dependent claims may be
subject to rejection based on Fleming alone or used with other
available prior art.
In summary, we have not sustained either of the
examiner’s rejections of the claims under 35 U.S.C. §§ 112 and
103. Therefore, the decision of the examiner rejecting claims
1-15 is reversed. We have entered a new ground of rejection
of independent claims 1, 6 and 11.
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997,
by final rule notice 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct.
21, 1977)). 37 CFR § 1.196(b) provides that "A new ground of
rejection shall not be considered final for purposes of
Appeal No. 96-1396
Application 08/176,335
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judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (§
1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so
rejected, or both, and have the matter
reconsidered by the examiner, in which
event the application will be remanded
to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board
of Patent Appeals and Interferences
upon the same record. . . .

Appeal No. 96-1396
Application 08/176,335
13

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

REVERSED; 37 CFR § 1.196(b)
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )

JS/PGG
Appeal No. 96-1396
Application 08/176,335
14
Keith Stephens
International Business Machines Corp.
Intellectual Prop. Law Dept.
Internal Zip 4054, 11400 Burnet Rd.
Austin, TX 78758