Ex Parte Best et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201713545306 (P.T.A.B. Feb. 6, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/545,306 07/10/2012 Timothy A. Best STL919990186US3A10852 6306 46159 7590 02/06/2017 SUGHRUE MION PLLC USPTO CUSTOMER NO WITH IBM/SVL 2100 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20037 EXAMINER PILLAI, NAMITHA ART UNIT PAPER NUMBER 2143 MAIL DATE DELIVERY MODE 02/06/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY BEST, MICHAEL J. DOCKTER, STEPHEN GRELL, and RONALD W. LYNN Appeal 2016-005447 Application 13/545,306 Technology Center 2100 Before BRADLEY W. BAUMEISTER, HUNG H. BUI, and DANIEL N. FISHMAN, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-005447 Application 13/545,306 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1—8. App. Br. 9-16.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1—8 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112,11 (pre-AIA) for lacking adequate written description. THE INVENTION Appellants describe the present invention as follows: A technique for executing applets is provided. Initially, a webtop applet is loaded into, for example, a browser window. The webtop applet displays the list of applets available to a user. The user selects one or more applets from the list received by the webtop applet. The webtop applet generates a separate JIntemal frame for each selected applet, and each JIntemal frame executes its associated applet within a separate window. The windows assume different configurations such as being resized, repositioned, cascaded, tiled, windowed, minimized, maximized, or overlapped with one or more other windows within a fixed- size view space of the browser window. Each window is manipulated by the user separately from the other windows which are contained within the fixed sized view space. Abstract. 1 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their details: the Final Action mailed May 11, 2015 (“Final Act.”); the Appeal Brief filed September 28, 2015 (“App. Br.”); the Examiner’s Answer mailed March 8, 2016 (“Ans.”); and the Reply Brief filed May 9, 2016 (“Reply Br.”). 2 Appeal 2016-005447 Application 13/545,306 Independent claim 1, illustrative of the appealed claims, follows: 1. A webtop applet, comprising: a JIntemal frame which holds a main applet, wherein the JIntemal frame holding the main applet is extrapolated from a JIntemal frame holding a document, wherein said main applet displays a list of available applets for execution, wherein each applet selected from the displayed list is executed in an individual JIntemal frame, and wherein the extrapolated JIntemal frame holding the main applet creates a windowing desktop. THE REJECTIONS Claims 1 and 3—8 stand rejected under 35 U.S.C. § 103(a) as obvious over Yogaratnam (US 6,513,158 Bl; issued Jan. 28, 2003) in view of Swing, The Preliminary Specification, Layered Panes and Internal Frames, The JLavered Pane and JInternalFrame Classes, Version 0.5, last modified 10/1/97, © 1995—97 Sun Microsystems, Inc. (hereafter “Layered Panes”). Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over Yogaratnam in view of Layered Panes and Shrader (US 6,473,894 Bl; issued Oct. 29, 2002).2 We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 2 The Examiner withdrew a previously issued rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112,11 (pre-AIA), for failing to comply with the written description requirement. Ans. 2. 3 Appeal 2016-005447 Application 13/545,306 FINDINGS AND CONTENTIONS The Examiner finds that Yogaratnam discloses all of the limitations of independent claim 1 with the exception of JIntemal frames. Final Act. 3^4. The Examiner relies upon Layered Panes for teaching “that the JIntemal frame holds a main applet, with the reference citing that it teaches parent frame windows displaying child frame windows within.” Id. at 4 (citing Layered Panes, p. 1,11. 1—5). The Examiner additionally finds that Layered Panes teaches that multiple JIntemal frames can be provided within a display. Id. (citing Layered Panes, Figure 1). The Examiner concludes that it would have been obvious to incorporate Layered Pane’s JIntemal frames into Yogaratnam’s display: Yogaratnam would benefit learning about JIntemal frames to implement a distinct type of frame with applet data associated with it. This provides motivation for Yogaratnam to use a well- known applet feature in implementing the frames. One skilled in the art at the time of the invention would have been motivated to learn from Layered Panes features associated with JIntemal frames. Id. Appellants contend, inter alia, that Yogaratnam does not suggest JIntemal Frames. App. Br. 11 (citing Final Act. 4). Appellants also contend that Layered Panes merely teaches what was disclosed in the Background section of Appellants’ Specification—Internal Frames for containing documents, or a multiple-document interface (MDI). Id. (citing Spec. 1). According to Appellants, the proposed combination at most describes using JIntemal frames for children documents, but does not suggest executing multiple applets in respective individual JIntemal frames contained within a main applet. Id. at 11—12. 4 Appeal 2016-005447 Application 13/545,306 CLAIM INTERPRETATION AND ANALYSIS /. “Before considering the rejections . . we must first [determine the scope of] the claims . . . In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). Therefore, we address, as a threshold matter, what is meant by the claim language “wherein the JIntemal frame holding the main applet is extrapolated form a JIntemal frame holding a document.” Appellants’ Specification explains the applet-extrapolation concept as follows: The “flash of inspiration” in this invention is the use of a Java class for a purpose other than [its] intended purpose. Technically, the invention is JApplets which contain JintemalFrames where each JintemalFrame contains a JApplet - almost recursive in nature. The original purpose of the JintemalFrame was to allow JApplets to have a multiple- document interface (known as “MDI”, in Microsoft-speak) in which one applet would have multiple documents [visible]. An analogy would be Microsoft Word having multiple text files on the screen simultaneously. JintemalFrames were not intended to have multiple-applets [visible]. This can be proven by the lack of native support for such operations such as missing init() calls for JApplets within a JintemalFrame. One aspect of the invention is the extrapolation from a JintemalFrame holding a “document ” to a JintemalFrame holding a JApplet. It is further an aspect of the invention that this creates a windowing desktop within a browser, a “WebTop”. Spec. 9:6—17 (emphasis added). This passage renders it reasonably clear that it is Appellants ’ idea of using JIntemal frames for holding applets that was extrapolated from the known idea of using JIntemal frames for holding documents. Restated, the claim language “extrapolated from a JIntemal frame holding a document” is directed to the origin of the invention’s conception. This language in no 5 Appeal 2016-005447 Application 13/545,306 way limits the physical structure of a “JIntemal frame holding the main applet,” as recited in claim 1. Likewise, this language in no way limits the method of generating a “JIntemal frame holding the webtop applet,” as recited in method claim 5. In short, the language relating to how the JIntemal frame is extrapolated does not further patentably distinguish any of the claims. As such, we find unpersuasive Appellants’ patentability arguments that are based upon how the inventive concept of the claimed JIntemal frames was extrapolated or derived. II. Turning to the obviousness rejections, the Examiner has not established that the cited prior art would have suggested providing a list of available applets for execution such that each applet selected from the displayed list is executed specifically in an individual JIntemal frame, as recited in claim 1. The Examiner acknowledges that Yogaratnam does not teach employing child applets in individual JIntemal frames. Final Act. 4. Furthermore, solving the problem of “one applet per fixed-sized viewing space” is the exact reason Appellants employ child applets in JIntemal frames. Spec. 9:1—3. But as determined by the Examiner (Final Act. 3—4), Yogaratnam already discloses providing plural Java applets within a common embedded desktop. See, e.g., Yogaratnam, FIGs. 4—5. Thus, we see no reason to modify Yogaratnam’s invention to further employ JIntemal frames in light of the fact that Yogaratnam’s embedded desktop does not suffer those drawbacks for which the Examiner relies upon the JIntemal frames to address. It appears that the Examiner’s combination of Yogaratnam and Layered Panes was the result of using Appellants’ claims 6 Appeal 2016-005447 Application 13/545,306 as a roadmap. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (explaining that hindsight reasoning based upon knowledge gleaned only from Appellants’ disclosure is improper). Accordingly, we do not sustain the Examiner’s obviousness rejection of independent claim 1 or of independent claim 5, which sets forth similar language. We likewise do not sustain the obviousness rejection of claims 3, 4, and 6—8, which depend from claims 1 and 5. With respect to the remaining rejection of dependent claim 2, the Examiner’s reliance on Shrader does not cure the deficiency of the obviousness rejection explained above. See Final Act. 6—7. Accordingly, we do not sustain that obviousness rejection either. NEW GROUND OF REJECTION Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1—8 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112,11 (pre-AIA) for lacking adequate written description. The first paragraph of 35 U.S.C. § 112 (pre-AIA) reads as follows: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Our reviewing court has set forth the following legal test for determining whether a claim satisfies the written description requirement of 35 U.S.C. §112,11. 7 Appeal 2016-005447 Application 13/545,306 The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language . . . The content of the drawings may also be considered in determining compliance with the written description requirement. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted). Claim 1 sets forth “a JIntemal frame [that] holds a main applet.” As a threshold matter, Appellants’ Specification nowhere sets forth a main applet. Based on the arguments (e.g., App. Br. 9 (citing Spec. 9:6—17 as support for this claim language)), we provisionally understand the recited “main applet” corresponds to an instance of the disclosed “JApplets which contain JintemalFrames,” as recited at page 9, lines 7—8 of the Specification. Restated, this “main applet” also appears to correspond to the “webtop applet.” See claim 5 (“generating a JIntemal Frame and loading a webtop applet into the generated JIntemalFrame”). Turning to the sufficiency of the written description, Appellants’ Specification does not disclose that the “main applet” (as recited in claim 1) or the “webtop applet” (as recited in claim 5) (hereafter the top-level applet) is held or loaded into a JIntemal frame, as claimed. Rather, Appellants’ Specification only discloses that the top-level applet contains internal frames, which, in turn, contain their own applets. Spec. 9:6—17. Appellants’ Specification only discloses that the top-level applet “is a Java applet which can be included within the tags of any HTML document. It can also be configured to be a Java application.” Spec. 9:18—20. The Examiner previously had rejected claims 1—8 under this same ground for similar reasons. According to the Examiner, “[t]he claims 8 Appeal 2016-005447 Application 13/545,306 disclose that the JIntemal frame holds a main applet and that the JIntemal frame holding the main applet is extrapolated from a JIntemal frame holding a document. The specification does not clearly describe these features.” Final Act. 2—3. Appellants’ Representative and the Examiner subsequently discussed this rejection during an interview on July 9, 2015, and the Examiner agreed to withdraw the rejection. App. Br. 9 (“[a]s discussed during the Interview . . ., at least [page 9, lines 6—17 of the Specification] supports the features of the rejected claims and this rejection is withdrawn”); Ans. 2 (indicating that the written description rejection is withdrawn). The Interview Summary associated with the July 9, 2015 interview (mailed July 13, 2015) only states that Appellants’ Representative and the Examiner “[djiscussed [the] 35 U.S.C. 112 rejection and determined that the specification does disclose the feature of issue in the [] rejection”). As such, the record does not sufficiently indicate what the Examiner’s basis is for concluding that the Specification provides adequate support for claiming that the top-level applet (“main applet” or “webtop applet”) is held within a JIntemal frame as opposed to being held within a parent frame that is included, for example, within the tags of an HTML document. DECISION The Examiner’s decision rejecting claims 1—8 is reversed. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1—8 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112,11 (pre-AIA). 9 Appeal 2016-005447 Application 13/545,306 Rule 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 41.50(b) also provides the following: When the Board enters such a non-final decision, 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 the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015). 10 Appeal 2016-005447 Application 13/545,306 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)(l)(iv). REVERSED 37 C.F.R, $ 41.50(b) 11 Copy with citationCopy as parenthetical citation