Ex Parte Borden

Board of Patent Appeals and Interferences

May 6, 2009

10627345 (B.P.A.I. May. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GEORGE R. BORDEN IV
__________

Appeal 2008-4312
Application 10/627,345
Technology Center 2100
__________

Decided:1 May 6, 2009
__________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTNEY, III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, 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 Date (electronic delivery).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 11–30. Claims 1–10 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention described in the patent application relates to aural user
interfaces in which aural cues are given to help the user determine which
item is currently selected and which direction in the list the user is
navigating (Spec. 1, 5, and 6).
Independent claim 11 is illustrative:
11. An aural user interface for interactively navigating
through a collection of data organized into at least one hierarchical set
of data and from an arbitrary set of data within said hierarchical
structure, said interface comprising
(a) a first input for navigating upward through said
hierarchical structure;
(b) a second input for navigating downward through said
hierarchical structure;
(c) a first aural signal associated with said first input having
a first characteristic indicating to a user upward navigation through
said hierarchical structure from an arbitrary data point, said first
characteristic independent of the set of data from which upward
navigation commences;
(d) a second aural signal associated with said input having a
second characteristic audibly different than said first audio
characteristic indicating to a user downward navigation through said
hierarchical structure from said arbitrary data point, said second
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characteristic independent of the set of data from which downward
navigation commences;
(e) a frequency range associated with said first aural signal
that is dependent on the size of the data set comprising the
hierarchical set of data;
(f) a frequency range associated with said second aural
signal that is dependent on the size of the data set comprising the
hierarchical set of data.
References
The Examiner relies upon the following references as evidence in
support of the rejections:
Vallone US 6,642,939 B1 Nov. 4, 2003
(filed Mar. 30, 2000)
Peterson US 5,652,714 Jul. 29, 1997
Auflick US 6,820,238 B1 Nov. 16, 2004
(filed Feb. 19, 2002)
McKiel, Jr. US 5,287,102 Feb. 15, 1994

International Business Machines Corporation, Method for providing position
relative audio feedback in a scrollable content area, Research Disclosure
41878, Feb. 1999. (“IBM-41878”.)

Rejections
The Examiner rejects claims 11, 12, 15, 19–22, 25, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Vallone, Peterson, and IBM-
41878; claims 13, 14, 23, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Vallone, Peterson, IBM-41878, and Auflick; claims 16
and 26 under 35 U.S.C. § 103(a) as being unpatentable over Vallone,
Peterson, and IBM-41878, in light of the taking of official notice; and claims
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17, 18, 27, and 28 under 35 U.S.C. § 103(a) as being unpatentable over
Vallone, Peterson, IBM-41878, and McKiel, Jr.
Appellant’s Contentions
Appellant argues that IBM-41878 does not teach the limitation of a
frequency range that is dependent on the size of a data set because IBM-
41878 is limited to “indicating the relative position of a selected item in the
list” (App. Br. 7) and “fixed upper and lower [frequency] bounds” (Reply
Br. 4). Furthermore, Appellant argues that “the number of incremental steps
heard within that range [in IBM-41878] does not depend on the size of the
data set itself, but the relative size of the data set compared to the size of the
view port window” (Reply Br. 5).
In the Reply Brief, Appellant introduced a new argument that
Peterson does not teach or suggest a first aural signal, associated with a first
input, having a first characteristic and a second aural signal, associated with
a second input, having a second characteristic audibly different than the first
audio characteristic (Reply Br. 5).
Examiner’s Findings/Conclusions
The Examiner finds that the meaning of range includes “the set of all
values attained by a given function throughout its domain” so that “the rate
of change of the frequency [in IBM-41878] varies based on the relative size
of the total content” (Ans. 12).

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ISSUE
Has Appellant shown that the Examiner erred in finding that IBM-
41878 teaches or suggests the limitation of a frequency range that is
dependent on the size of a data set, as recited in independent claims 11 and
21?
FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. The term “range” may be defined as “the limits of a series” and “the
set of values a function may take on.” Merriam Webster’s Collegiate
Dictionary 967 (10th ed. 1997).
2. IBM-41878 teaches “playing audio feedback based on the current size
and position of scrollable content within a window being displayed
[where the] audio feedback mechanism is an audio tone which varies
over a given octave range as the content area is scrolled [and the] rate
of the change in frequency is governed by the relative size of the total
content contained within the scroll area compared to the scroll view
port” (ll. 1–3 and 6–8).
PRINCIPLES OF LAW
Obviousness
Section 103(a) 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
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a person having ordinary skill in the art to which said subject
matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” Id. at 419. In KSR, the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” id. at 415, and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 415–16 (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. at 416. 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 415, 417.
Claim Interpretation
The scope of patent application claims are not determined “solely on
the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art.” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citations omitted).
New Arguments
“[I]t is inappropriate for appellants to discuss in their reply brief
matters not raised in . . . the principal brief[ ]. Reply briefs are to be used to
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reply to matter[s] raised in the brief of the appellee.” Kaufman Company v.
Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986). “Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee . . . but also entails the risk of an improvident or ill-advised
opinion on the legal issues tendered.” McBride v. Merrell Dow and
Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations
omitted).
There are cogent reasons for not permitting an appellant to raise
issues or arguments in a reply brief. Among them are the
unfairness to the appellee who does not have an opportunity to
respond and the added burden on the court that a contrary
practice would entail. As the Tenth Circuit put it, permitting an
appellant to raise new arguments in a reply brief “would be
unfair to the court itself, which without the benefit of a
response from appellee to an appellant's late-blooming
argument, would run the risk ‘of an improvident or ill-advised
opinion, given [the court's] dependence . . . on the adversarial
process for sharpening the issues for decision.’”
Carbino v. West, 168 F.3d 32, 34–35 (Fed. Cir. 1999) (citing
Headrick v. Rockwell Int’l Corp., 24 F.3d 1272, 1278 (10th Cir.
1994) (quoting Herbert v. Nat’l Academy of Sciences, 974 F.2d
192, 196 (D.C. Cir. 1992)).
ANALYSIS
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 11 and 21. See 37 C.F.R. 41.37(c)(1)(vii).
The Examiner’s interpretation of the meaning of frequency range is
consistent with the Specification, which cites setting upper and lower
frequency bounds dependent on the size of a list as example embodiments
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(Spec. 6, ll. 19–27), but does not preclude embodiments employing the plain
meaning of the word “range” (FF 1). With IBM-41878, navigating through a
large data set would result in more frequencies being used for the audio
feedback mechanism than navigating through a small data set, because the
rate of the change in frequency depends on the size of the content relative to
the scroll view port (FF 2). Thus, the Examiner has shown that IBM-41878
teaches the limitation of a frequency range that is dependent on the size of a
data set.
IBM-41878 teaches this limitation even with Appellant’s
interpretation of the meaning of range. As Appellant points out, “the
frequency of the audible signal emitted when a user is scrolling over the
midway (50%) point of the entire data set within the scroll area is the same,
irrespective of the size of the data set” (App. Br. 7). The midway point in a
data set of size n would be n/2. In a data set of size n+m (where m>0), the
midway point would be (n+m)/2, thus the frequency of the audible signal
emitted when a user is scrolling over the point n/2 would be different given
the larger size of the data set. This means that two frequency ranges in IBM-
41878—the frequency range from the beginning of the data set to n/2 and
the frequency range from n/2 to the end of the data set—depend on the size
of the data set.
Appellant’s point that the number of incremental frequency steps
employed in IBM-41878 depends on the relative size of the data set
compared to the size of the view port window does not change the analysis.
For any given view port window size, the number of incremental frequency
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steps employed will depend on the size of the data set. Moreover,
Appellant’s claims do not require that the size of the data set be the sole
frequency range determiner.
Appellant newly argues in the Reply Brief that “[in the Peterson
reference] there is neither the disclosure of, nor motivation for, the claimed
‘second aural signal associated with said second input having a second
characteristic audibly different than said first audio characteristic . . . .”
(Reply Br. 5). The Examiner set forth findings in the Final Rejection mailed
July 25, 2006 at page 3 pertaining to the disputed feature, however,
Appellant failed to address the issue in Appellant’s Brief filed November,
20, 2006. The Appellant had adequate notice of the Examiner’s position and
should have addressed this position in the principal Brief on appeal. The
filing of a Reply Brief is not to be construed as permission to present
arguments that should have been raised initially in the principal Brief on
appeal. To permit Appellant to present such arguments would essentially
prejudice the appellate process since the Examiner is not permitted to reply
for our benefit to responses generally made in the Reply Brief. Hence,
Appellant’s arguments presented in the Reply Brief regarding this limitation
are considered to be untimely and have been effectively waived by
Appellant. We will therefore not consider Appellant’s new arguments
presented at pages 5-6 of the Reply Brief.
For at least these reasons, we conclude that Appellant has not
sustained the requisite burden on appeal in providing arguments or evidence
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persuasive of error in the Examiner’s rejection of independent claims 11 and
21, and of dependent claims 12–20 and 22–30, which fall therewith.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has failed to demonstrate that the Examiner erred in finding that
IBM-41878 teaches or suggests a frequency range that is dependent on the
size of a data set.
DECISION
We affirm the Examiner’s decision rejecting claims 11–30 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

erc

KEVIN L. RUSSELL
CHERNOFF, VILHAUER, MCCLUNG & STENZEL LLP
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