Ex Parte Caliendo et al

Patent Trial and Appeal Board

Feb 21, 2017

13118840 (P.T.A.B. Feb. 21, 2017)

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.
13/118,840 05/31/2011 Neal Robert Caliendo JR. RPS920110028-US-NP 1333
63203 7590 02/23/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
750 B STREET BLOOMQUIST, KEITH D
SUITE 3120
SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Noelle@rogitz.com
eofficeaction @ appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL ROBERT CALIENDO JR., LISA LOUISE CARTER,
RUSSELL STUART GANTMAN, PAUL PLASKONOS,
ADAM MILES SMITH, and RUSSELL SPEIGHT VANBLON
Appeal 2016-003564
Application 13/118,8401
Technology Center 2100
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4, 6, 8, 11, 13, 15, 18—21, and 27—36, which constitute
all of the claims pending in this application. Claims 2, 3, 5, 7, 9, 10, 12, 14,
16, 17, and 22—26 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
We have reviewed Appellants’ arguments and evidence in the Appeal
Brief and Reply Brief, and the Examiner’s response to Appellants’
arguments. After considering the evidence, we concur with Appellants
1 Appellants identify Lenovo Singapore PTE, Ltd. as the real party in
interest. App. Br.2.
Appeal 2016-003564
Application 13/118,840
contention that the Examiner erred in rejecting independent claims 1, 8, 15,
and 21 under 35 U.S.C. § 103(a) because the combination of Anderson2 and
Dodson3 does not teach or suggest “in response to receipt of the first
selection, display the at least first tile in the multi-workspace mode apart
from any single workspace displayed in the multi-workspace mode,” as
recited in claim 8 (hereinafter “disputed limitation”), and as similarly recited
in claims 1,15, and 21. App. Br. 5—8; Reply Br. 5.
The Examiner finds Dodson teaches a drag and drop operation
between workspaces in which (a) a user begins to drag a visible object in a
workspace and (b) the drag and drop operation can be suspended to switch
workspaces. Ans. 13 (citing Dodson 2:53—65). The Examiner finds this
portion of Dodson teaches the disputed limitation because, when the drag
and drop operation is suspended, “the tile is ... no longer part of a given
workspace in the multi-workspace mode as it can be dropped in any one of
the available workspaces.” Id. In this regard, the Examiner finds “‘[ajparf
does not necessarily entail being graphically separate from any displaced
workspace.” Id. The Examiner also cites column 3, lines 14—33 of Dodson
as describing the drag and drop operation in more detail. Id. at 13—14.
Additionally, the Examiner finds the combination of Anderson and
Dodson teaches the disputed limitation. Id. at 14. The Examiner finds
Figure 6 of Anderson shows “a multi-workspace mode for activating a
workspace can display a plurality of workspaces, each with an active
window therein,” and Dodson teaches “a drag and drop operation across
workspaces from one widow to another.” Id. Thus, the Examiner finds a
2 US 2003/0189597 Al; published Oct. 9, 2003.
3 US 6,628,309 Bl; Sept. 30, 2003.
2
Appeal 2016-003564
Application 13/118,840
person of ordinary skill in the art “would understand the references to
suggest a tile displayable apart from the workspaces, in the sense that a drag
and drop spans a plurality of visible workspaces.” Id.
We are persuaded by Appellants’ arguments that the Examiner has
erred. Regarding the Examiner’s findings based on the drag and drop
operation of Dodson, Appellants argue, and we agree, that the portions of
Dodson cited by the Examiner are “entirely silent on if and where its object
is displayed while the drag and drop action is ‘suspended.’” Reply Br. 2.
Consistent with their argument in the Appeal Brief with respect to Figure 4
of Dodson (see App. Br. 7), Appellants argue in the Reply Brief, and we
agree, that the portions of Dodson cited by the Examiner (col. 2,11. 53—65
and col. 3,11. 14—33) “fail to support the proposition that the object
‘maintains its display’ during drag and drop suspension.” Reply Br. 2. In
regard to the Examiner’s finding in the Answer that “the object is displayed
in both the first and second workspaces in each part of the drag and drop
operation as it is suspended in one workspace and continue in another,”
Appellants argue, and we agree, “[ajgain, this is unsupported by the cited
portions since those portions fail to indicate if and where the object is
presented upon the drag and drop being suspended.” Reply Br. 2—3.
Regarding the Examiner’s finding based on the combination of Anderson
and Dodson, we do not agree with the Examiner’s finding that a person of
skill in the art “would understand the references to suggest a tile displayable
apart from the workspaces, in the sense that a drag and drop spans a plurality
of visible workspaces” because Dodson teaches the drag and drop operation
is suspended (see col. 2,11. 59—61, col. 3,11. 21—25) and, for the reasons
3
Appeal 2016-003564
Application 13/118,840
previously discussed, Dodson does not teach or suggest the object is
displayed during the drag and drop suspension.
Accordingly, the Examiner’s finding that the combination of
Anderson and Dodson teaches or suggests the disputed limitation is in error
because it is not supported by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving
non-patentability is by a preponderance of the evidence). “A rejection based
on section 103 clearly must rest on a factual basis . . . .” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). “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.” Id.
This principle is applicable here. For us to sustain the Examiner’s
rejection on this record, we would need to resort to impermissible
speculation, or unfounded assumptions or rationales to cure the deficiencies
in the factual bases of the rejection before us. Id. We decline to make
speculative assumptions regarding the Examiner’s intended mapping with
respect to the disputed limitation of Appellants’ claims.
Thus, we do not sustain the Examiner’s rejection of claims 1, 8, 15,
and 21. For the same reasons, we do not sustain the rejection of claims 4, 6,
11, 13, 18—20, and 27—36, which depend from one of claims 1, 8, 15, and 21.
4
Appeal 2016-003564
Application 13/118,840
DECISION
We reverse the Examiner’s rejection of claims 1,4, 6, 8, 11, 13, 15,
18-21, and 27-36.4
REVERSED
4 Claims 8, 11, 13, 27, and 34—36 are directed to “[a] program product stored
in a computer-readable medium.” The claimed “medium” is not expressly
limited to non-transitory media, and the term “computer-readable medium”
is broadly described in the Specification to include, among other things, “a
computer readable signal medium or a computer readable storage medium.”
See Specification || 9, 10. Should there be further prosecution of this
application (including any review for allowance), the Examiner may wish to
review these claims for compliance under 35 U.S.C. § 101. See Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential in relevant
part) (holding that where a specification does not limit the term “machine
readable storage medium” expressly to exclude signals, carrier waves, and
other transitory media, the term encompasses transitory propagating signals);
In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ((holding that a
transitory, propagating signal is non-statutory per se); MPEP § 2106(1) (9th
ed. 2014); David J. Kappos, Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
5