Ex Parte Caliendo et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201713084887 (P.T.A.B. Feb. 24, 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. 13/084,887 04/12/2011 Neal Robert Caliendo JR. RPS920110002-US-NP 1986 63203 7590 02/28/2017 ROrTTT7 fr ASSOPTATRS EXAMINER 750 B STREET ORR, HENRY W SUITE 3120 SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER 2145 NOTIFICATION DATE DELIVERY MODE 02/28/2017 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 John@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEAL ROBERT CALIENDO JR., TIMOTHY L. HUMPHREY, LISA LOUISE CARTER, PAUL DOUGLAS PLASKONOS, ADAM MILES SMITH, RUSSELL SPEIGHT VANBLON, and ADRIANA ARCEO VILLARREAL Appeal 2016-002478 Application 13/084,887 Technology Center 2100 Before ERIC B. CHEN, ADAM J. PYONIN, and JOHN R. KENNY, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 5—8, 12—15, 18—20, and 26, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-002478 Application 13/084,887 STATEMENT OF THE CASE Introduction1 The Application is directed to a graphical user interface (GUI) “that provides intermediate informational functionality regarding an applet or application without invoking the applet or application.” Spec. 11. Claims 1,8, and 15 are independent. Claim 1 is reproduced below for reference: 1. A method, comprising: receiving a user action selecting a graphical user interface (GUI) control displayed on a display screen, the selected GUI control corresponding to a software application, wherein the selected GUI control is used to launch the software application; detecting that the user action is a billboard request; responsive to detecting that the user action is a billboard request, retrieving billboard data corresponding to the software application; displaying the retrieved billboard data in a window on the display screen adjacent to the GUI control; and displaying an outline surrounding the selected GUI control and the window such that the window and GUI control form a unified visual panel defined by the outline App. Br. 21 (Claims App’x). The prior art relied upon by the Examiner in rejecting the claims on 1 Separately, we note Appellants’ Briefs appear to be printed with text that lacks clarity and contrast between the paper and the writing thereon. See 37 C.F.R. § 1.52(a)(l)(iv); 37 C.F.R. § 1.52(a)(l)(v). References and Rejections appeal is: Lin-Hendel Klassen Etgen US 2003/0184600 A1 Oct. 2, 2003 US 2005/0120306 A1 June 2, 2005 US 2007/0180040 A1 Aug. 2, 2007 2 Appeal 2016-002478 Application 13/084,887 Selig May Shiplacoff US 2008/0184158 A1 July 31, 2008 US 2009/0013275 A1 Jan. 8, 2009 US 2011/0016417 A1 Jan. 20, 2011 Claim 15 stands rejected under 35U.S.C. § 112, first paragraph (pre- AIA) as failing to comply with the written description requirement. Final Act. 4. Claims 15 and 18—20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 5. Claims 1, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen and Selig. Final Act. 6. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen and Lin-Hendel. Final Act. 12. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen, Lin-Hendel, and Selig. Final Act. 14. Claims 2, 5, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen, Selig, and May. Final Act. 15, 17. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen, Lin-Hendel, and May. Final Act. 20. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen, Selig, and Shiplacoff. Final Act. 21, 22. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen, Lin-Hendel, and Shiplacoff. Final Act. 23. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Klassen, Lin-Hendel, and Etgen. Final Act. 25. 3 Appeal 2016-002478 Application 13/084,887 ANALYSIS We have reviewed the Examiner’s rejections and Appellants’ arguments. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). A. 35 U.S.C. §§ 112 and 101 Rejections Concurrent with the filing of the Appeal Brief, Appellants amended claim 15 to recite a computer readable storage medium that is “not a transitory signal.” See App. Br. 4—5; Adv. Act. 1. Appellants argue the Examiner’s written description and non-statutory subject matter rejections of claim 15 are in error, because the limitation ‘“not a transitory signal’ has adequate written description . . . including memories, hard drives, and USB storage devices,” and “overcomes on its face the basis for patent- ineligibility.” Reply Br. 2 (referring to “instant figure 1 and description thereof’). We are persuaded by Appellants’ arguments. We find Appellants have adequate written description support for the claim recitation “not a transitory signal.” See Spec. 19; see also David J. Kappos, Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. & Trademark Office 212 (Feb. 23, 2010) (“an amendment [(such as by adding the limitation ‘non-transitory’ to the claim)] would typically not raise the issue of new matter”). We also are persuaded claim 15 is directed to statutory subject matter, as the Examiner has not identified how the claim—directed to a medium which is not a transitory signal—falls outside any of the four 4 Appeal 2016-002478 Application 13/084,887 statutory categories of patentable subject matter (process, machine, manufacture, or composition of matter). Compare In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (“the claims include physical but transitory forms of signal transmission such as radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable . . . such transitory embodiments are not directed to statutory subject matter.” (Emphasis added)). Accordingly, we do not sustain the Examiner’s 35U.S.C. §§ 112 and 101 Rejections. B. 35 U.S.C. §103 Rejections We have reviewed the Examiner’s 35 U.S.C. § 103 rejections in light of Appellants’ arguments. We do not find Appellants’ arguments persuasive of error. Rather, we agree with the Examiner’s responses to the issues raised by Appellants in the Appeal Brief for the reasons given in the Answer, and we adopt the reasoning and findings of fact made by the Examiner in the Final Action and Examiner’s Answer as our own. We highlight the following issues raised in the Reply Brief for emphasis. Claims 1, 7, and 8 Appellants argue Klassen does not teach “displaying the retrieved billboard data in a window on the display screen adjacent to the GUI control that is recited earlier in the claim as being the thing that launched the window” as required by claim 1, and thus the Examiner relied on impermissible hindsight “to rearrange Klassen.” Reply Br. 3. 5 Appeal 2016-002478 Application 13/084,887 We are not persuaded of error. The Examiner correctly finds Klassen’s icon is tantamount to the recited GUI control, and “the definition of adjacent is Tying near, close, or contiguous.’” Ans. 25. The Examiner also finds, and we agree, Klassen’s “dialog window being displayed in the named region results in the dialog window being ‘adjacent’ to the bottom row of icons” upon user selection of one these icons on the bottom row. Ans. 25; see also Klassen, Figs. 6, 7. Appellants do not provide persuasive arguments or evidence to show that a user would not select an icon on the bottom row of icons, nor do Appellants show the Examiner erred in finding Klassen teaches or suggests displaying the billboard adjacent to the GUI control. See Final Act. 7; see also Klassen H 43—45 (describing the portions of the display screen, including rows of icons that may be selected), 1 50 (“Dialog box 604 is opened at name region 314 though persons skilled in the art will recognize that another region may be selected to position the dialog box 604”). We also note Klassen discloses, with respect to Figure 7, the size of the dialog window (i.e., the billboard data window) may be configurable, up to a “maximum size based on the available screen space,” suggesting that larger dialog boxes will be adjacent to the upper rows of icons. Klassen 151. Accordingly, we are not persuaded the Examiner impermissibly relied on hindsight, or otherwise erred, in finding Klassen teaches or suggests “displaying the retrieved billboard data in a window on the display screen adjacent to the GUI control” as recited in claim l.2 Appellants also argue the references fail to teach or suggest the claim 1 limitation “displaying an outline surrounding the selected GUI control and 2 We also note Selig teaches a preview window is drawn/popped up “adjacent to the icon that was clicked.” Selig 171; see also Final Act. 7—8. 6 Appeal 2016-002478 Application 13/084,887 the window such that the window and GUI control form a unified visual panel defined by the outline,” because “the selected GUI control 306 does not overlap with the dialog box” in Figure 6 of Klassen, and the Examiner’s “discussion in the rebuttal section of Selig adds nothing new.” Reply Br. 3; see also App. Br. 6 (contending, in Selig paragraph 71, “not that any outline is displayed at all, much less one that encompasses the preview icon’'’). Appellants point to Specification paragraph 32, Figure 3, item 360, and Figure 5, item 550, for showing the “displaying an outline” limitation of claim 1. See App. Br. 3. These figures describe an outline tying the selected tile and billboard (Fig. 5) by having the billboard 360 be placed next to, and share a border with, the selected GUI control 340 (Fig. 3). See Spec. 132. Thus, we agree with the Examiner that the combination of Klassen’s suggestion of a shared border with a selected icon and Selig’s teaching of a shared border with a selected icon is encompassed by the disputed limitation. See Ans. 26—27; Klassen, Figs. 6, 7 (depicting various sized dialog boxes overlapping with various icons in a screen of selectable icons); Selig, Fig. 7 (described in paragraph 71 and depicting selectable icon 705 inside an outline surrounding the preview icons and sharing a border with preview window 710), Fig. 10 (depicting the “Icon in Chrome” sharing a border with the “Logged in Status Window”). Thus, Appellants do not persuade us the Examiner erred in finding the combination of references teaches or suggests the “outline” limitation of claim 1. 7 Appeal 2016-002478 Application 13/084,887 Accordingly, we are not persuaded the Examiner erred in rejecting independent claim 1,3 Appellants further do not show error in the Examiner’s rejection of claims 7 and 8. See Reply Br. 2—3; see also Final Act. 8-11; Ans. 2U-33. Claim 15 Appellants argue the Examiner’s rejection of independent claim 15 “falls far short in establishing a rational basis for rejecting claim language that is nowhere taught or suggested in the relied-upon subject matter,” because, in the Answer, the Examiner’s analysis “boils down to [] Klassen teaches selecting a GUI element and Lin-Hendel teaches a mouse.” Reply Br. 4. We are not persuaded of error in the Examiner’s finding, at least because Appellants’ arguments do not identity, with particularity, errors in the Examiner’s findings and conclusions. Cf. In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Further, claim 15 requires presenting a settings dialog without launching the software application “in response to receipt of a second user action different from the first user action but input using the same input method as used to select the first GUI control.” The Examiner finds that “[b]oth [Klassen and Lin-Hendel] teach using a device to select graphical elements. For example, selecting one element using a cursor and then 3 Further, we note Klassen discloses an embodiment with a “message preview” that is adjacent to, and shares a border with, a related icon. See Klassen, Fig. 8, ^fl[ 11, 53. 8 Appeal 2016-002478 Application 13/084,887 selecting a second element using [a] cursor teaches using the same input method for two different things.” Ans. 35; see also Ans. 37; Klassen || 5, 49-50 (differentiating focusing on an icon and selecting the icon); Lin- Hendel ]Hf 3, 18. We agree with the Examiner, and we find that receiving different user actions using the same input method—on a device such as a computer, phone or PDA—is obvious to one of ordinary skill in the art as evidenced by the cited references. We also agree with the Examiner that the combination of references teach presenting, in response to a second user action, a settings dialog4 without launching a software application, within the meaning of the claim. See Ans. 36; Klassen || 49—50; Lin-Hendel 118. Accordingly, we are not persuaded the Examiner erred in rejecting independent claim 15. CONCLUSION We do not sustain the Examiner’s 35U.S.C. § 112, first paragraph rejection of claim 15, or the Examiner’s 35U.S.C. § 101 rejection of claims 15 and 18—20. We are not persuaded the Examiner erred in rejecting claims 1, 7, 8, and 15 under 35 U.S.C. § 103(a). We sustain the rejections of these claims, and the Examiner’s 35 U.S.C. § 103(a) rejections of the remaining dependent claims 2, 5, 6, 12—14, 18—20, and 26, as discussed above and for 4 Separately, we note claim 15 does not limit the “settings dialog” to be presented in response to a selection of the software application; we find the recited settings dialog does not preclude system settings “associated with the software application,” such as system configurations. See, e.g., Klassen || 51,53,61. 9 Appeal 2016-002478 Application 13/084,887 the reasons provided in the Final Action and the Examiner's Answer. See Final Act. 6—27; Ans. 24—52. DECISION The Examiner’s 35 U.S.C. § 112 rejection of claim 15 is reversed. The Examiner’s 35 U.S.C. § 101 rejection of claims 15 and 18—20 is reversed. The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1,2, 5—8, 12— 15, 18—20, and 26 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation