Ex parte Carleton et al.

Board of Patent Appeals and Interferences

Jan 30, 2001

08481230 (B.P.A.I. Jan. 30, 2001)

The opinion in support of the decision being entered today (1) was not written for
publication and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALLISON A. CARLETON, PAUL A. PETERSON, and
WILLIAM C. SCHWARTZ
____________
Appeal No. 1998-2983
Application No. 08/481,230
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-12 and
14-18, which are all of the claims pending in this application.
We AFFIRM-IN-PART.
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Application No. 08/481,230
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BACKGROUND
The appellants' invention relates to a method and apparatus for display of video
images in a video conferencing system. An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below.
1. In a computer having a screen, and being able to communicate with a remotely
located computer, a method of displaying a video image comprising the steps of:
a) creating a first type of window on said screen, said first type of window having an
image region and a control region, said control region being used for (1) establishing a
communication link with said remotely located computer during a first time period, and (2)
controlling a communication link with said remotely located computer during a second time
period which is different from said first time period;
b) creating a second type of window on said screen;
c) displaying the video image within said image region in said first type of window
during said second time period; and
d) displaying a graphics image in said second type of window, wherein said video
image displaying step is performed concurrently with said graphics image displaying step.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Maruo et al.(Maruo) EP-0410 378 Jan. 30, 1991
Myers, “Windows Interfaces- A Taxonomy of Window Manager User Interfaces,” IEEE
Computer Graphics and Applications, Vol. 8, No 5, pp 65-84 (Sept. 1988).
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IBM, “Person to Person, Personal conferencing - communications that work”, Ultimedia,
October 1991.
Claims 1-6, 9, 15, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maruo. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maruo in view of IBM. Claims 7-8, 14, 16, and 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Maruo in view of Myers.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 27, mailed May 11, 1998) for the examiner's reasoning in support of
the rejections, and to appellants’ amended brief (Paper No. 26 1/2, filed Oct. 14, 1997) for
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellants have grouped the claims in four separate groupings and provided
separate arguments thereto. (See brief at page 9.)
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The basic dispute between appellants and the examiner is based upon the
definition of the term “window” in the claims. (See brief at page 12.) Appellants rely upon
the express definition in the specification and the examiner relies upon the ordinary usage
in the relevant field.
Before addressing the examiner's rejections based upon prior art, it is an essential
prerequisite that the claimed subject matter be fully understood. Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. §§ 102 and 103 begins with a
determination of the scope of the claim. The properly interpreted claim must then be
compared with the prior art. Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878,
882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988). Accordingly, we will initially direct our
attention to appellants' claim to derive an understanding of the scope and content thereof.
Before turning to the proper construction of the claims, it is important to review
some basic principles of claim construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock Mfg. Co. v. Greenleaf, 117
U.S. 554, 559 (1886) ("The scope of letters patent must be limited to
the invention covered by the claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the specification."); Autogiro Co. of America
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v. United States, 384 F.2d 391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967) ("Courts can
neither broaden nor narrow the claims to give the patentee something different than what
he has set forth [in the claim]."). See also Continental Paper Bag Co. v. Eastern Paper
Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing Co. v. American Fur Ref. Co.,
198 U.S. 399, 410 (1905). Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary and accustomed meaning,
unless it appears that the inventor used them differently." Envirotech Corp. v. Al
George, Inc., 730 F.2d 753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984). Second, it is
equally "fundamental that claims are to be construed in the light of the specification and
both are to be read with a view to ascertaining the invention." United States v. Adams,
383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
Furthermore, the general claim construction principle that limitations found only in
the specification of a patent or patent application should not be imported or read into a
claim must be followed. See In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978). One must be careful not to confuse impermissible imputing of limitations from
the specification into a claim with the proper reference to the specification to determine the
meaning of a particular word or phrase recited in a claim. See E.I. Du Pont de Nemours
& Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129, 1131 (Fed.
Appeal No. 1998-2983
Application No. 08/481,230
The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by1
Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and
distribution restricted in accordance with the Copyright Law of the United States. All rights reserved. A
copy attached to decision.
6
Cir. 1988), cert. denied, 488 U.S. 986 (1988). What we are dealing with in this case is
the construction of the limitations recited in the appealed claims.
The specification expressly states that
[t]he term "window" as used herein means a region (usually rectangular) of a
computer display screen which the operating system of the computer grants
use of to an application. The window has associated controls which direct
the actions of the application. The size and location of the window on the
display screen can also be changed by the user of the computer.
A computer having the ability to display multiple windows provides
visual access to the application running in each of the windows. Typically,
the user of the computer can scale, move and otherwise arrange the
windows on the screen. (Specification at page 5.)
While we agree with appellants that the term “window” is specifically defined in the
specification. The generally accepted definition in the relevant area of the prior art does
not require that a “window has associated controls which direct the actions of the
application.” The term “window” is defined in The American Heritage® Dictionary of
the English Language as “a small area on a screen in which a file or a part of a file
can be displayed.” Furthermore, the Microsoft Press Computer Dictionary, Third1
Edition (1997) defines window as “[i]n applications and graphical interfaces, a portion of
the screen that can contain its own document or message. In window-based programs,
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A copy attached to decision.2
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the screen can be divided into several windows, each of which has its own boundaries and
can contain a different document (or another view into the same document).” These two2
definitions appear to agree with the examiner’s interpretation of “window” without any
associated control. We agree with the examiner that a “window” need not be required to
have any associated controls which direct the actions of the application.
With this said, we further find that any window from a MICROSOFT Windows
operating system which is opened on a computer screen necessarily would have some
controls associated with opening, closing or adjusting the window (whether or not the
controls are present within the window is a separate issue which we need not address
here). With respect to the location of the control of an application within a window, we
disagree with appellants’ implied argument that the claim language requires that there
be control associated with the window and the control must be within the window.
Specifically, dependent claim 6 recites activation of a control element in the first type of
window. Furthermore, to distinguish between each window having associated control,
independent claims 1, 5, 7, 9, 10, and 18 each recites a control region which specifically
requires the control functionality in one of the windows, but is silent with respect to the other
window(s). Therefore, we find that the language of the claims, given their ordinary and
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accustomed meaning, would not require a “window” to have any specific associated
controls or control area without explicit recitation thereof.
In our view, to require the association of control functions with each window would
be paramount to reading that limitation from the specification into the claim in view of the
ordinary and accustomed meaning of the term “window.” Appellants further argue that both
the first and second windows must have associated controls and have the ability to be
resized by the user. (See brief at page 13.) We disagree with appellants, as discussed
above.
With respect to the teachings and suggestions in Maruo, appellants again rely
solely upon the definition of “window” in the specification to distinguish the claimed
invention as recited in claim 1. (See brief at page 14.) We disagree with appellants.
Appellants further argue that the window is required to have the functionality that “the
size and location of the window on the display screen can also be changed by the
user of the computer.” (See brief at page 13.) We find no support for this limitation in the
express language of claim 1. Therefore, this argument is not persuasive.
With respect to claim 1, we note that Figure 6 shows the display menus according to an
embodiment of the invention. We note that the display of Maruo has areas:
111- common display, 112- other party dynamic picture area, 113- own dynamic picture
area, and 114- meeting progress menu display area. (See Maruo at col. 10, lines 23-29.)
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Area 114 contains controls associated with the window which directs the action of the
application.
With respect to the associated controls in the second window, the language of
claim 1 does not require that any associated control be present nor that the control be
within the window. We note that any independent window would have some control
associated therewith to allow the window to be closed and/or resized, if available.
Here, from the teaching of Maruo, the window areas are set in size, due to the
structured configuration of the display area. But, if the windows were to include
independent configurability, then there would have been a required function to control the
size along with the ability to close each window. Here, we disagree with appellants that the
language of claim 1 requires associated control with each of the two windows and further
that the language of claim 1 does not require that the “size and location of the [second]
window . . . be changed.” (See brief at page 13.)
Here, we note that appellants are relying on material within the specification for
patentability. We disagree with appellants’ use of a definition to incorporate additional
substantive limitations as to the functionality of the claimed invention as to the requirement
of associated controls and the ability to resize the window. Furthermore, this is especially
problematic when one window within the claim explicitly recites the presence of a control
region within the window and one window is silent as to a control region or any control
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functionality associated therewith. Here, we agree with the examiner that the ordinary
definition of a window is appropriate (see answer at page 13), and we find that appellants'
definition attempts to import substantial
limitations from the specification into the claim rather than to include an express limitation
in the language of the claim itself. Therefore, this argument is not persuasive.
The examiner relies upon the transition from Figures 1(A) to 1(B) where image of
both parties are simultaneously displayed in windows 112 and 113 where image 112 is
automatically (see Maruo at col 22, lines 21-27 and col. 23, lines 46-49) switched from
window 111/117 to window 112. Thereafter, window 111 is used for graphical display of
meeting materials. (See answer at pages 3-5.) ; (See Maruo figures 1(A), 1(B)
and 6.)
With respect to claims 2-4, appellants have not set forth separate arguments for
patentability of these claims, therefore, claims 2-4 fall with claim 1.
With respect to claim 5, Maruo teaches the automatic transfer of the video image
from the common image display area 111 to the other party dynamic picture image area
upon display of the principal picture 120 in figure 1(B). Again, appellants argue that the
associated controls are required by the definition of a window. Again, we disagree with
appellants. Therefore, this argument is not persuasive.
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With respect to claim 6, appellants argue that Maruo does not disclose or suggest
the “activating a control element in said first type of window to recreate said
second type of window.” We agree with appellants. While the examiner does not
address the language of claim 6, in the actual text of the rejection, the examiner discusses
claim 6 at page 14 of the answer. The examiner maintains that the language of claim 6 is
so broad as to read on starting a meeting a second time after the first meeting. (See
answer at page 14.) We disagree with the examiner since, in our view, this would not be a
recreating, but an initial creating of the window. Therefore, this argument by the examiner
is not persuasive, and we cannot sustain the rejection of claim 6.
With respect to claims 9, 15, and 18, appellants rely upon the argument with respect
to claim 1. Therefore, this argument is not persuasive and the claims fall with claim 1.
With respect to claims 10-12, appellants rely upon the argument with respect to
claim 1. Therefore, this argument is not persuasive and the claims fall with claim 1.
Appellants do not argue or discuss the combination of Maruo and IBM.
With respect to claim 7, appellants again argue the definition of a window in the
specification. We disagree with appellants. Clearly, the explanation mode selection
menu 505 of Maruo would have controls which allow the user to change the actual
drawing within the shared space/window. Therefore, we find this argument unpersuasive.
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With respect to claim 8, appellants rely upon the argument presented with respect
to claim 6 and the activation of a control to transfer the video picture back to a third type of
window. As with claim 6, the examiner has not addressed the language of claim 8 in the
rejection or in the response to the arguments section. Similarly, we cannot sustain the
rejection of claim 8 for the same reasons with respect to claim 6.
With respect to claims 14, 16 and 17, appellants rely upon the argued allowability of
claim 18 for patentability. We disagree with appellants as discussed above with respect
to claim 1, which is grouped with claim 18. Therefore, we sustain the rejection of these
claims for the same reasons with respect to claim 18.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-5, 7 and 9-12, and
14-18 under 35 U.S.C. § 103 is affirmed, and the decision of the examiner to reject claims
6 and 8 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
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Application No. 08/481,230
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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
jld/vsh
Appeal No. 1998-2983
Application No. 08/481,230
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