Ex Parte Chan

Patent Trial and Appeal Board

Nov 12, 2013

11025492 (P.T.A.B. Nov. 12, 2013)

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.
11/025,492 12/29/2004 Wilson Chan AD01.B034 3771
111003 7590 11/12/2013
Adobe / Finch & Maloney PLLC
50 Phillippe Cote Street
Manchester, NH 03101
EXAMINER
PILLAI, NAMITHA
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
11/12/2013 PAPERPAPER
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 WILSON CHAN
____________________

Appeal 2011-0029271
Application 11/025,492
Technology Center 2100
____________________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Adobe Systems, Inc. (App Br. 2.)
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3-7, 9-14, and 16-25. Claims 2, 8, and 15 have
been canceled. (App. Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for manipulating a plurality
of mouse cursors within a viewable area of a computer. (Spec. [0001].) In
particular, when a user selects a first mouse cursor (50a), user data
associated therewith is also selected thereby rendering the first mouse cursor
(50a) as the only active cursor capable of movement within the viewable
area (60a). Upon selecting a second cursor (50b), the association of the user
data is changed from the first mouse cursor to the second mouse cursor
thereby rendering the second cursor as the only active cursor capable of
movement in the viewable area. (Spec. [0022].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for manipulating a plurality of user input
device pointers in the viewable area of a computer, comprising:
displaying a plurality of user input device pointers within
the viewable area, only a first of which is active, wherein the
active user input device pointer depicts the current location
within the viewable area resulting from interaction with a user
input pointing device;
performing a selection operation to associate selected
data with the first user input device pointer while the user input
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device pointer is active, wherein while the first user input
device pointer is active: the first user input device pointers is
capable of movement throughout the entirety of at least a
portion of the viewable area using an input pointing device, and
the other user input device pointers can be selected by the user
and can be made moveable using the input pointing device but
are presently inactive and incapable of movement using the
input pointing device;
subsequent to said associating, selecting a second user
input device pointer, different from the first user input device
pointer; and
in response to said selecting:
rendering the second user input device pointer
active and capable of movement throughout the entirety
of at least a portion of the viewable area using the input
pointing device, wherein the other user input device
pointers of the plurality of user input device pointers
aside from the second user input device pointer are
inactive and incapable of movement while the second
user input device pointer is active;
changing the association of the selected data
associated with the first user input device pointer from
the first user input device pointer to the second user input
device pointer;
moving the second user input device pointer, wherein the
data associated with the second user input device pointer
remains associated with the second user input device pointer
during said moving.

Prior Art Relied Upon
Barber US 5,586,243 Dec. 17, 1996
Hansen US 2003/0090521 A1 May 15, 2003
Ludwig US 2005/0179655 A1 Aug. 18, 2005

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Rejection on Appeal
The Examiner rejects claims 1, 3-7, 9-14, and 16-25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hansen, Ludwig,
and Barber.
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 14-31, and the Reply Brief, pages 2-13.
Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that Hansen, Ludwig, and Barber are properly combined to teach or
suggest in response to selecting a second user input device pointer,
(1) changing the association of the data associated with a first user input
device pointer to the second user input device pointer, and (2) upon moving
the second user input device pointer, the selected data is moved therewith, as
recited in claim 1?
Appellant argues that the proposed combination of references does not
teach or suggest the disputed limitations emphasized above. (App. Br. 14-
23; Reply Br. 2-7.) According to Appellant, Ludwig’s disclosure of a single
mouse click to perform a cut and paste operation teaches moving the data
location of a fist cursor to the location of a second cursor in response to the
mouse click. However, Appellant submits that Ludwig’s cursors are
selected prior to the mouse click, and not in response thereto. Further,
Appellant argues that Ludwig’s cursors are simultaneously active, and are
capable of movement, as opposed to only the selected cursor being active
while all others are not. (App. Br. 14-17.) Appellant also argues that
Barber’s disclosure of moving control from one pointer to another pointer,
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and designating a window associated therewith as being active does not
teach that data associated with a cursor remains therewith after the move.
(App. Br. 18.) Additionally, Appellant argues that there is insufficient
rationale to combine the teachings of the cited references, as the proposed
combination would counter the required operation thereof. (Id. at 19-23.)
In response, the Examiner finds Ludwig’s disclosure of changing the
association of selected data from a first cursor to a second cursor in response
to a single mouse click complements Hansen’s disclosure of rendering all
other cursors inactive and incapable of movement once a cursor has been
activated. (Answer 24-25.) Further, the Examiner finds that Barber’s
disclosure of associating a cursor with an active window to thereby preserve
such association during a move of the window complements the Hansen-
Ludwig combination to teach or suggest the disputed limitations. Therefore,
the Examiner concludes that the combination is proper. (Id. at 26-27.)
Based upon our review of the record before us, we find no error with
the Examiner’s obviousness rejection regarding claim 1. We note at the
outset that there is no material dispute as to the individual teachings of
Hansen, Ludwig, and Barber, as stipulated by both Appellant and the
Examiner. Rather, Appellant disputes the Examiner’s finding that the
disclosures of Hansen, Ludwig, and Barber teach or suggest the disputed
limitations. Further, Appellant disputes the Examiner’s conclusion that one
of ordinary skill in the art would have found sufficient motivation to
combine the teachings of Ludwig and Barber with Hansen’s to yield the
disputed limitations of claim 1. (App. Br. 14-23; Reply Br. 2-7.) Therefore,
the pivotal issue before us turns on whether the combination of the afore-
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cited teachings of Hansen, Ludwig, and Barber as proposed by the Examiner
would be proper within the context of obviousness to teach or suggest the
disputed limitations. We answer this inquiry in the affirmative. The U.S.
Supreme Court has held 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.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combine the known elements in the fashion claimed
by the patent at issue.

Id. at 418.
Additionally, the Court instructs that:
[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted) (internal quotation marks omitted).
We find that the ordinarily skilled artisan, being a creative individual
would have been able to fit the teachings of Hansen, Ludwig, and Barber
(including established knowledge in the art) together like pieces of a puzzle
to predictably result in the disputed limitations. In particular, we agree with
the Examiner that Ludwig’s disclosure of a single mouse click to perform a
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cut and paste operation, which moves data from one cursor to another
(¶ [0217]), teaches changing the association of selected data from a first
cursor to a second cursor in response to the mouse click. (Answer 24.)
Figures 13a and 13b of Ludwig are reproduced below:

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Figures 13a and 13b illustrate a technique for using two cursors in a
text cut-and-paste operation.
As depicted in Figure 13a above, data is selected and associated with
the first cursor (1320) while it is active. As shown in Figure 13b above,
upon the user effectuating the single mouse click next to the second cursor
(1351), the selected data is pasted in the location indicated by the single
mouse click to thereby change the association of the selected data from the
first cursor (1320) to the second cursor (1351). We thus do not agree with
Appellant that the cursors are selected prior to the mouse click. (App. Br.
15.) While both cursors are known ahead of time, the association change of
the selected data (pasting operation) does not occur until after issuance of
the single mouse click, which serves to both select the second cursor and to
paste the selected data thereto.
Appellant’s argument that both cursors in Ludwig are simultaneously
active, as opposed to one at a time (id. at 15-16) is unpersuasive because
Hansen was relied upon for such teaching. (Answer 25). Similarly, we find
misplaced Appellant’s argument that Barber’s disclosure of shifting control
from a first cursor to a second cursor does not teach one cursor being active
at a time. (App. Br. 18.) Likewise, we find unavailing Appellant’s
argument that Barber teaches associating with a second pointer data
previously associated with a first pointer, such change in the data association
does not result in response to selecting the second pointer. (App. Br. 19.) In
considering the general form of Appellant’s arguments in the principal Brief,
Appellant appears to have attacked the individual teachings of Hansen,
Ludwig, and Barber separately, as opposed to the combined disclosures
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proffered by the Examiner. We note that one cannot show nonobviousness
by attacking the references individually where the rejections are based on
combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Here, the respective references relied on by the Examiner must
be read, not in isolation, but for what the combination teaches or suggests
when considered as a whole. We find nonetheless that the cumulative
weight and the totality of the evidence on this record favor the Examiner’s
position that the combined disclosures of Hansen, Ludwig, and Barber
would have taught or suggested the disputed limitations. Thus, we are
satisfied that Barber’s disclosure of shifting control from one cursor to
another would complement the Hansen-Ludwig combination to predictably
result in a system whereupon a second cursor is activated, data previously
associated with a first cursor is transferred to the second cursor, which
retains the associated data during a subsequent move.
Regarding Appellant’s lack of motivation argument, we note that
while it may be necessary for an Examiner to identify a reason for modifying
the familiar elements obtained from the prior art in establishing a prima
facie case of obviousness, the identification of such a reason is not a sine
qua non requirement. So long as the Examiner provides an articulated
reasoning with some rational underpinning to substantiate the obviousness
rejection, such a conclusion is proper. In this case, the Examiner provides
more than just a mere conclusory statement. The Examiner notes that at the
time of the claimed invention, an ordinarily skilled artisan would have
combined Ludwig with Hansen to transfer selected data between multiple
cursors. (Answer 5, 25.) Further, the Examiner notes that Barber’s teaching
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would allow users of the Hansen-Ludwig combination to move a cursor
along with transferred data associated therewith. (Answer 6, 26.) In our
view, each of such statements suffices as an articulated reason with a
rational underpinning to support the proffered combination. As noted above,
the case law allows the Examiner to look to the state of the prior art,
including the knowledge of the ordinarily skilled artisan to arrive at such a
reason for combining the known elements of the prior art. Consequently, the
Examiner’s reliance upon widely available knowledge in order to arrive at
an articulated reason with a rational underpinning to support the proffered
combination is proper.
Further, we do not agree with Appellant that Ludwig’s disclosure of
the cursors being simultaneously active would render Hansen’s disclosure of
one cursor being active at a time unsuitable for its intended purpose. (App.
Br. 20-22.) While the two cursors disclosed in Ludwig may both be active
in one instance, we find no requirement, nor has Appellant pointed to any
portion in Ludwig mandating that the cursors operate in that fashion. We
note Appellant’s argument that, upon activating a second cursor, Ludwig
does not disclose de-activating a first cursor that was previously active.
(App. Br. 16.) However, beside the cited inference, Appellant has not
shown otherwise any portion of Ludwig that indicates that the cursors are in
fact simultaneously active. Therefore, Appellant’s argument is deeply
seated in conjecture, and opposed to the actual teachings in Ludwig.
Consequently, we find equally reasonable the Examiner’s finding that
because one cursor is used for copying/cutting, and the other is used for
pasting, Ludwig’s cursors are active one at a time. (Answer 25.) Further,
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even if Ludwig disclosed that the cursors are simultaneously active, such
disclosure would not render Hansen’s operation of the cursors unsuitable for
its intended purpose. Rather, it would merely provide an alternative way of
manipulating the cursors. Accordingly, we find unavailing Appellant’s
argument that Ludwig’s disclosure would render Hansen’s solution
unsuitable for its intended purpose or that it teaches away from the same.2 It
follows that Appellant has not shown error in the Examiner rejection of
claim 1.
Regarding claims 3-7, 9-14, and 16-25, Appellant reiterates
substantially the same arguments submitted for patentability of claim 1
above. (App. Br. 22-31; Reply Br. 8-13.) As discussed above, these
arguments are not persuasive. See 37 C.F.R. § 1.37(c)(1)(vii). Further,
while Appellant raised additional arguments for patentability of the cited
claims, we find that the Examiner has rebutted in the Answer each of those
arguments by a preponderance of the evidence. (Ans. 27-28.) Therefore, we
adopt the Examiner’s findings and underlying reasoning, which are

2 An argument that the system is rendered “unsuitable for its intended
purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (concluding that in effect, “French teaches away from the
board’s proposed modification” because “if the French apparatus were
turned upside down, it would be rendered inoperable for its intended
purpose”). The Federal Circuit has held “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)) (internal quotation marks omitted).
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incorporated herein by reference. Consequently, Appellant has failed to
show error in the Examiner’s rejections of claims 3-7, 9-14, and 16-25.

ADDITIONAL ISSUE
We note claims 20-23 recite a computer-readable medium and claims
24 and 25 recite a computer-readable storage medium. However,
Appellant’s Specification does not define computer-readable medium or
computer-readable storage medium to exclude transitory media.
Consequently, the claimed media encompass transitory media, which is not
patent eligible. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential). In the event of further prosecution, the Examiner should
consider rejecting claims 20-25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

DECISION
We affirm the Examiner’s rejection of claims 1, 3-7, 9-14, and 16-25
as set forth above.
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

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