Ex Parte Cohen

Board of Patent Appeals and Interferences

Jan 5, 2010

10686487 (B.P.A.I. Jan. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GABRIEL A. COHEN
____________________

Appeal 2009-002079
Application 10/686,4871
Technology Center 2100
____________________

Decided: January 6, 2010
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and JAMES R.
HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed October 15, 2003. The real party in interest is IBM Corp.
(App. Br. 1.)
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STATEMENT OF THE CASE
The Appellant appeals the Examiner’s rejection of claims 1-16 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appellant’s Invention
Appellant invented a system, apparatus, and method for rendering a
portal user interface responsive to user interaction with portlets of the
interface and changes in portlet focus. (Spec. 1, ll. 5-6; 4, ll. 2-19.)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for indicating input focus in a portal
environment, the method comprising the steps of:
assigning an unfocused style to all unfocused portlets in a
portal except for a focused portlet having input focus;
further assigning a focused style to said focused portlet
having input focus;
rendering said focused and unfocused portlets in said
portal; and,
responsive to a new portlet in said portal acquiring said
input focus from said focused portlet, re-assigning said focused
style to said new portlet while re-assigning said unfocused style
to said focused portlet which no longer has input focus, and re-

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed October 2, 2007; and Reply Brief (“Reply Br.”) filed June 16, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed April 14, 2008.
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rendering said new portlet and said focused portlet which no
longer has input focus in said portal according to said styles.

References
The Examiner relies on the following reference as evidence of
unpatentability:
Gajewska US 2002/0175951 A1 Nov. 28, 2002

Ito US 2003/0084405 A1 May 1, 2003

Griffin US 2003/0126558 A1 Jul. 3, 2003

Fukuda US 2004/0107449 A1 June 3, 2004
(Filed Oct. 7, 2003)

Martin US 7,174,512 B2 Feb. 6, 2007
(Filed Nov. 28, 2001)

Rejections
The Examiner rejects claim 1 under 35 U.S.C. § 102(e) as anticipated
by Martin.
The Examiner rejects claim 12 under 35 U.S.C. § 102(e) as
anticipated by Fukuda.
The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as obvious in
view of Martin and Gajewska.
The Examiner rejects claims 6, 7, 10, 11, and 13 under 35
U.S.C. § 103(a) as obvious in view of Fukuda and Gajewska.3

3 We note that the Examiner rejects independent claim 6 in view of the
Fukuda and Gajewska references and dependent claim 8 in view of the
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The Examiner rejects claims 3 and 5 under 35 U.S.C. § 103(a) as
obvious in view of Martin, Gajewska, and Ito.
The Examiner rejects claims 9, 14, and 16 under 35 U.S.C. § 103(a) as
obvious in view of Fukuda, Gajewska, and Ito.4
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as obvious in
view of Martin, Gajewska, Ito, and Griffin.
The Examiner rejects claims 8 and 15 under 35 U.S.C. § 103(a) as
obvious in view of Fukuda, Gajewska, Ito, and Griffin.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief and Reply Brief,
we find the following claim groupings. Appellant argues independent claim
1 with respect to the § 102(e) rejection. (App. Br. 4-8.) Appellant argues

Fukuda, Gajewska, Ito, and Griffin references. The Examiner groups
dependent claims 10 and 11 with claim 6, rejecting these claims in view of
Fukuda and Gajewska even though these claims depend upon claim 8 (and
claim 9), which stands rejected over Fukuda, Gajewska, Ito, and Griffin.
Thus, it appears that the Examiner erred in grouping the rejected claims.
Appellant does not object to the rejection of these claims as improper, and
we interpret the Examiner’s rejection as rejecting the dependent claims over
each of the references cited with respect to the base claims. Accordingly, we
view the Examiner’s mistake as harmless error.

4 See note 3, supra. We note that the Examiner rejects claim 9 in view of
Fukuda, Gajewska, and Ito, even though this claim depends upon claim 8,
which stands rejected over Fukuda, Gajewska, Ito, and Griffin. Thus, it
appears that the Examiner erred in grouping the rejected claims. Appellant
does not object to the rejection of this claim as improper, and we interpret
the Examiner’s rejection as rejecting the dependent claim over each of the
references cited with respect to the base claim. Accordingly, we view the
Examiner’s mistake as harmless error.
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independent claim 12 with respect to the § 102(e) rejection. (App. Br. 8-14.)
Appellant also argues independent claim 6 with respect to the § 103(a)
rejection. (App. Br. 15-16; Reply Br. 8-9.) Appellant states that dependent
claim 2 (App. Br. 14), dependent claims 3 and 5 (App. Br. 16), and
dependent claim 4 (App. Br. 17) stand or fall with independent claim 1.
Appellant states that dependent claim 13 (App. Br. 15), dependent claims 14
and 16 (App. Br. 16), and dependent claim 15 (App. Br. 18) stand or fall
with independent claim 12. Appellant does not separately argue dependent
claims 7-11. (App. Br. 15-18.)
Thus, we address claims 1, 6, and 12, infra, and find that Appellant
has waived arguments with respect to dependent claims 2-5, 7-11, and 13-
16. In view of the Examiner’s incorrect claim groupings, we find that
dependent claims 7-11 stand or fall with independent base claim 6. (See
notes 3 and 4, supra.) We address only those arguments that Appellant
presents in the Briefs. Arguments that Appellant could have made but chose
not to make in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.”).

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Appellant’s Contentions5
Appellant contends that the Examiner improperly rejected claim 1 as
anticipated by Martin because the Martin reference doesn’t disclose
assigning styles to portlets. (App. Br. 5-7.) Similarly, Appellant contends
that the Examiner improperly rejected claim 12 as anticipated by Fukuda
because the Fukuda reference doesn’t disclose assigning styles to portlets.
(App. Br. 10.) Appellant also contends that the Examiner has failed to
present a prima facie obviousness rejection with respect to claims 6, 7, 10,
11, and 13 because the Examiner did not provide a sufficient rationale for
combining the Fukuda and Gajewska references under § 103. (App. Br. 15-
16; Reply Br. 8-9.)

Examiner’s Findings and Conclusions
The Examiner finds that the prior art discloses and/or teaches each
feature of Appellant’s claims (Ans. 3-24), and maintains that each of the
claims is properly rejected (Ans. 25-34). In particular, the Examiner finds

5 The Appellant makes numerous arguments related to office actions
preceding the office action dated July 2, 2007 (“Last Office Action”), and
references arguments made in response to the preceding office actions and
Appellant’s Appeal Brief filed February 28, 2007– see, e.g., App. Br. 6, 9-
14, 15-16. The Appellant currently appeals the Examiner’s rejection of
claims 1-16 in the Last Office Action. (App. Br. 1.) The rejections in the
Last Office Action are the only rejections before the BPAI on appeal. As
pointed out by the Examiner, the Last Office Action supersedes all previous
office actions and Appellant’s responses thereto. (Ans. 25.) Thus, the
rejections made in the preceding office actions and any corresponding
responses by Appellant are not before the BPAI, and we will not address any
of Appellant’s arguments related to office actions preceding the Last Office
Action.
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that both Martin (Ans. 4-5, 26-27) and Fukuda (Ans. 5-6, 27-29) disclose
assigning styles to portlets. The Examiner also provides a rationale for
combining Fukuda and Gajewski. (Ans. 11, 30-31.)

ISSUES
Based on Appellant’s contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are as follows.
1. Does Appellant establish that the Examiner erred in finding the
Martin reference discloses assigning styles to portlets?
2. Does Appellant establish that the Examiner erred in finding the
Fukuda reference discloses assigning styles to portlets?
3. Does Appellant establish that the Examiner failed to provide a
sufficient rationale for combining the Fukuda and Gajewska references
under § 103?

FINDINGS OF FACT (FF)
Martin Reference
1. Martin describes a communication system portal that provides
access to a variety of applications and/or services, such as digital television
systems. The portal presents a user navigable mosaic containing cells and
pages. Each cell represents a virtual object and underlying application.
When a user selects a cell, the underlying application is launched. (Col. 1,
ll. 18-22; col. 1, l. 56 to col. 2, l. 18; Figs. 1A, 5A-5D.)
2. Martin describes user selectable (de-selectable) cells that gain
and lose a user’s focus. When a user selects or highlights a cell, the
appearance of the cell changes, e.g., the cell is highlighted, a frame indicates
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the currently selected cell, and/or text describing the underlying application
may be displayed. (Col. 2, ll. 1-18; col. 3, ll. 19-63; Figs. 1A, 5A-5D.)
Specifically, Martin states that:
When a cell is selected (gains focus), the recorded program
associated with the selected cell can be played back within the
cell. When the currently selected cell is deselected (e.g., focus
is gained by another cell), the playback of the recorded program
within the now-deselected cell is stopped.

Using an input device (such as directional keys on a remote
control or on a keypad of an STB), a user can position an
indicator (e.g., a cursor, a highlight, a frame, etc.) to select one
of cells 104. As cells gain/lose focus, the audio output by the
television speaker(s) changes and the application or program
description text is changed to correspond to the cell currently
having focus. Pressing an "OK" or "Enter" key of the input
device when the indicator is associated with a particular one of
the cells launches the application underlying that cell.
(Col. 3, ll. 36-40, 45-54.)

Fukuda Reference
3. Fukuda describes a television broadcast and service receiving
system that receives television broadcasts and other services such as
streaming video and audio data via a variety of media. The
programs/services are displayed in a display including a multi-screen
program and/or a Broadcast Markup Language (BML) carousel. The multi-
screen program display includes multiple views of the streaming programs
selectable by a user by moving a focus. (P. 1, ¶¶ [0001], [0006]-[0010]; p.
2, ¶¶ [0029], [0031], [0035]; p. 3, ¶ [0061]; pp. 3-4, [0064], [0065]; Figs. 3,
7.)
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4. Fukuda describes user selectable (de-selectable) streaming
programs that gain and lose a user’s focus. Fukuda explains that the
appearance of the program (frame) changes when a user moves the focus
onto a program (frame). Fukuda uses a focus style, which is specified by a
style sheet, to distinguish the program frame that is focused. (PP. 3-4,
[0061], [0064]; Figs. 3, 7.) Specifically, Fukuda states that:
Streaming programs are represented by frames 702. Each of
the streaming programs 702 has a program title 703 which is
described in BML as characters. A streaming program selected
by a user is distinguished using a focus 704, and the focus 704
can be shifted by using the cursor keys 202 of the remote
control unit 116. A navigation index and focus style are used to
clearly show which streaming program frame 702 is focused,
and to precisely describe how the focus 704 moves . . . . The
focus style is configured such that a style sheet is used to
specify the style of the focus, thus allowing a user to distinctly
know where the focus 704 is applied.
(P. 5, ¶ [0064].)

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA
1967)). The Examiner bears the initial burden of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“[o]n appeal to the Board, an applicant can overcome a rejection by
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showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375
(Fed. Cir. 2005)(citation omitted).

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
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art,” and stated 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, 550 U.S. at 415-16. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.

ANALYSIS
Issue 1: Rejection of claim 1 under 35 U.S.C. § 102(e)
Martin describes a portal that presents a user navigable mosaic of user
selectable (de-selectable) cells that gain and lose a user’s focus and change
appearance accordingly, e.g., the cell is highlighted, a frame indicates the
currently selected cell, and/or text describing the underlying application
changes. (FF 1-2.) Martin explicitly describes that its “cells gain/lose
focus,” that “a cell is selected (gains focus),” and that the “currently selected
cell [may be] deselected (e.g., focus is gained by another cell).” (FF 2.)
Thus, we find that an ordinarily-skilled artisan would have understood
Martin to describe a system and method by which portal cells gain and lose
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user focus, i.e., become focused and unfocused, and change appearance
accordingly.
Appellant, however, contends that the Martin reference does not
disclose assigning an unfocused style to unfocused portlets (App. Br. 5-6),
nor a focused style to a focused portlet (App. Br. 6), nor re-assigning a
focused style and an unfocused style when a new portlet acquires focus
(App. Br. 6-7), i.e., “assigning styles to portlets, focused or not” (App. Br.
7).
The Examiner finds that Martin discloses assigning (re-assigning)
styles to portlets. (Ans. 4-5, 26-27.)
Accordingly, we decide the question of whether the Martin reference
discloses assigning styles to (focused and unfocused) portlets.
We determine the scope of the claims in patent applications not solely
based on the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the [S]pecification” and “in light of
the [S]pecification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
Appellant explains that portlets “are the visible active components
included as part of portal pages . . . . [E]ach portlet in a portal occupies a
portion of the portal page through which the portlet can display associated
content . . . . [And is] known to include . . . applications . . . .” (Spec, 1, l. 16
to 2, l. 3). Appellant does not explicitly define the terminology “assigning,”
“focus,” or “style,” but does explain that:
The single portlet having the unique content rendering style can
be the portlet which enjoys user input focus. Each portlet
disposed within a portal can be configured to detect when the
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portlet has acquired the user input focus. Upon acquiring focus,
the portlet can call globally accessible logic for shifting the
unique content rendering style from the portlet which
previously had input focus, to the portlet which acquired the
user input focus. Conversely, the portlet which previously had
enjoyed user input focus can be re-rendered according to the
content rendering style of the portlets which do not enjoy the
user input focus.
(Spec. 8, ll. 6-13.)
In each case, the style can include any visual arrangement, such
as the inclusion of a specialized icon within the view, the
disposition of indicative text within the view (e.g.
"FOCUSSED" and "UN-FOCUSSED"), or any other visual
means.
When the user transitions focus from the first portlet application
130 to the second portlet application 140, for instance by
"tabbing over" to the second portlet application 130, or by
selecting the second portlet application 130 using a pointing
device, the portal form 120 can be re-drawn . . . .
(Spec. 9, ll. 3-10.)
Thus, we interpret “assigning an unfocused style” to “unfocused
portlets” to mean designating a first appearance (unfocused style) to
unselected portions of a portal. We interpret “assigning a focused style” to a
“focused portlet” to mean designating a second appearance (focused style) to
a selected portion of a portal. And we interpret “re-assigning” focused and
unfocused styles to newly focused or unfocused portlets to mean designating
a first appearance to unselected portions of a portal and a second appearance
to a selected portion of a portal. Accordingly, we broadly but reasonable
interpret that assigning styles to focused and unfocused portlets means
designating a first appearance to unselected portions of a portal and a second
appearance to a selected portion of a portal. Such a broad construction is
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particularly warranted in view of Appellant’s disclosure that a style may
include any visual arrangement and/or means.
After reviewing the record on appeal, we find the Martin reference
discloses the disputed limitations. We agree with the Examiner that Martin
teaches each of the recited features. We are not persuaded by Appellant’s
contrary arguments that Martin does not disclose the disputed features, and
in particular is silent as to assigning styles to portlets.
Martin does not explicitly state that it assigns styles to portlets.
However, as we explained supra, we find an ordinarily-skilled artisan would
have understood Martin to describe a system and method by which portal
cells – portlets – gain and lose user focus and change appearance in
accordance with the focus – i.e., Martin designates a first appearance to
unselected portions of a portal and a second appearance to a selected portion
of a portal. With regard to the use of the terms “assigning,” “style,”
focused,” “unfocused,” and “portlet,” we are guided by In re May, 574 F.2d
1082, 1090 (CCPA 1978) (citing In re Schaumann, 572 F.2d 312, 317
(CCPA 1978) (“A reference does not fail as an anticipation merely because
it does not contain a description of the subject matter of the appealed claim
in ipsissimis verbis.”) We also note that a prior art reference that achieves
the same result in the same manner anticipates the disputed limitation. See
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-1269 (Fed. Cir.
1991) (“If, however, the disclosure is sufficient to show that the natural
result flowing from the operation as taught would result in the performance
of the questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient.”); Tate Engineering, Inc. v. United States,
477 F.2d 1336, 1342, (Ct. Cl. 1973) (“To anticipate, a prior art reference
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must disclose each and every element of a claimed combination, or its
equivalents, and the element must function in substantially the same way to
produce substantially the same result.”).
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s anticipation rejection of claim 1. Accordingly, we affirm the
Examiner’s rejections of this claim.

Issue 2: Rejection of claim 12 under 35 U.S.C. § 102(e)
Fukuda describes system for receiving streaming programs that
displays the streaming programs in a multi-screen program and/or a BML
carousel. The user selects (focuses on) a streaming program by moving a
focus (appearance) that distinguishes the selected streaming program frame.
Fukuda uses a focus style, which is specified by a style sheet, to distinguish
the program frame that is focused. (FF 3-4.) Thus, we find that an
ordinarily-skilled artisan would have understood Fukuda to describe a
system and method by which streaming program frames in a multi-screen
program gain and lose user focus, i.e., become focused and unfocused,
change appearance accordingly, and that the focused appearance is specified
by a style sheet.
Appellant, however, contends that the Fukuda reference does not: (1)
“illustrate portlets in a portal environment” (App. Br. 10); (2) disclose
assigning a focused or an unfocused style sheet to portlets (App. Br. 9, 10);
or (3) re-assigning a focused style sheet and an unfocused style sheet when a
new portlet acquires focus (App. Br. 13-14).
The Examiner finds that Fukuda discloses assigning (re-assigning)
style sheets to portlets. (Ans. 5-6, 27-29.)
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Accordingly, we decide the question of whether the Fukuda reference
discloses assigning style sheets to (focused and unfocused) portlets.
As we explained supra with respect to claim 1, we give claims “their
broadest reasonable interpretation.” Am. Acad. of Sci. Tech Ctr., 367 F.3d at
1364. Thus, we interpret “assigning an unfocused style sheet” to “unfocused
portlets” to mean designating a first appearance (unfocused style) specified
by a style sheet to unselected portions of a portal. We interpret “assigning a
focused style sheet” to a “focused portlet” to mean designating a second
appearance (focused style) specified by a style sheet to a selected portion of
a portal. And we interpret “re-assigning” focused and unfocused style sheets
to newly focused or unfocused portlets to mean designating a first
appearance specified by a style sheet to unselected portions of a portal and a
second appearance specified by a style sheet to a selected portion of a portal.
To summarize, we broadly but reasonably interpret that assigning style
sheets to focused and unfocused portlets means designating a first
appearance specified by a style sheet to unselected portions of a portal and a
second appearance specified by a style sheet to a selected portion of a portal.
After reviewing the record on appeal, we find the Fukuda reference
discloses the disputed limitations. We agree with the Examiner that Fukuda
teaches each of the recited features. We are not persuaded by Appellant’s
contrary arguments that Fukuda does not disclose the disputed features, and
in particular, assigning the unfocused style sheet to unfocused portlets.
Fukuda does not explicitly state that it assigns style sheets to portlets,
or an unfocused style sheet to unfocused portlets. However, as we explained
supra, we find an ordinarily-skilled artisan would have understood Fukuda
to describe a system and method by which streaming program frames in a
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multi-screen program gain and lose user focus, change appearance
accordingly, and that the focused appearance is specified by a style sheet.
We find unavailing Appellant’s argument that Fukuda’s focus is not
applied to the frames, but is instead a separate object. (App. Br. 12-13.) It is
unclear how this argument distinguishes Fukuda from the disputed claim
limitations. Fukuda describes that a streaming program is distinguished by
the focus, which can be shifted by the user, and which is specified by a style
sheet. (FF 4.) Therefore, the selected (focused) streaming program frame
(portlet) has an appearance (style) designated by a style sheet – i.e.,
assigning a focused style sheet to a focused portlet. This focused appearance
is distinguished (different) from the other streaming program frames
(unfocused portlets). Thus, although not explicitly disclosed, Fukuda
inherently discloses that the unselected (unfocused) streaming program
frames (portlets) have a corresponding style/style sheet – i.e., an “unfocused
style sheet.” This unselected/unfocused style (style sheet) is applied to the
rest of the streaming program frames in the multi-screen program display.
As with claim 1, supra, we find that although Fukuda does not
explicitly mention “assigning,” an “unfocused style sheet,” or “portlets,”
these features are disclosed. See May, 574 F.2d at 1090; Continental Can,
948 F.2d at 1268-1269.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s anticipation rejection of claim 12. Accordingly, we affirm
the Examiner’s rejections of this claim.

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Issue 3: Rejection of claim 6 under 35 U.S.C. § 103(a)
Appellant contends that Examiner did not provide a sufficient
rationale for combining the Fukuda and Gajewska references under § 103.
(App. Br. 15-16; Reply Br. 8-9.) After reviewing the record on appeal, we
agree with Appellant that the Examiner has not provided a sufficient
rationale for combining Fukuda and Gajewska.
Although the Examiner articulates a rationale for combining the
Fukuda and Gajewska references – that the teachings are from the same field
of endeavor, both references teach focused and unfocused elements, and
Gajewska teaches a focus list (a feature lacking in Fukuda) – this rationale
merely reiterates the teachings of the references. This is not simply a
situation of combining prior art elements according to known methods to
achieve predictable results, a simple substitution of known elements, or the
use of a known technique used to improved similar products. See KSR, 550
U.S. at 1741. Rather, Fukuda is directed to a receiver displaying a multi-
screen program and/or a Broadcast Markup Language (BML) carousel, and
Gajewska is directed to a Java TM platform implemented Focus List
(Gajewska, ¶¶ [0012]-[0013], [0021], [0042]-[0044].) It is unclear from the
Examiner’s rationale why a technician of ordinary skill in this art would
consult the particular reference documents or how the technician would use
the teachings gleaned therefrom to incorporate the global indicator (Focus
List) of Gajewska into the display system of Fukuda.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claim 6 and dependent
claims 7-11. Accordingly, we will not sustain the Examiner’s rejections of
these claims.
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CONCLUSION OF LAW
On the record before us, we find that Appellant has not established
that the Examiner erred in finding the Martin reference and the Fukuda
reference disclose assigning styles to portlets.
On the record before us, we find that Appellant has established that
the Examiner failed to provide a sufficient rationale for combining the
Fukuda and Gajewska references under § 103.

DECISION
We affirm the Examiner’s rejections of claims 1-5 and 12-16 under 35
U.S.C. § 102(e).
We reverse the Examiner’s rejections of claims 6-11 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)(iv).

AFFIRMED-IN-PART

erc

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