Ex Parte Cowham

Board of Patent Appeals and Interferences

Dec 6, 2011

10981654 (B.P.A.I. Dec. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ADRIAN COWHAM
____________
Appeal 2009-013579
Application 10/981,6541
Technology Center 2100
____________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on November 5, 2004. The real party in interest is Hewlett-Packard
Development Co. L.P. (App. Br. 3.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s Final Rejection of claims 1-20. (App. Br. 3.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method and system for providing a temporary
visual indicator to items in a list. (Spec. ¶ [001].)
Illustrative Claim
1. A method for temporary visual indication of added
items in a list, comprising the steps of:
receiving an item to be presented in a list to be displayed
to a user;
adding the item to the list to be displayed to the user;
applying a temporary visual indicator to the received
item in the list; and
removing the temporary visual indicator from each item
in the list having a visual indicator applied, in response to user
interaction with the list.

Prior Art Relied Upon
“Windows XP to Take the PC to New Heights,” (Aug. 24, 2001) 1-4,
available at http:www.microsoft.comp/presspass/press/2001/aug01/08-
24WinXPRTMPR.msp (last visited Dec. 1, 2011).

Microsoft Windows XP Operating System (Aug. 24, 2001), Figs. 1-6
(hereinafter “MWXP”).

Rejections on Appeal
Claims 1-12 and 15-19 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by MWXP. (Ans. 3-7.)
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Claims 13, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MWXP. (Ans. 7-9.)
Appellant’s Contentions
Appellant contends that the “temporary visual indicator” recited in
independent claim 1 is clearly defined in the present Specification. (App.
Br. 8.) In particular, Appellant argues that since the present Specification
defines a “temporary visual indicator” as an indicator which is different than
that applied to indicate a selection, the Examiner incorrectly relied upon
MWXP to describe the disputed claim term. (Id.) Moreover, Appellant
alleges that the claimed invention applies and removes the temporary visual
indicators of each item in the received list in response to user interaction
with the list, whereas MWXP disclosure only appears to be related to
selected items. (Id. at 9.) Consequently, Appellant contends that since a
selected item indication is not within the scope of the claimed “temporary
visual indicator,” the Examiner’s anticipation rejection should be reversed.
(Id.)
In response to the Examiner’s Answer, Appellant reiterates that the
present Specification clearly provides a definition for the claim term
“temporary visual indicator,” and does not provide a description for a
preferred embodiment. (Reply Br. 3-4.) Consequently, Appellant maintains
the MWXP fails to describe a “temporary visual indicator” that is different
from the selected and non-selected visual indicators of an item. (Id. at 4.)
Examiner’s Findings and Conclusions
The Examiner finds that the portion of the present Specification relied
upon by Appellant to define the “temporary visual indicator” recited in
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independent claim 1 merely describes a preferred embodiment. (Ans. 9.) In
particular, the Examiner finds that since the present Specification explicitly
discloses that the “the terms ‘temporary visual indicator’ [are] intended to
include a visual indicator different from the selected and non-selected visual
indicators of an item,” it does not provide a clear definition because such
words are not limiting. (Id. at 9-10)(emphasis in original.) Rather, the
Examiner finds that the present Specification merely states that the claimed
“temporary visual indicator” is intended to be inclusive of a visual indicator
that is different, and can include a temporary visual indicator that is the same
as the visual indicator used for the selected and non-selected items. (Id. at
10.) Consequently, the Examiner finds that since MWXP discloses both
adding items to a list with a temporary visual indicator (i.e., in this case a
highlight), and removing the temporary visual indicator after a user interacts
with the list, MWXP describes both applying and removing the “temporary
visual indicator,” as required by independent claim 1. (Id. at 10-11.)

II. ISSUE
Did the Examiner err in finding that MWXP anticipates independent
claim 1? In particular, the issue turns on whether MWXP describes the
following claim limitations recited in independent claim 1:
(a) “applying a temporary visual indicator to the received item in
the list;” and
(b) “removing the temporary visual indicator from each item in the
list having a visual indicator applied, in response to user interaction with the
list.”

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III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
MWXP
FF 1. MWXP’s figure 1 illustrates an initial list of items in a first
window. (See figure 1.)
FF 2. MWXP’s figure 2 illustrates selecting two items from the list
located in the first window and transferring each item to a second window.
(See figure 2.) After transferring the two selected items to the second
window, MWXP discloses highlighting each item and changing the font.
(Id.)
FF 3. MWXP’s figure 3 illustrates removing both the highlighting
and the font change from an item in the second window after the user
interacts with the second window. (See figure 3.)

IV. ANALYSIS
35 U.S.C. § 102(b) Rejection
Claims 1 and 15
We do not find error in the Examiner’s anticipation rejection of
independent claim 1. Independent claim 1 recites, inter alia, 1) “applying a
temporary visual indicator to the received item in the list;” and 2) “removing
the temporary visual indicator from each item in the list having a visual
indicator applied, in response to user interaction with the list.”
First, we consider the scope and meaning of the claim term “a
temporary visual indicator,” which must be given the broadest reasonable
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interpretation consistent with Appellant’s disclosure. As explained in In re
Morris, 127 F.3d 1048 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating
that during examination “claims must be interpreted as broadly as their terms
reasonably allow”). Appellant’s Specification states that:
[f]or example, the temporary visual indicator may be a
highlighting, background and/or foreground color
modification, text style, color, size, or other formatting of the
event message in the event list. In particular, the temporary
visual indicator is different than that applied to indicate
selection of the event message in the event list by the user. The
terms “temporary visual indicator” is intended to include a
visual indicator different from the selected and non-selected
visual indicators of an item. The visual indicator is temporary
in that any user interaction with the list causes the removal of
the temporary visual indicator applied from all items in the list.

(Spec. ¶ [027])(emphasis added.)
Upon reviewing Appellant’s Specification for context, we agree with
the Examiner that Appellant only alludes to a preferred embodiment that
describes the claim term “temporary visual indicator” as an indicator which
is different than that applied to indicate a selection. See In re Paulson, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (an inventor must define specific terms
with “reasonable clarity, deliberateness, and precision” in order to be his
own lexicographer, as opposed to merely describing “in a general fashion
certain features”). While we construe “a temporary visual indicator” with its
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broadest reasonable interpretation in light of Appellant’s Specification, we
nonetheless decline to confine our claim construction of “a temporary visual
indicator” to this preferred embodiment. To do otherwise would
impermissibly import limitations from Appellant’s Specification into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Rather,
we find that the claim term “temporary visual indicator” may be broadly, but
reasonably construed as any highlighting or background/foreground color
modification to an item in a list.
As detailed in the Findings of Fact section, MWXP discloses an initial
list of items located in a first window. (FF 1.) After adding two items from
the initial list of items to a second window, MWXP discloses highlighting
each item and changing their respective font. (FF 2.) Therefore, in light our
claim construction supra, we find that MWXP’s disclosure of both
highlighting and changing the font of each received item in a list describes
“applying a temporary visual indicator to the received item in the list,” as
recited in independent claim 1. Moreover, after a user interacts with the
second window, MWXP discloses removing both the highlighting and the
font change. (FF 3.) Consequently, we find that MWXP’s disclosure of
removing both the highlighting and font change from an item in the list in
response to user interaction therewith, describes “removing the temporary
visual indicator from each item in the list having a visual indicator applied,
in response to user interaction with the list,” as recited in independent claim
1. It follows that the Examiner has not erred in finding that MWXP
anticipates independent claim 1.
Independent claim 15 recites similar claim limitations as independent
claim 1. (See App. Br. 10; see also Claims App’x.) Therefore, for the same
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reasons discussed supra, the Examiner has not erred in finding that MWXP
anticipates independent claim 15.
Claims 2-9 and 16-19
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 2-9 and 16-19. Therefore, we
select independent claims 1 and 15 as representative of these cited claims.
See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, the Examiner has not erred
in rejecting dependent claims 2-9 and 16-19 for the same reasons set forth in
our discussion of independent claims 1 and 15.
Claims 10-12
Appellant contends that the Examiner fails to identify a disclosure in
MWXP that describes the claim limitations explicitly recited in dependent
claims 10-12, but rather relies upon unsupported assertions. (App. Br. 10.)
In response, the Examiner finds that with respect to modifying an attribute as
recited in dependent claim 10, an attribute of the list is modified when one
right clicks inside the window. (Ans. 11.) The Examiner finds that after
right clicking, a menu pops up that allows one to further modify the
attributes of the list. (Id.) The Examiner also finds that the menu allows a
user to change the views, change the properties of the list, etc. (Id.)
Therefore, the Examiner finds that MWXP contains such a menu, which can
be easily accessed when a user clicks one of the options after right clicking
in the window. (Id.) Further, Appellant reiterates the claimed limitations
explicitly recited in dependent claims 10-12 and generally alleges that
MWXP fails to describe each claim limitation. (Reply Br. 5.) We agree
with the Examiner.
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We note that “[i]n relying upon the theory of inherency, the
[E]xaminer must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)(emphasis in original).
“[A]fter the PTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to [A]ppellant to ‘prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.”’
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (emphasis added) (quoting
In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). See also MPEP §§
2112 (IV-V).
This reasoning is applicable here. We find that the Examiner has
provided a technical reasoning in the Examiner’s Answer that reasonably
supports the finding of inherent anticipation. We see no response in the
Reply Brief that specifically addresses the Examiner’s finding that MWXP
contains a menu that a user can easily access by right clicking in the
window, thereby allowing the user to modify attributes of the list (e.g.,
filtering or sorting). (See Ans. 6, 11.) Consequently, we find that Appellant
has not met the burden of proving that the subject matter shown to be in the
prior art does not possess the characteristic relied on by the Examiner.
Alternatively, Appellant merely reiterates what dependent claims 10-
12 recite and generally alleges that MWXP fails to describe the disputed
claim limitations. (Reply Br. 5.) Such reiterations and general allegations
do not amount to separate patentability arguments. See Ex parte Belinne,
No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009)
(informative); see also 37 C.F.R. § 41.37(c)(1)(vii). Therefore, based on the
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record before us, we find that Appellant has not shown reversible error in the
Examiner’s anticipation rejection of dependent claims 10-12. It follows that
the Examiner has not erred in finding that Titus anticipates dependent claim
10-12.
35 U.S.C. § 103(a) Rejections
Claims 13, 14, and 20
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 13, 14, and 20. Therefore, we
select independent claims 1 and 15 as representative of these cited claims.
See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, the Examiner has not erred
in rejecting dependent claims 13, 14, and 20 for the same reasons set forth in
our discussion of independent claims 1 and 15.

V. CONCLUSIONS OF LAW
1. The Examiner has not erred in rejecting claims 1-12 and 15-19
as being anticipated under 35 U.S.C. § 102(b).
2. The Examiner has not erred in rejecting claims 13, 14, and 20
as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 1-20.
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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