Ex Parte Cragun

Board of Patent Appeals and Interferences

Sep 10, 2003

09025155 (B.P.A.I. Sep. 10, 2003)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte BRIAN JOHN CRAGUN
________________
Appeal No. 2001-2381
Application 09/025,155
________________
ON BRIEF
________________
Before THOMAS, HAIRSTON, and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 28-48, which constitute
all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for automatically swapping application tasks running
Appeal No. 2001-2381
Application 09/025,155
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within a local network site of a computer network when access
from said local network site to a remote network site is delayed.
Representative claim 28 is reproduced as follows:
28. A method for automatically swapping application tasks
running within a local network site of a computer network when
access from said local network site to a remote network site is
delayed, said method comprising:
initiating, from a communications application at a local
network site, a link to a remote network site while multi-tasking
applications are simultaneously running at said local network
site;
initiating retrieval of data from said remote network site,
in response to initiating said link;
automatically switching focus from said communications
application to one of said multi-tasking applications, in
response to initiating said link;
determining, after focus has been switched from said
communications application, that said data has been retrieved;
and

automatically providing user notification that said data has
been retrieved, in response to said determination.
The examiner relies on the following reference:
Slotznick 6,011,537 Jan. 04, 2000
(filed Jan. 27, 1998)
Claims 28-48 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Slotznick taken
alone.
Appeal No. 2001-2381
Application 09/025,155
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 28-48. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
Appeal No. 2001-2381
Application 09/025,155
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determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
Appeal No. 2001-2381
Application 09/025,155
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223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
The examiner has indicated how he finds the claimed
invention to be obvious over the teachings of Slotznick [answer,
pages 3-6]. Specifically, after essentially reading the
invention of claim 1 on the disclosure of Slotznick, the examiner
asserts that “[I]t would be obvious that the multitasking
application operates separate from the communications application
since code for displaying secondary information does not have to
be the same code ... and both the communications application and
multitasking application have separate windows.”
With respect to independent claims 28, 35 and 42, which
stand or fall together as a single group [brief, page 5],
appellant argues that Slotznick does not teach or suggest
automatically switching focus from a communications application
to another active application in response to the initiation of a
link to a remote network site. More particularly, appellant
argues that Slotznick relates to a single application that
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Application 09/025,155
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displays multiple windows. Appellant argues that it was improper
for the examiner to equate the windows of Slotznick with
applications running on a computer. The essence of appellant’s
position is that Slotznick switches between processes of a single
application rather than from a communications application to an
active multitasking application as claimed. Appellant also
argues that the portion of Slotznick related to filtering teaches
away from the claimed invention [brief, pages 6-9].
The examiner responds that Slotznick teaches that windows
are equated with applications and that the windows are programs
capable of displaying information. The examiner asserts that
since Slotznick equates a window to a program, and since an
application is a program, then a window is considered to be an
application. Therefore, the examiner finds that the two display
windows of Slotznick teach the claimed invention [answer, pages
6-12].
Appellant responds that the examiner’s attempt to equate
a window to an application distorts the clear meaning of the
claimed invention [reply brief].
We will not sustain the examiner’s rejection of
independent claims 28, 35 and 42 or of any of the claims which
depend therefrom for essentially the reasons argued by appellant.
Appeal No. 2001-2381
Application 09/025,155
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We agree with appellant that the windows of Slotznick do not
equate to multitasking applications as claimed. The examiner’s
finding that Slotznick teaches that windows equate to
applications is not supported by the referenced portion of
Slotznick. Specifically, the reference merely notes that when
information from the Internet is downloaded to a window, that
window automatically becomes the active window and is displayed
on top of all other windows [column 3, lines 28-34]. This
portion of the reference clearly does not establish that a window
is an application. The invention of Slotznick simply permits
different information received from the Internet to be displayed
during interstitial space. The different information displayed
in Slotznick is retrieved by the same communications application
and this information does not interact with other applications
running on the computer in any manner. Thus, we find the
examiner’s attempt to interpret the two display windows of
Slotznick as the claimed multitasking applications to be an
unreasonable interpretation of the claimed invention and
unsupported by the cited prior art.
Although appellant has separately argued the
patentability of some of the dependent claims, there is no need
to separately consider these claims since the discussion above
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applies to these claims as well by virtue of their dependency
from one of the independent claims considered above.
In summary, we have not sustained the examiner’s
rejection of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 28-48 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JERRY SMITH )
Administrative Patent Judge )
JS/dal
Appeal No. 2001-2381
Application 09/025,155
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