Ex Parte Dubs et alDownload PDFPatent Trial and Appeal BoardOct 23, 201412145727 (P.T.A.B. Oct. 23, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JUSTIN TYLER DUBS, HARRISS CHRISTOPHER NEIL GANEY, AARON MICHAEL STEWART, and JENNIFER GREENWOOD ZAWACKI ____________________ Appeal 2012-005843 Application 12/145,727 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005843 Application 12/145,727 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1– 12 and 14 – 20. The Examiner indicated that claims 6, 13, and 20 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the § 101 rejection is overcome (for claims 6 and 20). (Ans. 7). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a system, method, and program product is provided that automatically allocates a display screen into two areas when the display screen is pivoted from a landscape orientation to a portrait orientation. (Abstract). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A machine-implemented method comprising: receiving a pivot request to pivot data displayed on a display screen from a landscape orientation to a portrait orientation, wherein a primary operating system displays the data on the display screen when the display is in the landscape orientation; and in response to receiving the pivot request: allocating the display screen into a primary display area and a secondary display area; displaying the data originating from the primary operating system in the primary display area; and displaying different data originating from a second operating system in the secondary display area. Appeal 2012-005843 Application 12/145,727 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Grams US 2005/0078086 Al Apr. 14, 2005 Hamon US 2005/0179653 Al Aug. 18, 2005 Willrich US 2006/0183505 Al Aug. 17, 2006 Hawkins US 2008/0045280 Al Feb. 21, 2008 Kiely US 2009/0156303 Al June 18, 2009 REJECTIONS The Examiner made the following rejections: Claims 1 – 7 and 15 – 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 1, 8, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Willrich in view of Hawkins; and further in view of Hamon and/or Grams. Claims 2 – 5, 7, 9 – 12, 14, and 16 – 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over in view of Hawkins, Grams/Hamon, and further in view of Kiely. ANALYSIS We note that Appellants' Brief does not include page numbers. Therefore, we refer to the pages sequentially, starting at the Introductory Comments as page 1. Appellants have not filed a Reply Brief to respond to the Examiner's further clarifications in the Examiner's Answer. Appeal 2012-005843 Application 12/145,727 4 35 U.S.C. § 101 The Examiner maintains that independent claim 1 and independent claim 15 are directed to non-statutory subject matter. The Examiner maintains separate rationales for each of the independent claims. With respect to independent claim 1, the Examiner maintains that the claims are directed to an abstract idea that fails to perform a physical transformation or describe a specific machine in the method steps. (Ans. 5– 6). Appellants' sole argument is that "[t]hose skilled in the art would understand that a display screen is an article of manufacture and that displaying data on the display screen transforms the display screen to a different state." (App. Br. 5). While we find Appellants' argument to be general in nature, we also find the Examiner's line of reasoning in establishing the rejection to be general in nature. Here, we find the specific signaling and manipulation of the display data to be more than a mere abstract idea disembodied from the computer implementation having two operating systems and two display areas. Therefore, we do not sustain the rejection of independent claim 1, and its dependent claims 2 – 5 and 7, based upon a lack of statutory subject matter. With respect to independent claim 15, the Examiner maintains that the broadest reasonable interpretation of independent claim 15 is directed to a non-statutory program product per se where the Specification or the claims fail to limit the computer readable medium to a non-transitory media. (Ans. 5). The Examiner relies upon paragraph 43 [sic, 33] of Appellants' Specification. Appellants' sole argument is that "[t]hose skilled in the art would also understand that signals, such as carrier waves, are not Appeal 2012-005843 Application 12/145,727 5 forms of a tangible computer readable medium. As such, Appellants' tangible computer readable medium is statutory subject matter under 35 U.S.C. § 101." (App. Br. 5). The Examiner relies upon paragraph 33 of Appellants' Specification, which states: Until required by the computer, the set of instructions may be stored in another computer memory, for example, in a hard disk drive, or in a removable memory such as an optical disk (for eventual use in a CD ROM) or floppy disk (for eventual use in a floppy disk drive), or downloaded via the Internet or other computer network. (Spec. para. 33; see Ans. 5). Therefore, Appellants' Specification is broad enough to read upon a download signal or other no carrier wave implementations and Appellants have elected not to further limit the claimed invention. Therefore, we agree with the Examiner that the broadest reasonable interpretation of independent claim 15 is a signal, and we sustain the rejection of claims 15–20. See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), and Subject Matter Eligibility of Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010); see also U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, at 2 (Aug. 2009), available at http://www.uspto.gov/patents/law/comments/2009-08- 25_interim_l0l_instructions.pdf. 35 U.S.C. § 103(a) With respect to independent claims 1, 8, and 15, Appellants argue the claims as a group. (App. Br. 6). Therefore, we select independent claim 1 Appeal 2012-005843 Application 12/145,727 6 as the representative claim for the group and will address Appellants' arguments thereto. Appellants repeat the language of claims and generally contend that: Appellants' system automatically partitions a display screen into two display areas when Appellants' system receives a pivot request to pivot display data from a landscape orientation to a portrait orientation. Appellants' system then displays data that was displayed prior to the pivot request in a primary display area, and displays different data originating from a second operating system in a secondary display area. (App. Br. 6). We disagree with Appellants' general contentions since Appellants' arguments are not commensurate in scope with the express language recited in independent claim 1. Appellants merely present argument with respect to the Willrich reference (and none of the three additional prior art references) and contend that: Willrich displays data on displays when the devices are open (after the pivot action), but does not display data on the displays when the devices are closed (before the pivot action). Therefore, since Willrich never displays data on a display before the pivot action, Willrich never teaches or suggests "receiving a pivot request to pivot data on a display screen from a landscape orientation to a portrait orientation, wherein a primary operating system displays the data on the display screen when the display is in the landscape orientation; and in response to receiving the pivot request. .. displaying the data originating from the primary operating system in the primary display area" as claimed by Appellants. (App. Br. 7 (underlining omitted)). The Examiner further explains the rejection relies upon the multiple embodiments of the Willrich reference rather than merely the open and close states of the device, as argued by Appellants. (Ans. 20 – 25). We agree with the Examiner's interpretation of Appeal 2012-005843 Application 12/145,727 7 the Willrich reference and adopt these positions as our own. Since Appellants have not filed a Reply Brief to respond to the Examiner's further clarifications, Appellants' limited argument does not show error in the Examiner's conclusion of obviousness. We sustain the rejection of representative independent claim 1 and group independent claims 8 and 15 as falling therewith. With respect to dependent claims 2 – 5, 7, 9 – 12, 14, and 16 – 19, Appellants rely upon the arguments advanced with their respective parent independent claims. Therefore, we group these claims as falling with representative claim 1. CONCLUSIONS The Examiner erred in rejecting claims 1 – 7 based upon a lack of statutory subject matter. The Examiner did not err in rejecting claims 15– 20 based upon a lack of statutory subject matter. The Examiner did not err in rejecting claims in 1 – 5, 7 – 12, and 14 – 19 based upon obviousness. DECISION For the above reasons, the Examiner's rejection of claims 1 – 7 under 35 U.S.C. § 101 is reversed. The Examiner's rejection of claims 15 – 20 under 35 U.S.C. § 101 is sustained. The Examiner's rejections of claims 1 – 5, 7 – 12, and 14 – 19 under 35 U.S.C. § 103(a) are sustained. 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). Appeal 2012-005843 Application 12/145,727 8 AFFIRMED–IN–PART msc Copy with citationCopy as parenthetical citation