Ex Parte Fagans

Patent Trial and Appeal Board

Dec 14, 2016

12894063 (P.T.A.B. Dec. 14, 2016)

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.
12/894,063 09/29/2010 Joshua David Fagans 18814-0205001 /
P9942US1
5322
26183 7590 12/16/2016
FISH & RICHARDSON P.C. (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
RIEGLER, PATRICK F
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
12/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA DAVID FAGANS
Appeal 2016-001090
Application 12/894,063
Technology Center 2100
Before JOSEPH L. DIXON, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
l-A, 8-10, 12, 15-18, 22-24, 26, 29-32, 36-38, and 40. Claims 5-7, 11, 13,
14, 19-21, 25, 27, 28, 33—35, 39, 41, and 42 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2016-001090
Application 12/894,063
The claims are directed to displaying image thumbnails in re-used
screen real estate. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method performed by one or more processes executing
on a computing apparatus, the method comprising:
presenting a plurality of digital images in an image display
region included in a user interface window, wherein the user
interface window includes a region separate from the image
display region;
receiving input indicating a selection of a digital image
presented in the image display region; and
in response to receiving the input indicating the selection
of the digital image:
presenting a larger version of the selected digital image in
the image display region, the larger version of the selected digital
image having an image display characteristic including at least
one of an opacity or a brightness,
removing the non-selected digital images from the image
display region,
presenting smaller versions of the non-selected digital
images within the region separate from the image display region,
and
presenting the region separate from the image display
region with an image display characteristic that is less than a
corresponding image display characteristic of the larger version.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
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Application 12/894,063
Nishiyama et al.
Amato et al.
Jing et al.
Webster et al.
Felt et al.
US 2004/0175764 Al
US 2006/0265417 Al
US 2007/0174790 Al
US 2009/0164944 Al
US 2010/0162171 Al
Sept. 9, 2004
Nov. 23, 2006
July 26, 2007
June 25, 2009
June 24, 2010
REJECTIONS
The Examiner made the following rejections:
Claims 2—4, 8, 9, 12, 16—18, 22, 23, 26, 30-32, 36, 37, and 40 are
rejected under 35U.S.C. 112(b)or35U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
Claims 1—4, 15—18, 29—32, and 40 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jing, in view of Nishiyama and further
in view of Felt.
Claims 8, 22, and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jing, Nishiyama and Felt, and further in view of Webster.
Claims 9, 10, 12, 23, 24, 26, 37, and 38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jing, Nishiyama, Felt, and further in
view of Amato.
ANALYSIS
35 U.S.C. § 112, second paragraph
The Examiner maintains:
Regarding claims 2—4, 8, 9, 12, 16—18, 22, 23, 26, 30-32,
36, 37 and 40, “the region ” lacks antecedent basis in the claims,
an “image display region” and a “region separate from the
image display region” are instantiated in the parent claims,
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Application 12/894,063
therefore, it is not necessarily clear which region is referred to by
“the region
Appellant’s sole contention is:
The claims consistently recite “the image display region”
to refer back to “an image display region” and consistently recite
“the region” to refer back to “a region separate from the image
display region.” Thus, one of ordinary skill in the art would
clearly understand that any reference to “the region” refers back
to “a region separate from the image display region” and that any
reference to “the image display region” refers back to “an image
display region.” Consequently, the claims are not indefinite.
Accordingly, Applicant respectfully requests that the rejection
under 35 U.S.C. § 112, second paragraph, be overturned.
(App. Br. 10-11).
We disagree with Appellant’s contention and find that independent
claims 1,15, and 29 each consistently recite the totality of the limitation
phrase when referring back to the image display region and the region
separate from the image display region. While each separate dependent
claim may use consistent references, the required consistency is from the
parent claim to child claim as identified by the Examiner, and Appellant’s
argument is not consistent therewith. As a result, Appellant’s argument does
not show error in the Examiner’s conclusion there is a lack of clear
antecedent basis in the dependent claims.1 Consequently, we sustain the
Examiner’s rejection under 35 U.S.C. § 112, second paragraph.
1 The Examiner has made no rejection of the independent claims based upon
indefmiteness, but we note that the Examiner’s claim interpretation in the
Response to Arguments section is replete with questions and interpretations
using the “broadest reasonable interpretation.” We make no findings
regarding a lack of particularity in Appellant’s claim language.
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Application 12/894,063
35 U.S.C. § 103
Appellant contends the disputed portion of Figure 3 embodiment of
the instant application is where “the thumbnail region 202, in which the
non-selected digital images are presented, which is displayed with an
image display characteristic that is less than an image display
characteristic of the larger version of the selected image.” (App. Br. 5).
Appellant further contends “Felt discloses that an unselected image has a
brightness different from a selected image, but does not disclose that a
resion in which the unselected image is displayed has a brightness different
from the selected image.” (App. Br. 5).
Appellant further contends the Examiner’s position is:
Felt discloses that “[distinguishing the selected image is not
only done by enlarging the image, but by effecting brightness of
the image with respect to the non-selected images.” In other
words, Felt does not disclose that a region in which the
nonselected images are presented has a brightness different from
that of the selected image. Instead, Felt discloses that the non-
selected images themselves have a brightness different from that
of the selected image.
(App. Br. 6). But, Appellant contends the claim recites:
“the region separate from the image display region” in which the
non-selected digital images are presented has an image display
characteristic that is less than a corresponding image display
characteristic of the larger version. The claim makes no mention
about any difference between an image display characteristic of
the non-selected images and that of the selected images.
Accordingly, the cited portions of Felt do not disclose
“presenting the region separate from the image display region
with an image display characteristic that is less than a
corresponding image display characteristic of the larger version”
as recited in claim 1.
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Application 12/894,063
(App. Br. 6). Appellant further argues the Examiner improperly replaces the
language of independent claim 1 rather than the express language recited
therein. (App. Br. 6).
The Examiner provides a lengthy discussion of the claim language
“image display characteristics” for the region versus the use of “a region
display characteristic” (Ans. 3—5).
Appellant responds at length regarding the plain language of the claim
contradicting the Examiner’s Answer assertion that “an image display
characteristic” cannot be assigned to “the region separate from the image
display region” (Reply Br. 1—2). Appellant further contends “the region
separate from the image display region” when presented will be an image
that can and will have its own “image display characteristic.” (Reply Br. 2).
Appellant further provides a “demonstration” based upon extrinsic evidence.
(Reply Br. 2—3). Appellant presents further argument maintaining that the
Examiner has ignored the language of the claim as expressly recited in the
independent claims. (Reply Br. 3—6). Specifically, Appellant contends:
Applicants remind the Office that Applicants can be their own
lexicographer. M.P.E.P. § 2111.01 (IV). The Specification
describes “images” and “region” as two separate and distinct
features, each of which can be presented in a user interface
window. See, e.g., Specification, [0015], Fig. 1 (“Among other
elements, the GUI window 100 includes an image display region
102 in which the application user's photos are displayed, for
example, the images indicated as 104 and 106, and a border
region(s) 108 and 110, also sometimes referred to as the “frame,”
“chrome,” or “metal” of the GUI window 100”). Thus, reciting
“a region” and “an image” in the claim does not introduce any
112 second paragraph issue, as the Office asserts. The
Specification also supports the interpretation that each of an
image and a region can have an image display characteristic. Id.,
[0019] and (“Prominence of the image thumbnail region can be
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Application 12/894,063
achieved in various ways, e.g., by increasing the size, color,
brightness, opacity, and the like of the thumbnail region 202 or
the thumbnails themselves, or both”). Thus, Applicants’ position
that a region, when presented on a display, is an image, is clear,
not definite and is fully supported by the Specification.
(Reply Br. 5—6). We note paragraph 8 of the Specification discloses use of a
prominent manner of thumbnail images alone and paragraph 18 identifies
the use of an image display characteristic for the thumbnail images, and
paragraph 19 discloses prominence of the region or the images but does not
identify the manner of modification being implemented in with an “image
display characteristic.”
While the Examiner raises valid questions/concems regarding the
terminology selected by Appellant, we agree that Appellant may be their
own lexicographer. But, any special meaning assigned to a term “must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477
(Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc.,
527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description.”). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the
art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298
(Fed. Cir. 2003) (citation omitted).
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While we agree with a majority of the Examiner’s questions in the
Response to Arguments section of the Examiner’s Answer, we find the
Examiner’s position to be different than a broadest reasonable interpretation
analysis. Moreover, the Examiner has not set forth a rejection under 35
U.S.C. § 112, first paragraph or second paragraph which more closely
parallels the Examiner’s position. Consequently, we make no findings
thereto.
The claimed invention recites a step to modify the region, in some
manner, in which the thumbnail images are stored rather than modifying the
thumbnail images themselves as taught by the Felt reference. As a result,
the Examiner has not identified any teaching or suggestion in the three prior
art references applied in the rejection of illustrative independent claim 1.
Therefore, we cannot sustain the rejection of illustrative independent claim 1
and its respective dependent claims.
Independent claims 15 and 29 contain similar limitations which the
Examiner has not shown to be sought taught or suggested by the
combination of the Jing, Nishiyama, and Felt references. Consequently, we
cannot sustain the rejection of independent claims 15 and 29 and their
respective dependent claims.
With respect to dependent claims 8—10, 12, 22—24, 26, and 36—38, the
Examiner has not identified how the Webster or Amato references remedy
the noted deficiency. As a result, we cannot sustain the rejection of claims
8-10, 12, 22-24, 26, and 36-38.
CONCLUSIONS
The Examiner did not err in rejecting claims 2-4, 8, 9, 12, 16—18, 22,
23, 26, 30—32, 36, 37 and 40 based upon indefmiteness under 35 U.S.C.
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Application 12/894,063
§112, but the Examiner erred in rejecting claims 1—4, 8—10, 12, 15—18, 22—
24, 26, 29—32, 36—38 and 40 based upon obviousness.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
2—4, 8, 9, 12, 16—18, 22, 23, 26, 30-32, 36, 37 and 40 based upon
indefmiteness under § 112, second paragraph,, but we reverse the
Examiner’s rejection of claims 1—4, 8—10, 12, 15—18, 22—24, 26, 29-32, 36—
38 and 40 based upon obviousness under § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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