Ex Parte Frederickson et al

Patent Trials and Appeals Board

May 24, 2019

13901522 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/901,522 05/23/2013
69316 7590 05/29/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Steve Frederickson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
338735.01 3258
EXAMINER
TSAI, JAMES T
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
05/29/2019 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE FREDERICKSON,
HENRI-CHARLES MACHALANI, ZORAN DIMOV,
GRAHAM WARDLE, CHRISTOPHER SW AN,
MARINA DUKHON TAYLOR, and KEITH KELLY
Appeal2018-008000
Application 13/901,522
Technology Center 2100
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
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Application 13/901,522
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1, 4-14, and 16-22, which are all claims
pending in the application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to
managing application windows on multiple displays. Spec. ,-J 4; Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of managing windows for a computing device, the
method comprising:
executing a windowing system that automatically maintains
windows for applications executing on the computing device, the
windowing system enabling display of the application windows on a
first display connected with the computing device and on a second
display connected with the computing device, wherein the windowing
system tracks which of the displays currently has input focus;
executing an application launcher on the computing device, the
application launcher comprising indications of respective applications
on the computing device, wherein the application launcher is
concurrently activatable responsive to first user inputs not associated
1 This Decision uses the following abbreviations: "Spec." for the original
specification, filed May 23, 2013; "Final Act." for the Final Office Action,
mailed Oct. 19, 2017; "App. Br." for Appellants' Appeal Brief, filed Apr.
18, 2018; "Ans." for Examiner's Answer, mailed July 27, 2018; and "Reply
Br." for Appellants' Reply Brief, filed Aug. 3, 2018.
2 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 1.
3 After the Final Action, Appellants cancelled claim 15 and amended claims
1, 9, 11, and 16 (see Amendment, filed Dec. 20, 2017). The Examiner
entered these amendments in an Advisory Action (mailed Jan. 17, 2018).
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with the first display or the second display, wherein second user
inputs directed to the indications are responded to by launching
correspondingly selected applications, wherein the application
launcher is displayed on only one display at a time, and wherein when
the application launcher is displayed on either of the displays, user
input directed to whichever display is not displaying the launcher does
not cause the launcher to be undisplayed;
responding to each first user input that activates the launcher
when the application launcher is not displayed on the first display and
only the first display currently has the input focus by: (i) determining
if the application launcher is displayed on the second display and if so
determined undisplaying the application launcher from the second
display, and (ii) displaying the application launcher on the first
display;
responding to each first user input that activates the application
launcher when the application launcher is not displayed on the first
display and when only the second display currently has the input
focus by: (i) determining if the application launcher is displayed on
the first display and if so determined undisplaying the application
launcher from the first display, and (ii) displaying the application
launcher on the second display;
responding to each second user input that is associated only
with whichever of the displays the application launcher is currently
displayed on by: displaying a correspondingly selected application
window on whichever of the displays the application launcher is
currently displayed on, and undisplaying the application launcher; and
responding to each second user input that is associated only
with whichever of the displays the application launcher is not
currently displayed on by: displaying a correspondingly selected
application window on whichever of the displays the application
launcher is not currently displayed on, and after displaying the
correspondingly selected application window, maintaining display of
the application launcher on whichever of the displays the application
launcher is currently displayed on.
App. Br. 19-20 (Claims App'x).
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THE REJECTIONS
Rl. Claims 1, 7, 8, and 16-194 stand rejected under 35 U.S.C. § 103
as obvious over Anttila (US 2012/0005602 Al, published Jan. 5, 2012),
Brooks (US 6,008,809, issued Dec. 28, 1999), Bell (US 2012/0174020 Al,
published July 5, 2012), and Griffin (US 2012/0056817 Al, published Mar.
8, 2012). Final Act. 5-14.
R2. Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as obvious
over Anttila, Brooks, Bell, Griffin, and Park (US 2013/0174179 Al,
published July 4, 2013). Final Act. 15-17.
R3. Claim 6 stands rejected under 35 U.S.C. § 103 as obvious over
Anttila, Brooks, Bell, Griffin, and Ubuntu Autohide (F ossfreedom,
Comment to How Can I Configure Unity's Launcher Auto-Hide Behavior?,
ASK UBANTU (Feb. 22, 2012, 8:15 PM), http://askubuntu.com/questions/
9865/how-can-i-configure-unitys-launcher-auto-hide-behavior). Final Act.
17-18.
R4. Claims 9, 10, 12, 13, 21, and 22 stand rejected under 35 U.S.C.
§ 103 as obvious over Anttila, Pinedo (US2003/0142037 Al, published
July 31, 2003), and Smuga (US 2010/0248787 Al, published Sept. 30,
2010). Final Act. 18-24.
R5. Claim 11 stands rejected under 35 U.S.C. § 103 as obvious over
Anttila, Pinedo, and Ubuntu Dual Monitor (Chazwh and Vadim, Original
Post and Comment to Dual Monitor Applications Opening on Wrong
Monitor, ASK UBANTU (Oct. 28, 2010, 4:14 AM and May 12, 2011, 7:03
4 Although claims 16-19 are not listed in the heading of the rejection (Final
Act. 5), these claims were rejected (id. at 1) and were addressed in the body
of this rejection (id. at 13-14). Accordingly, we consider their omission
from the rejection's header to be a typographical error.
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PM), http://askubuntu.com/questions/992 l/dual-monitor-applications-
opening-on-wrong-monitor). Final Act. 24-26.
R6. Claim 14 stands rejected under 35 U.S.C. § 103 as obvious over
Anttila, Pinedo, and Park. Final Act. 26-28.
R7. Claim 20 stands rejected under 35 U.S.C. § 103 as obvious over
Anttila, Brooks, Bell, Griffin, and Pinedo. Final Act. 29-30.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection RI of Claims 1, 7, 8, and 16--19
The Examiner rejected claims 1, 7, 8, and 16-19 under 35 U.S.C.
§ 103 as obvious over Anttila, Brooks, Bell, and Griffin. Final Act. 5-14.
Appellants present arguments for independent claims 1 and 16. See
App. Br. 7-16, 17. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv), we limit our discussion to these independent claims and,
for each argument, use the claim identified by Appellants as representative.
Dependent claims 7 and 8 stand or fall with claim 1, and dependent claims
17-19 stand or fall with claim 16.
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Claim 1
Prima F acie Case
Appellants present several arguments alleging the Examiner's
rejection of claim 1 was insufficient. App. Br. 11-12 (insufficient rationale
in Anttila-Bell combination), 15-16 (insufficient rationale in Anttila-Bell-
Griffin combination); see Reply Br. 2, 4-5.
In particular, Appellants submit the Examiner failed to "explain why
the combination would have been obvious to make" and contend the
reasoning provided by the Examiner was circular. App. Br. 11; see id. at 16
(The Examiner's rationale "is conclusory and offers no explanation of what
would have led to the proposed combination to begin with."); see also Reply
Br. 4-5 ( contending the Examiner's "entire explanation ... is provided in
one sentence"). Further, Appellants allege error in the Examiner's
identification of a motive without citing the prior art in support. App.
Br. 16; Reply Br. 4. In response, the Examiner further explains that a person
of ordinary skill "would have wanted a reliable and persistent view of the
switched tasks even after switching the tasks." Ans. 31; id. at 33-34.
Appellants contend the Answer's rationale is circular and insufficient
because it does not explain "why one would have wanted a reliable and
persistent view after switching tasks." Reply Br. 2.
Appellants' arguments do not persuade us of Examiner error. An
Examiner's rejection establishes a prima facie case when it provides notice
of the reasons for the rejection, and the rejection is deficient when it "is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection." In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011) ( citations omitted). If this initial burden is met, the burden of
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coming forward with rebuttal evidence or argument shifts to Appellants. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the
arguments. Id.
We determine the Examiner's finding and rationale established a
prima facie case, as it sufficiently explained the findings and rationale for
the rejection. See Final Act. 5-12; Ans. 30-34. In particular, the Examiner
found Anttila and Bell each teach aspects of the claim (see Final Act. 5-7,
11 ), and the Examiner reasoned that a person of ordinary skill in the art
would have found it obvious to combine Anttila's task switching interface
with Bell's persistence because the ordinary artisan "would have been
motivated to allow for a user experience that allows for [a] reliable and
persistent view of the available tasks to be switched to even after switching
to the task" (id. at 11 ). Based on this record, we determine the Examiner
provided the requisite notice. We are not persuaded by Appellants'
argument that additional sentences are required to sufficiently explain the
Examiner's rationale or the rejection. Further, we also note that the
Examiner is not required to cite a prior art reference to support the
obviousness rationale. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418-19 (2007) (holding an express teaching, suggestion, or motivation in the
prior art is not a requirement for an obviousness determination); see also id.
at 421 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton.").
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Therefore, we are not persuaded by Appellants' arguments that the
Examiner failed to present a prima facie case of obviousness of claim 1. We
tum next to Appellants' substantive arguments regarding claim 1.
Motivation to Combine Anttila and Bell
The Examiner found the combination of Anttila and Bell teaches or
suggests the application launcher required by claim 1. Final Act. 5-7, 11.
Specifically, the Examiner pointed to Anttila's task selection interface to
teach the claimed "application launcher" and found Bell teaches a persistent
task bar. Id. The Examiner reasoned that a person of skill in the art would
have found it obvious to combine Bell's persistence with Anttila's task
selection interface in order to improve the user experience by providing a
"reliable and persistent view of the available tasks to be switched to even
after switching to the task." Id. at 11.
Appellants allege error in the Examiner's combination of Anttila and
Bell. Specifically, Appellants argue Bell's teachings are inapplicable to
Anttila (App. Br. 10-11) and that the combination would render Anttila unfit
for its intended purpose (id. at 15). Appellants explain that Anttila's
launcher is a "floating switcher," and a "prime purpose" of the launcher is to
"move to different displays," where Bell's taskbar is not mobile and is
displayed "only in the primary monitor." Id. at 10-11 ( emphasis omitted)
(citing Anttila ,-J,-J 62-63 and quoting Bell ,-J 6); see id. at 15. Appellants
further explain that "[t]he persistence in Bell is merely a characterization of
the static non-mobile nature of the relevant Windows taskbar." Id. at 11.
The Examiner responds that the Appellants' distinction between the
references is not responsive to the rejection. Ans. 30-31 ("Anttila teaches
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the floating aspect [ of the claim] and Bell is used for the maintaining
feature."). The Examiner notes that the rejection relies on the background of
existing art provided by Bell, and the Examiner finds that Bell generally
teaches "maintaining the display of the application launcher, even if input is
received in the other display." Id. at 30 (relying on Bell ,i 2, which states the
taskbar is "almost always visible"). Finally, the Examiner finds the addition
of Bell would not have rendered Anttila unfit for its intended purpose. Id. at
33 ("Bell's application is simply to teach the persistence of a task bar and it
would not have destroyed the nature of having a movable application
launcher/switcher.").
Appellants reply that the Examiner's finding is "too vague to show
obviousness of the particular form of persistence recited in the claims";
however, Appellants do not further explain this position. Reply Br. 1. In
addition, Appellants submit that "[i]f Bell's approach were applied to
Anttila, the result would be Anttila' s launcher being displayed all the time
and on only one display," which would "defeat the purpose of Anttila, which
is to allow a user to move the launcher between displays." Id. at 1, 4.
We are not persuaded of error. Appellants' argument relies on a
premise-namely, that a person skilled in the art would find Bell's teaching
of a persistent taskbar to be inseparable from Bell's discussion of a fixed or
immobile taskbar-that we do not agree with. Appellants do not provide
argument or evidence to support this premise or explain why a person skilled
in the art would understand Bell to require that the taskbar be immobile in
order to be persistent. See Lear Siegler Inc. v. Aeroquip Corp., 733 F .2d
881, 889 (Fed. Cir. 1984) (The ordinary artisan is not "compelled to adopt
every single aspect of [a reference's] teaching without the exercise of
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independent judgment."). The Examiner found a person skilled in the art
would have recognized Bell more generally as disclosing a taskbar that is
"almost always visible," and in support, the Examiner notes the cited portion
of Bell provides "a general overview of the existing prior art." Ans. 30; see
Bell ,i,i 1-6 ( describing the Windows taskbar and its current display in a
multi-monitor environment as background for the invention). On this
record, we agree that a person skilled in the art would find Bell generally
teaches a taskbar that is almost always visible.
Further, even if Bell only disclosed an immobile and persistent
taskbar, Appellants do not explain why it would not have been obvious to
modify Bell's taskbar with Anttila's mobility. In particular, the fact that
certain modifications might be required for a person of skill to integrate the
teachings of multiple prior-art references does not mean that the
combination of those references is unpredictable or cannot support an
obviousness rejection. MCM Portfolio LLC v. Hewlett-Packard Co., 812
F.3d 1284, 1294 (Fed. Cir. 2015) ("The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference." (quoting In re Keller, 642 F.2d 413, 425
(CCPA 1981)); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382
(Fed. Cir. 2007) ("[W]e do not ignore the modifications that one skilled in
the art would make to a device borrowed from the prior art.")
Finally, Appellants submit that a person of skill in the art would have
combined Anttila's and Bell's teachings to yield a persistent and immobile
task selection interface. See Reply Br. 1, 4. We are not persuaded by this
argument, as the combination of Anttila and Bell may yield multiple obvious
combinations. See KSR, 550 U.S. at 421 (explaining that obviousness may
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be shown where there are a "finite number of identified, predictable
solutions"). The relevant question in this case is: Would a person of skill in
the art would have found the claimed "application launcher" to be obvious in
light of the references? The Examiner answered this question in the
affirmative and explained why a person of skill would have been motivated
to modify Anttila's task selection interface with Bell's persistence. Final
Act. 11. We agree. Appellants identify no errors or inaccuracies in the
Examiner's rationale; they do not contend the Examiner's proposals are
beyond the level of skill of one of ordinary skill in the art; and they do not
allege that the combination of Bell and Anttila would yield unpredictable or
unexpected results. Accordingly, we are not persuaded that the Examiner's
findings or conclusion are in error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on a combination of Bell and
Anttila.
The Display Launcher Limitation
Claim 1 recites:
responding to each first user input that activates the
application launcher when the application launcher is not
displayed on the first display and when only the second display
currently has the input focus by: (i) determining if the
application launcher is displayed on the first display and if so
determined undisplaying the application launcher from the first
display, and (ii) displaying the application launcher on the
second display.
App. Br. 20 (Claims App'x) (referred to in this Decision as the "display
launcher limitation"). The Examiner found this limitation to be taught or
suggested by the combination of Anttila and Griffin. Final Act. 4, 6-7,
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11-12 (citing Anttila ,i 61 and Griffin ,i,i 36-37, Fig. 9). Appellants present
four arguments alleging error in the Examiner's findings and conclusions,
which we address in tum.
First, Appellants contend the Examiner erroneously found Anttila
teaches the claim phrase "when only the second display has the input focus"
because "Anttila has no mention of input focus." App. Br. 13. 5 The
Examiner finds the term "input focus" is taught or suggested by Anttila' s use
of input commands. Ans. 31-32. Appellants reply that input commands and
input focus are "two different things." Reply. Br. 3.
Appellants' arguments do not persuade us of Examiner error. In
particular, although we agree with Appellants that input commands are
different than input focus, we agree with the Examiner that Anttila' s use of
those input commands teaches or suggests the claimed "input focus." In
particular, Anttila's input commands provide user input directed to a display.
See Anttila ,i 61 ("dragging a task selection interface between screens with a
mouse"). Appellants state that "input focus" refers to the "display that is
5 In the Reply Brief, Appellants allege that the Final Office Action also fails
to "indicate what prior art teaches" another limitation of claim 1, i.e.,
"wherein the windowing system tracks which of the displays currently has
input focus." Reply Br. 3. This argument was not presented in Appellants'
Appeal Brief and will not be considered. See 37 C.F.R. § 41.4l(b)(2) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown."). In particular, these arguments address the rejection as
originally provided in the Final Office Action, rather than positions raised in
the Answer (see Reply Br. 3 ( citing Final. Act. 8 and Ans. 5-6 (restating
grounds from Final Office Action)), and Appellants have not shown good
cause for failing to provide these arguments in the Appeal Brief.
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currently receiving input events." Reply Br. 2. Thus, a person of skill in the
art would have understood that Anttila's input focus is directed to whichever
display is currently associated with its input commands. See Anttila ,i 61;
Final Act. 6-7 (pointing to this aspect of Anttila to teach the claimed input
focus); see also Reply Br. 2 (asserting "input focus" is "well-known in the
art"). 6 Appellants fail to address the cited teaching of Anttila or explain why
it fails to suggest the requirements of the claim. See App. Br. 13
( concluding, without explanation, that "Anttila has no mention of input
focus or even any implication that input focus is used or needed"); see also
Reply Br. 2-3 (providing no further comment regarding Anttila).
Moreover, we agree with the Examiner that Anttila teaches or
suggests "responding to each first user input that activates the launcher when
the application launcher is not displayed on the first display and only the
first display currently has the input focus," as required by claim 1. Anttila
teaches the claimed "first user input"-it states a user can move "a displayed
task selection interface between displays using any appropriate input option
provided by the user interface 116," which includes inputs that are not
associated with either display ( e.g., a keyboard, a microphone). Anttila
,i,i 61, 37. Anttila further teaches "displaying the application launcher on the
second display" "when only the second display has the input focus," as the
6 Appellants' Specification further supports this finding. In particular, it
does not specifically discuss "input focus," but does refer to the display that
"is currently being used by the user ( e.g., which display has a pointer or
which display has a window receiving user input, etc.)." Spec. ,i 45
( describing user inputs that "are not specific to any particular display"); see
also id. ,i 48 ( displaying application launcher on first display when "the user
is multitasking on the first display 108A and activates the application
launcher 220").
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claim requires. In particular, Anttila teaches display of a task selection
interface on display 602 after the user selects icon 706 on display 602.
Anttila ,i 56; see id. at Fig. 7 A-7B (visual representation of this teaching);
see also id. at ,i,i 54-55, Fig. 6A-6B (describing launch of task selection
interface on display 604 after user selects icon 606). We find this teaches or
suggests the disputed limitation. See KSR, 550 U.S. at 416 ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
Second, Appellants argue "Griffin is inapplicable because it actually
teaches only one logical display comprised of two adjacent physical panels"
rather than the claimed "first display" and "second display." App. Br. 13;
see Reply Br. 3-4 ("Griffin refers to a single 'display 118,' which has
'segments'. The segments form one display, with single-display behavior,
such as being able to seamless touch-drag a control from one segment to the
other.").
We are not persuaded. Like the Examiner, we find Griffin's segments
teach the claimed "first display" and "second display." See Final Act. 12;
see Ans. 32. Griffin teaches a device with "two segments or sections that
fold via a hinge and are physically separated." Griffin ,i 36 (emphasis
added). Each of the segments "contains at least one touch-sensitive display
area." Id. Appellants do not propose a construction of the term "display"
that would exclude Griffin's segment. See App. Br. 13; Reply Br. 3-4.
Rather, Appellants identify alleged distinctions between Anttila' s displays
and Griffin's segments, and Appellants place significant weight on Griffin's
terminology, which uses the term "display" to collectively refer to both of its
segments. None of these arguments are persuasive. We conclude that the
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broadest reasonable interpretation of the claimed "display" does not include
any of the requirements identified by Appellants.7 And Griffin's use of the
word "display" to refer to two segments does not demonstrate that one of
Griffin's segment fails to teach the claimed "display." See In re Gleave, 560
F.3d 1331, 1334 (Fed. Cir. 2009) (A reference "need not satisfy an ipsissimis
verbis test" to teach a claim limitation.).
Third, Appellants allege error in the rejection because Griffin teaches
"dragging of a UI element ( control) from one display to another[, which] is
clearly driven by an input ( drag stroke) that associated first with the first
display and then with the second display." App. Br. 13-14. Appellants
explain this fails to teach the claimed "first user inputs not associated with
the first display or the second display." Reply Br. 4.
This argument does not persuade us of error because it fails to address
the rejection as articulated. The Examiner did not identify Griffin as
satisfying the claimed "first user inputs"; instead, the Examiner found
Anttila satisfies this limitation. Final Act. 6 ( citing Anttila ,i,i 41-42 as
teaching activation of the task selection interface). Appellants do not
dispute this finding, and accordingly, Appellants do not persuade us of error
on the part of the Examiner. See In re Merck & Co., 800 F.2d 1091, 1097
7 In particular, Appellants do not point to, nor could we find, any language
in the claim or passages in the Specification that would justify concluding
the claimed "display" includes any such requirement under the broadest
reasonable interpretation. See App. Br. 13; Reply Br. 3-4. Appellants
identify no basis for imposing these requirements, and we are aware of no
reason to limit the claim such a manner. Accordingly, we conclude the
broadest reasonable interpretation of claim 1 does not require any of the
distinctions identified by Appellants. See In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) ("In the patentability context, claims are to be given
their broadest reasonable interpretations.").
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(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.") (citing Keller, 642 F.2d at 425 ("[T]he test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.")).
Finally, Appellants allege error in the rejection because Griffin may
display its UI element on "both displays" and "doesn't care where the UI
element/control is displayed." App. Br. 14. Appellants further state,
"Griffin does not teach making a decision about where to display a control
based on which display has input focus." Reply Br. 4.
This argument fails to persuade us of Examiner error. Appellants do
not sufficiently explain this argument, and based on our review of Griffin,
we perceive no error. In particular, Griffin teaches displaying control 903
on the second display and, on the first display, ceasing display of control
903. Griffin ,i,i 36-37, Fig. 9; see id. ,i 36 ("Optionally a tap or double tap
on the upper segment may be utilized to move the control 903. ") Griffin
also teaches that control 903 "may optionally move along the display 118,"
e.g., when "control 903 is moved in response to ... [a] swipe illustrated by
the arrow." Id. ,i 36. It appears that Appellants allege the rejection is in
error because this aspect of Griffin indicates that parts of control 903 could
be displayed on each of Griffin's segments while control 903 is being
dragged from one segment to the other. See App. Br. 14. However, this
teaching of Griffin does not demonstrate that Griffin fails to teach or suggest
the disputed claim limitation. Further, to the degree Appellants argue
Griffin fails to teach the claimed "input focus" (see Reply Br. 4), we are not
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persuaded because we find Anttila teaches or suggests this limitation, as
explained above.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 1 and its dependent claims (i.e., claims 7 and 8).
Claim 16
Appellants contend the Examiner did not establish a prima facie case
of obviousness for independent claim 16. App. Br. 17.
In the Final Office Action, the Examiner rejected claim 16 by stating
simply: "As to Claim 16, it is rejected for similar reasons as above." Final
Act. 13. Appellants contend this is insufficient because "[ w ]ithout
additional information, the Applicant is unable to ascertain the nature of the
rejection and respond." App. Br. 17. We disagree. The prior pages of the
Final Office Action explain, in detail, the rejection of independent claim 1
and dependent claims 7 and 8. See Final Act. 5-13. We find the Examiner's
reference to be sufficient in this case to explain the nature of the Examiner's
rejection. 8 Importantly, claims 1 and 16 include many corresponding
8 Although we find the Examiner's rejection to be sufficient in this case, we
discourage terse rejections. In fact, the lack of explanation in the Final
Office Action appears to have confused the Examiner, who responded to
Appellants' arguments by referencing the rejection of claims 9 and 10.
Ans. 34. As Appellants note, this is a new ground of rejection (Reply
Br. 5)-claims 9 and 10 were rejected based on a different combination of
references ( compare Final Act. 5-13 (rejecting claims 1, 7, and 8 based on
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limitations. Indeed, Appellants argue claim 1 and claim 16 together, using
claim 1 as representative and, for claim 16, providing only a quote of the
corresponding limitation. See, e.g., App. Br. 7-12. Thus, we are not
persuaded by this argument.
Appellants also contend the Examiner failed to present a prima facie
case because claim 16 includes a limitation which is not recited in claims 1,
7, or 8. Id. at 17. Specifically, Appellants point to the following limitation
of claim 16: "responsive to a user input not associated with either display
and received while the user focus is associated with the second display,
displaying the application-list over the second application window and
undisplaying the application-list from the first display" (hereinafter the
"disputed limitation"). Id.
We start by determining whether this limitation of claim 16 is present
in claims 1, 7, or 8. In relevant part, claim 1 recites:
... the windowing system enabling display of the application
windows on a first display connected with the computing device
and on a second display ...
. . . the application launcher is concurrently activatable
responsive to first user inputs not associated with the first
display or the second display ... wherein the application
launcher is displayed on only one display at a time ...
responding to each first user input that activates the
application launcher ... when only the second display currently
has the input focus by: (i) determining if the application
launcher is displayed on the first display and if so determined
undisplaying the application launcher from the first display,
the combination of Anttila, Brooks, Bell, and Griffin) with id. at 18-23
(rejecting claims 9 and 10 based on the combination of Anttila, Pinedo, and
Smuga)). Because we decide the Final Office Action made a prima facie
case of obviousness based on rejection Rl, we do not address the new
ground of rejection provided in the Answer or argued in the Reply Brief.
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and (ii) displaying the application launcher on the second
display
App. Br. 19 (Claims App'x) (emphasis added). In other words, claim 1
recites a "first user input" that is "not associated with the first display or the
second display." Id. If this input is received when the "second display[]
has the input focus," then the method responds by "displaying the
application launcher on the second display" and may "undisplay[] the
application launcher from the first display." Id.
Accordingly, we conclude claim 1 includes limitations analogous to
the disputed limitation of claim 16. In particular, the "user input" recited by
claim 16 corresponds to the "first user input" recited by claim 1. Compare
id. at 24 (reciting "user input not associated with either display") with id. at
19 (reciting "first user input not associated with the first display or the
second display"). The recited "either display" in claim 16 corresponds to the
"first display" and "second display" in claim 1. See id. at 23 (reciting a
"first display" and a "second display"). The "application-list" recited by
claim 16 corresponds to the "application launcher" recited by claim 1.
Compare id. at 23-24 (reciting "an application-list comprising a set of
application representations that when displayed can be interacted with by the
user to open application windows of respectively represented applications")
with id. at 19 (reciting "application launcher comprising indications of
respective applications on the computing device"). Finally, the disputed
limitation in claim 16 recites displaying "over the second application
window," and the claim also recites that the window "substantially fully
occup[ies] the display." Id. at 23, 24. This limitation corresponds to a
limitation in claim 1 that requires the application launcher to be displayed
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"on the second display" and specifies that the system displays "application
windows ... on a second display." Id. at 19.
In addition, Appellants present other arguments seeking to show error
in the rejection of claim 16. See App. Br. 7-12 (alleging error in
combination of Anttila and Bell), 15-16 ( alleging failure to establish prima
facie case of obviousness). However, for each of these, Appellants rely on
the same arguments made with respect to claim 1 (id.), and these arguments
are not persuasive for the reasons discussed above. Consequently, we find
these arguments do not show error in the Examiner's factual findings or
conclusion of obviousness of claim 16.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's rejection of claim 16. Accordingly, we
sustain the Examiner's obviousness rejection of independent claim 16 and its
dependent claims (i.e., claims 17-19).
Obviousness Rejection R4 of Claims 9, 10, 12, 13, 21, and 22
The Examiner rejected claims 9, 10, 12, 13, 21, and 22 under 35
U.S.C. § 103 as obvious over Anttila, Pinedo, and Smuga. Final Act. 18-24.
Appellants argue these claims as a group, so we limit our discussion to
independent claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
First, Appellants allege the Examiner erred in rejecting claim 9 for
some of the same reasons articulated above with respect to claim 1. In
particular, Appellants argue the rejection of claim 9 is in error because:
(1) Anttila and Bell cannot be combined (App. Br. 7-12, 15), and (2) the
Examiner failed to present a prima facie case of obviousness with respect to
the combination of Anttila, Bell, and Griffin (id. at 15-16). Each of these
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arguments rely on the disclosure of the Bell or Griffin references; however,
the Examiner did not reject claim 9 as obvious over a combination that
includes either Bell or Griffin. See generally Final Act. Because these
arguments fail to address the rejection as articulated, they do not persuade us
of error.
Second, Appellants argue the Examiner failed to establish a prima
facie case with respect to Smuga because it provides circular reasoning and
does not cite prior art as providing a basis for the rationale. App. Br. 17; see
Reply Br. 5 (alleging error in Examiner's use of "one sentence with no facts
cited in support"). We disagree. As explained above (supra Claim 1; Prima
Facie Case), an Examiner's rejection establishes a prima facie case when it
provides notice of the reasons for the rejection that allow the applicant to
recognize and respond to the grounds. See Jung, 637 F.3d at 1362. The
length of the Examiner's rationale is not controlling, and there is no
requirement to cite a prior art reference to support that rationale. See KSR,
550 U.S. at 418-19 (holding an express teaching, suggestion, or motivation
in the prior art is not a requirement for an obviousness determination). The
relevant question is whether the Examiner has sufficiently explained the
findings and rationale, and based on this record, we determine the Examiner
has done so.
Finally, Appellants allege the rejection of claim 9 is in error because
Anttila fails to "teach" the claimed "input focus." App. Br. 16. In support,
Appellants reference the arguments presented for claim 1 regarding this
claim term, and Appellants argue the cited portion of Anttila only discusses
the "general mechanism" of "controlling which display the switcher is
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displayed on," not "how to decide or control which display will be used."
Id. ( emphasis added).
Appellants' arguments do not persuade us of error. The disputed
limitation of claim 9 recites that, when activated, the user interface element
is displayed "on, and according to, whichever of the displays is currently
exclusively designated as having user input focus." App. Br. 21 ( Claims
App'x). The Examiner found Anttila teaches "the task selection interface is
available to be displayed in either the first or the second interface at any
time." Final Act. 19 (citing Anttila ,i 56). The cited paragraph teaches
display of a task selection interface on display 602 after the user selects icon
706 on display 602. Anttila ,i 56; see id. at Fig. 7 A-7B (visual
representation of this teaching). The cited paragraph references a
corresponding discussion of launching a task selection interface on the other
display after a user selects an icon on that other display. Id. at ,i 56; see also
id. at ,i,i 54-55, Fig. 6A-6B (describing launch of task selection interface on
display 604 after user selects icon 606).
Appellants contend "[t]he cited passage has no mention of how to
decide or control which display will be used." App. Br. 16. We disagree,
and we find Anttila teaches use of the display that corresponds to the icon
selected by the user. Appellants neither address the passage cited by the
Examiner nor explain why it fails to teach or suggest the disputed limitation
of claim 9. See id. (providing summary of Anttila ,i 55, rather than ,i 56).
Accordingly, Appellants' arguments do not persuade us of Examiner error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the limitations of claim 9, nor do we find
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error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 9 and its respective dependent claims (i.e., claims 10, 12,
13, 21, and 22).
Obviousness Rejections R2, R3, and R5-R7 of Claims 4-6, 11, 14, and 20
The Examiner rejected dependent claims 4-6, 11, 14, and 20 as
obvious under 35 U.S.C. § 103. Specifically, the Examiner rejected claims 4
and 5 as obvious over Anttila, Brooks, Bell, Griffin, and Park (Final Act.
15-17), claim 6 as obvious over Anttila, Brooks, Bell, Griffin, and Ubuntu
Autohide (id. at 17-18), claim 11 as obvious over Anttila, Pinedo, and
Ubuntu Dual Monitor (id. at 24-26), claim 14 as obvious over Anttila,
Pinedo, and Park (id. at 26-28), and claim 20 as obvious over Anttila,
Brooks, Bell, Griffin, and Pinedo (id. at 29-30).
Appellants do not address any of these claims or rejections. See
generally App. Br. When Appellants do not separately argue the
patentability of dependent claims, the claims stand or fall with the claims
from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986);
see 37 C.F.R. § 41.37(c)(l)(iv) (2014) ("The arguments shall explain why
the examiner erred as to each ground of rejection contested by appellant.").
Accordingly, because we sustain the rejection of independent claims
1, 9, and 16, we also sustain these rejections of dependent claims 4-6, 11,
14, and 20.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4-14,
and 16-22.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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