Ex Parte Friskel

Board of Patent Appeals and Interferences

Nov 14, 2007

10058097 (B.P.A.I. Nov. 14, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES FRISKEL
____________

Appeal 2007-1961
Application 10/058,097
Technology Center 2100
____________

Decided: November 14, 2007
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 4-9, 11, 12, 14, 16, and 24-28.
The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

A. INVENTION
The invention at issue on appeal develops and processes a graphical
user interface ("GUI") for a computer application program. (Specification
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21.) Complex graphical images are often created for screens of a GUI.
Prior approaches to developing applications featuring such complex images
required a developer to write a dedicated computer program or to use
graphics files embedded in a computer program like a web browser. Once a
complex GUI was developed, moreover, making changes to thereto (e.g.,
adding new windows or buttons) could be time consuming. (Id. 2.)

In contrast, the Appellant's graphics engine 112 manages pairs of
graphics files and configuration files, which collectively define a GUI for an
application. Each pair corresponds to a window forming at least a part of the
GUI. Each graphics file 108 contains at least one image defining a window
of the GUI; and each configuration file 110 contains parameters defining
how the graphics engine processes the graphics file. (Id. 21.)

An application program ("application") can be developed and
modified merely by creating and modifying a graphics file and configuration
file. No re-compilation of graphics engine is required as part of creating or
modifying the application. Therefore, explains the Appellant, the
application can be created or updated by persons having less skill than
would be required to create and modify the computer programming code
used to provide graphics engine. (Id. 6.)

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B. ILLUSTRATIVE CLAIM
Claim 26, which further illustrates the invention, follows.
26. A method of displaying a visible portion of a user interface
for an application program, the method comprising:
defining a graphical image for the visible portion of the
user interface in a first computer file, wherein the graphical
image provides at least an outer boundary of the visible portion;
defining in a second computer file a plurality of
parameters for associating a functional portion of the user
interface with the graphical image; and
processing the first and second computer files to display
the visible portion of the user interface and configure the
functional portion of the user interface.

C. REJECTION
Claims 4-9, 11, 12, 14, 16, and 24-28 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by U.S. Patent No. 6,292,185 ("Ko").

II. CLAIM GROUPING
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
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together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately." 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).1

Here, the Appellant argues claims 4-9, 11, 12, 14, 16, and 24-28,
which are subject to the same ground of rejection, as a group. (Br. 5-8). We
select claim 26 as the sole claim on which to decide the appeal of the group.
Rather than reiterate the positions of parties in toto, we focus on the issues
therebetween.

III. IMAGE DEFINING FILE
The Examiner finds, "The image files of the default.xtd comprise
image files for displaying the background 702, buttons 704-710, and the
dimensions of area 714 (8:21-27). Thus Ko's default.xtd file read on the
appellants' claimed 'first computer file' as recited." (Answer 5.) The
Appellant argues, "Ko et al. does not teach or suggest that the disclosed
button image is defined in a first computer file. . . ." (Reply Br. 1-2.)
Therefore, the issue is whether Ko defines an image for at least an outer
boundary of the visible part of a GUI in a first computer file.

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed.Cir. 2003) (internal citations omitted).

A. CLAIM CONSTRUCTION
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372, (Fed. Cir. 2000)). "Moreover, limitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d
1181, 1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, (Fed. Cir.
1989)).

Here, claim 26 recites in pertinent part the following limitations:
"defining a graphical image for the visible portion of the user interface in a
first computer file, wherein the graphical image provides at least an outer
boundary of the visible portion. . . ." Giving the representative claim the
broadest, reasonable construction, the limitations require defining, in a first
computer file, an image for at least an outer boundary of the visible part of a
GUI.

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B. ANTICIPATION ANALYSIS
"[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367,
1371-72 (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15, 19 L.
Ed. 829 (1869); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). "A
reference anticipates a claim if it discloses the claimed invention 'such that a
skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.'" In re
Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301
F.2d 929, 936 (CCPA 1962)). Of course, anticipation "is not an 'ipsissimis
verbis' test." In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citing Akzo
N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 & n.11 (Fed.
Cir. 1986)). "An anticipatory reference . . . need not duplicate word for
word what is in the claims." Standard Havens Prods. v. Gencor Indus., 953
F2d 1360, 1369 (Fed. Cir. 1991).

Here, Ko discloses "[a] method and apparatus for tailoring a graphical
user interface", specifically an internet web browser. Col. 1, ll. 21-22. The
reference's "FIG. 7 depicts a possible appearance of the customized web
browser 700 with a background image 702 shaped as a soda can, with
buttons including forward 704, reverse 706, refresh 708, and home 710,
[uniform resource locator] URL entry position 712, and a region 714 where
[hypertext markup language] HTML will be displayed." Col. 7, ll. 18-22.
An "editing tool program entitled x2edit is provided to allow a user to
create customized web browser data files including default.xtc and
default.xtd . . . for use in creating [the] customized web browser. . . ."
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Col. 8, ll. 1-5. "Program x2edit also creates file default.xtd which includes
the image files of background 702 and buttons 704-710." Id. at ll. 21-23.
The aforementioned Figure 7 shows that the background image 702 forms
the outer boundary of the visible part of GUI 700. Because file default.xtd
includes the image file of background 702, which forms the outer boundary
of the visible part of GUI 700, we agree with the Examiner's finding that Ko
defines, in a first computer file, an image for at least an outer boundary of
the visible part of a GUI.

IV. PARAMETERS DEFINING FILE
The Examiner finds, "Functional portion of the interface such as
location of the control buttons, its images, and its functions are specified by
the default.xtc (6:63-7:7, 7:18-22, 8:18-21). Thus Ko's default.xtc file read
on the appellants' claimed 'second computer file' as recited." (Answer 5.)
The Appellant argues, "Ko et al. clearly does not disclose that a plurality of
parameters for associating functions with the button image are defined in the
second file. Ko et al. merely discloses that 'the function of the button' is
specified in a file." (Reply Br. 2.) Therefore, the issue is whether Ko
defines, in a second computer file, parameters for associating a functional
portion of the GUI with the image.

A. CLAIM CONSTRUCTION
Here, claim 26 recites in pertinent part the following limitations:
"defining in a second computer file a plurality of parameters for associating
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a functional portion of the user interface with the graphical image. . . ."
Giving the representative claim the broadest, reasonable construction, the
limitations require defining, in a second computer file, parameters for
associating a functional portion of the GUI with the image.

B. ANTICIPATION ANALYSIS
Ko's "[p]rogram x2edit [also] creates file default.xtc which includes
the positions of background 702, buttons 704-710, and URL locator 712, as
well as the names of the image files background 702 and buttons 704-710."
Col. 8, ll. 18-21. In the file default.xtc, moreover, "[d]irective FUNCTION=
Back specifies the function of the [respective] button." Col. 7, ll. 2-3.

Because the reference explains that buttons 704, 706, 708, and 710
enable a user to navigate the GUI in the forward direction, navigate it in the
reverse direction, refresh the GUI, and navigate it to home, respectively, id.
at ll. 20-21, we find that these buttons constitute a functional portion of the
GUI 700.2 We further find that the positions of the background 702, the
buttons 704-710, and the URL locator 712, as well as the names of the
image files background 702 and buttons 704-710 constitute parameters. By
specifying inter alia the position of the buttons 704-710 and the positions of
the background image 702, which are all displayed on the same GUI 700,
the parameters "associate" the buttons with the background image. Because
Ko's file default.xtc defines parameters that associate the buttons of his GUI

2 By arguing that "Ko et al. merely discloses that 'the function of the button'
is specified in a file," (Reply Br. 2), the Appellant admits as much.
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with the background image, we agree with the Examiner's finding that Ko
defines, in a second computer file, parameters for associating a functional
portion of the GUI with the image.

V. ORDER
For the aforementioned reasons, the rejection of claim 26 and of
claims 4-9, 11, 12, 14, 16, 24, 25, 27, and 28, which fall therewith under
§ 102(e) is affirmed.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us
nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362,
1367, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the
applicant challenging a decision not be permitted to raise arguments on
appeal that were not presented to the Board.")

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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