Ex Parte Gengler et al

Patent Trial and Appeal Board

Feb 25, 2013

11556856 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM H GENGLER and MARK D. ROGALSKI

Appeal 2010-010288
Application 11/556,856
Technology Center 2100
____________

Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 8, 11-14, and 21-31. Claims 1-7, 9, 10, and 15-20 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a method and system for
providing contextual help in a computer controlled display interface. See
Spec. 17, Abstract of the Disclosure.
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Claims 8 and 21 are illustrative, with key disputed limitations
emphasized:

8. A method for providing contextual help data in a
computer controlled user interactive display interface
comprising:

displaying a menu of a plurality of selectable items,
each representative of a system function;

enabling a user to select a menu item to perform the
represented function;

enabling a user to select a menu item for help data for
said selected item;

responsive to said user selection of a menu item for
help, determining whether the source of contextual help for
said selected item is in a running application program or in
the operating system of said computer;

linking each of said plurality of menu items to a
source of contextual help data in a running application
program for each of said menu items related to said
application program;

linking each of said plurality of menu items to a
source of contextual help data in the operating system of
said computer for each of said menu items related to said
operating system; and

displaying said contextual help data for a menu item
selected for help responsive to a selection of said menu
item.

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21. A method for providing contextual help data in a
computer controlled user interactive display interface
comprising:

displaying a menu of a plurality of selectable items,
each representative of a system function;

enabling a user to select a menu item to perform the
represented function;

enabling a user to select a menu item for help data for
said selected item;

determining if said menu item selected for help is
disabled;

if said menu item selected for help is disabled,
displaying help data disclosing how said disabled item may
be enabled; and

if said menu item selected for help is not disabled,
displaying contextual help data for said selected menu item.

The Examiner relies on the following as evidence of unpatentability:
Cadiz US 2003/0164862 A1 Sep. 4, 2003
Vaidyanathan US 6,467,081 B2 Oct. 15, 2002

THE REJECTION
The Examiner rejected claims 8, 11-14, and 21-31 under 35 U.S.C.
§103(a) as unpatentable over Cadiz and Vaidyanathan. Ans. 3-7.1

1 Throughout this opinion, we refer to the Appeal Brief filed January 20,
2010; the Examiner’s Answer mailed April 29, 2010; and, the Reply Brief
filed June 28, 2010.
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Application 11/556,856
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ISSUE
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal:
Under § 103, has the Examiner erred in rejecting claims 8 and 21 by
finding that Cadiz and Vaidyanathan, collectively, show or suggest:
(a) determining whether a source for help, in response to a request
for help, is within an application or a computer operating
system and then linking a menu item to that source, as set
forth in Claim 8; and
(b) determining whether a menu item selected for help is disabled
and then either displaying the requested help or displaying
how to enable the menu item, as set forth in Claim 21?

ANALYSIS
Appellants argue that the Examiner erred by rejecting claim 8 under
§103 over Cadiz and Vaidyanathan in view of the failure of the Cadiz
reference to disclose access to “help data.” App. Br. 10. Appellants argue
that Cadiz cannot, therefore, suggest “responsive to said user selection of a
menu item for help, determining whether the source of contextual help for
said selected item is in a running application program or in the operating
system of said computer” (claim 8) and “linking each of said plurality of
menu items to a source of contextual help data in the operating system of
said computer for each of said menu items related to said operating system”
(id.) and therefore it is “accordingly submitted that Cadiz is not an
anticipatory reference under 35 USC 102(b) with respect to all of the claims
in the present Application.” Id. at 11.
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The Examiner finds that Cadiz depicts a plurality of selectable items,
each representative of a system function, and further that Cadiz teaches “an
integrated dynamic peripheral interface for providing dynamic
communication access across multiple platforms/applications.” Ans. 5-6.
The Examiner also points out that the rejection of all of the claims in the
present application is under 35 U.S.C. §103(a) and not under §102(b) as
argued by Appellants. Ans. 9.
We find that Appellants have failed to address the combination of
references relied upon by the Examiner, and Appellants merely urge that the
alleged failure of Cadiz to display “help data” is sufficient grounds to
reverse the Examiner. Appellants do not traverse the Examiner’s assertions
regarding the teachings of Cadiz noted above, with regard to an interface
with access across “multiple platforms/applications” which we find to be at
least suggestive of accessing help data across applications and operating
systems, as claimed by Appellants. Further, the distinction argued by
Appellants, namely that Cadiz does not display “help data,” is not
persuasive. The “help data” displayed within Appellants’ invention is only
visible to a human operator, does not affect the manner in which the claimed
system operates and is, consequently, nonfunctional, merely descriptive
matter.
"Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious." Ex parte Curry,
84 USPQ2d 1272, 1274 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004)), aff’d, Appeal No. 2006-1003 (Fed. Cir. 2006).
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With respect to claim 21, Appellants argue that the cited references
fail to show or suggest displaying requested help or displaying information
on how to enable help if that function is disabled.
Once again, we find the display of “help data” or information on how
to enable “help data” to be nonfunctional descriptive material and not
entitled to patentable weight. Supra, p. 5.
Further, we find that displaying a suggestion to enable a disabled
function when that function is requested by an operator is notoriously well
known and obvious.
Appellants use the Reply Brief to introduce the following new
argument. Appellants allege that the Examiner has not shown “why one
ordinarily skilled in the art would combine the teachings of Vaidyanathan
relating to the development of help function in application programs with the
disclosure of Cadiz in solution of any other problem outside of the specific
problem solved by the present invention.” Reply Br. 5.
“Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not
raised by an appellant in its opening brief . . . is waived.”) (citations and
quotation marks omitted).
Here, the Examiner’s reliance on the combination of Cadiz and
Vaidyanathan in the Examiner’s Answer (p. 3) is identical to that in the
Final Rejection (p. 2), from which the instant appeal was taken. Because the
reliance is identical, we find nothing that would have prompted the new
argument in the Reply Brief. Appellants could have made the argument in
the Appeal Brief and did not. The term “Reply Brief” is exactly that, a brief
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in reply to new rejections or new arguments set forth in an Examiner’s
Answer. Appellants may not present arguments in a piecemeal fashion,
holding back arguments until an examiner answers the original brief. This
basis for asserting error is accordingly waived. See 37 C.F.R. § 41.41(b)(2).

CONCLUSION
The Examiner did not err in rejecting claims 8, 11-14, and 21-31
under § 103.

ORDER
The Examiner’s decision rejecting claims 8, 11-14, and 21-31 is
affirmed.
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).

AFFIRMED

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