Ex Parte Goldthwaite et al

Patent Trial and Appeal Board

Apr 24, 2014

11068106 (P.T.A.B. Apr. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FLORA P. GOLDTHWAITE, JONATHAN C. CLUTS, and
GREGORY L. HENDRICKSON
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Appeal 2011-010631
Application 11/068,106
Technology Center 2600
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Before MAHSHID D. SAADAT, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) the Examiner’s final
rejection of claims 1, 4-13, 15, 17, and 18. Claims 2, 3, 14, and 16 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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STATEMENT OF THE CASE
Appellants’ invention relates “to methods and systems for integrating
physical information items and electronic information items in a single
display location.” Spec. ¶ 0003. Claim 1 illustrates the claimed subject
matter:
1. A computer-implemented method for generating a
display having at least one electronic information item and at
least one physical information item, the method comprising:
receiving a plurality of electronic information items and
causing each electronic information item of the plurality of
electronic information items to be displayed at a first respective
location on a display;
determining that the at least one physical information
item is in communication with the display;
determining whether the at least one physical information
item obstructs a view of an electronic information item of the
plurality of electronic information items;
if the at least one physical information item does not
obstruct the view of the electronic information item, allowing
each electronic information item of the plurality of electronic
information items to be displayed at the first respective
location; and
if the at least one physical information item does obstruct
the view of the electronic information item, causing each
electronic information item of the plurality of electronic
information items to be reoriented to a second respective
location, thereby rebalancing a presentation of the display and
preventing viewing obstructions.

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REJECTIONS AND PRIOR ART
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Klemmer et al., The Designers’ Outpost: A Tangible Interface for
Collaborative Web Site Design, Proceedings of the 14th Annual ACM
Symposium on User Interface Software and Technology, 1-10 (2001) in
view of Gillespie (US 2002/0191029 Al; December 19, 2002).
Claims 4 and 6-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Klemmer in view of Gillespie and further in view of
Usuda (US 5,455,906; October 3, 1995).
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Klemmer in view of Gillespie further in view of Usuda yet further in view of
Rekimoto et al., DataTiles: A Modular Platform for Mixed Physical and
Graphical Interactions, Proceedings of the SIGCHI Conference on Human
Factors in Computing Systems, 269-276 (2001).
Claims 10-13, 15, 17 and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Klemmer in view of Gillespie further in view of Usuda
and yet further in view of Scott (US 2005/0261011 Al; November 24, 2005).
ISSUES
We consider only the following three issues, as these issues are
dispositive of the appeal:
1. Does the cited art teach or suggest “causing each electronic
information item of the plurality of electronic information items to be
reoriented to a second respective location, thereby rebalancing a
presentation of the display and preventing viewing obstructions” as
recited in claim 1?
2. Does the cited art teach or suggest “determining that the
information provided by the physical information item is indicative of
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an event for which attendance is requested, and comparing the
information with at least one electronic time management system to
determine attendance availability” as recited in claim 15?
3. Did the Examiner provide sufficient supporting rationale for the
obviousness rejections of claims 1, 4, and 15?
ANALYSIS
Claim 1
Claim 1 recites “causing each electronic information item of the
plurality of electronic information items to be reoriented to a second
respective location, thereby rebalancing a presentation of the display and
preventing viewing obstructions.” The Examiner concluded Gillespie taught
this limitation because Gillespie disclosed “moving multiple icons” and
“icons could be messages that are moved around the display in response to
physical interaction with the display.” (Ans. at 18.) The Examiner found it
would have been obvious to combine the teachings of Gillespie with
Klemmer “for the benefit of allowing the user to place physical information
notes or objects on a display without having to insure [sic] that any
underlying electronically displayed information is covered.” (Ans. at 5.)
Appellants argue the cited art does not teach the recited “causing”
limitation. Appellants also contend the Examiner’s rationale for combining
the cited art is conclusory and lacks articulated reasoning with some rational
underpinning. (Reply Br. at 5-8.)
We agree with Appellants. First, although Gillespie discloses
“moving multiple icons,” claim 1 requires reorienting each “electronic
information item of the plurality of electronic information items to be
reoriented to a second respective location.” Simply teaching that a system
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can move more than one item does not reasonably suggest reorienting every
electronic information item to a second location.
Second, the Examiner’s reason for combining the cited art—allowing
users to place items without ensuring that underlying electronic information
is covered—is unclear in the abstract. Kleemer discloses an interactive
whiteboard that “combines the affordances of paper and large physical
workspaces with the advantages of electronic media to support”
collaborative web design. Kleemer, 2. By contrast, Gillespie teaches a
touch screen that can display a plurality of icons, “with at least one of the
icons identifying at least one region on the touch screen that will cause an
action on the display and not on the touch screen.” Gillespie, ¶ 0009. An
ostensible purpose of both systems is to display electronic information, so it
is unclear why one of skill in the art would have been motivated to modify
either system to allow users to place items without ensuring electronic items
are covered. And despite Appellants’ challenge of this reasoning in their
Appeal Brief, the Examiner did not further address this rationale. Without
additional explanation, the Examiner’s reason for the proposed
modifications is insufficient to support the obviousness rejection.
Claim 4
The Examiner rejected claim 4 over Klemmer and Gillespie “as
applied to claim 1” in view of a third reference, Usuda. (Ans. at 6.) Again,
Appellants contend the Examiner’s rationale for combining the cited art is
conclusory and lacks articulated reasoning with some rational underpinning.
(App. Br. at 22-23.)
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We agree with Appellants. Because the Examiner relied on Klemmer
and Gillespie “as applied to claim 1,” the Examiner’s rejection suffers from
the same insufficient reasoning to combine Klemmer and Gillespie. The
Examiner’s rationale to further modify the Klemmer-Gillespie combination
with the teachings of Usuda is equally conclusory, and in any event, does not
correct the deficiencies of the Klemmer-Gillespie combination. Thus, we
agree the Examiner’s obviousness rejection is improper.
Claim 15
Claim 15 recites “determining that the information provided by the
physical information item is indicative of an event for which attendance is
requested, and comparing the information with at least one electronic time
management system to determine attendance availability.” The Examiner
found Scott taught this limitation. (Ans. at 12.)
Appellants contend the cited art does not teach or suggest the recited
“determining” step. Appellants argue that Scott merely teaches opening a
calendar application when a user interface button is selected. (App. Br. at
25.) Moreover, Appellants once again assert the Examiner’s rationale for
combining the cited art is conclusory and lacks articulated reasoning with
some rational underpinning. (Ans. at 26-29.)
We agree with Appellants. The Examiner did not directly address
Appellants’ arguments concerning Scott. Rather, the Examiner asserted
Appellants were relying on limitations not recited in the claims and
referenced Usuda. (Ans. at 25.) But Appellants explicitly (and repeatedly)
argued the cited references do not teach the disputed “determining”
limitation, (see, e.g., App. Br. at 24-25), and the Examiner’s passing
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reference to Usuda does not explain how Usuda makes up for Scott’s alleged
deficiencies. Moreover, it is not readily apparent why Scott teaches or
suggests “determining that the information provided by the physical
information item is indicative of an event for which attendance is requested”
or “comparing the information with at least one electronic time management
system to determine attendance availability.”
Even if we were to agree Scott suggested the disputed limitation, the
Examiner has not provided an adequate rationale for combining Scott with
the other cited art. Scott relates to mobile communication devices such as
PDAs, particularly “user interfaces . . . for integrating various applications,
such as a calendar, a contact list, an address book, and instant messaging in a
mobile communication device.” Scott, ¶ 0002. And, as noted above,
Kleemer concerns an interactive whiteboard for collaborative web design.
Kleemer, 2. It is entirely unclear why one of skill in the art would have
modified an interactive whiteboard for collaborative web design with a PDA
user interface. We agree with Appellants the Examiner’s cursory reasoning
for the proposed modifications—to allow users to handle time management
transaction within the display board environment—is not supported by the
requisite articulated reasoning with rational underpinnings.
DECISION
We reverse the rejection of claims 1, 4-13, 15, 17, and 18 under 35
U.S.C. § 103(a).
REVERSED

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