Ex parte Grossman et al.

Board of Patent Appeals and Interferences

May 31, 2001

08327085 (B.P.A.I. May. 31, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BERTRAND M. GROSSMAN and CLIFFORD A. PICKOVER
_____________
Appeal No. 1996-4148
Application No. 08/327,085
______________
ON BRIEF
_______________
Before FLEMING, HAIRSTON and DIXON, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-20, all of the claims pending in the present
application.
Appeal No. 1996-4148
Application No. 08/327,085
2
The invention relates to apparatus and methods for
manipulating multiple windows or icons on a computer graphical
interface (figure 2, numeral 130). Images (figure 2, numerals
245, 246) representative of a function to be performed on a
system, are each presented on a separate page (specification,
page 3, lines 23-26; figure 2, numeral 210). These pages are
arranged within the interior of a carrousel (specification,
page 3, lines 14-15; figure 2, numeral 150) rendered on the
graphical interface, with one edge of each page attached to
the axis (numeral 230) of the carrousel (numeral 150) and the
page extending radially outward from the axis. Only the
images of a subset of the pages (numeral 210) in the carrousel
(numeral 150) are fully exposed for viewing within the
carrousel at any given time. The pages are rotated around the
axis (numeral 230) within the carrousel icon to change the
subset of pages containing the viewable images.
The method relates to arranging images of selectable
items (figure 2, numerals 245, 246, 250) on a display screen
and selecting the images for operation of the represented
items. Each item is represented as a separate representative
Appeal No. 1996-4148
Application No. 08/327,085
3
image on a page (numeral 210) and the pages are arranged into
a three dimensional icon (numeral 150) with one edge of the
pages attached to a common axis (numeral 230) in the middle of
the icon (numeral 150). The pages are rotated about the axis
within the
icon to change the subset of pages containing the viewable
images. An item for operation on the system is chosen by
selecting an image representing that item from the viewable
subset of pages.
Independent claims 1 and 18, which are the sole
independent claims rejected, are reproduced as follows:
1. An apparatus for shoing a plurality of video displays
comprising:
a. a graphical interface capable of rendering a three
dimensional perspective of an object;
b. a plurality of video displays set in a carrousel
rendered on said graphical interface, each display presented
on a page within the carrousel, each page having a page
boundary, and the boundary of the page having an axial edge
facing the center of the carrousel with the page extending
radially outward from the axial edge; and
c. an axis at the center of the carrousel to which the
axial edge of each page is attached so that the video display
on a subset of one or more of the pages are fully visible for
viewing within the carrousel on the interface while the
remainder of the video displays are not.
Appeal No. 1996-4148
Application No. 08/327,085
1 The Brief was received June 28, 1996.
2 The Examiner's Answer was mailed August 20, 1996.
4

18. A method for arranging images of selectable items on a
display screen of a system and selecting the images for
operation of the represented items on the system comprising
the steps of:
a. representing each of the selectable items as a
separate representative image on a page;
b. arranging athe pages into a three dimensional icon
with
one edge of the pages attached to a common axis in the middle
of the icon and the pages with only a subset of one or mokre
of the images viewable at a given time;
c. rotating the pages around the axis within the icon to
change the subset of pages containing the viewable images; and
d. choosing an item for operation on the system by
selecting an image representing that item from the viewable
subset.
The Examiner relies on the following reference:
Kreitman et al. 5,303,388 Apr. 12,
1994
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kreitman et al.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief1, and the Examiner's
Answer2 for the respective details thereof.
Appeal No. 1996-4148
Application No. 08/327,085
5

OPINION
We will not sustain the rejections of claims 1-20 under
35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found
in the prior art, or by implications contained in such
teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ
1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness,
the claimed invention should be considered as a whole; there
is no legally recognizable 'heart' of the invention." Para-
Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085,
1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied, 117
S.Ct. 80 (1996)
Appeal No. 1996-4148
Application No. 08/327,085
6
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
On pages 4-6 of the brief, Appellant argues that Kreitman
et al. fails to teach Appellant's claimed limitations. In
particular, Appellant argues that Kreitman et al. fail to
teach that the informational images are on pages within a
carrousel, as claimed in Appellant's claim 1, and that there
is no teaching in the prior art that would suggest to those
skilled in the art to substitute, or how to substitute, a
carrousel for the cube of Kreitman et al.
Appellant further argues that the geometric
configurations of Kreitman et al. limit the number of faces
and informational images by increasing cluttering and
confusion as they proliferate, whereas Appellant's carrousel
configuration allows
any number of images to be displayed without cluttering the
screen with representational shapes.
Appellant also argues that if it were obvious to one
Appeal No. 1996-4148
Application No. 08/327,085
3 Apple Computer, Inc.
4 Paper No. 5, at pages 3-4.
7
skilled in the art to replace the cubic display of Kreitman et
al. with a carrousel because of the benefits of the carrousel
display, why did Kreitman et al. not suggest a carrousel
display. Appellant further notes that the assignee3 of
Kreitman et al. is known for its use of graphic displays.
In the final rejection4 the Examiner points to column 1,
lines 31-35 of Kreitman et al. which provides ". . . icons are
generally considered to be more visually and logically
appealing to users than text. For example, an icon which
depicts a file folder instantly tells the user that this
object may contain multiple documents." The Examiner then
states that an icon which depicts a file folder is an example
of the carrousel element of claim 1. At page 8 of the final
rejection the Examiner asserts "[c]hanging from a polygon
shape (or any other shape) into a carrousel would have been
obvious to one skilled in the art at the time the present
invention was made because a carrousel can
Appeal No. 1996-4148
Application No. 08/327,085
5 At page 6.
8
fulfill the rotation function more effectively."
In the answer, the Examiner argues that the lack of
disclosure of the carrousel format of display by Kreitman et
al. is not indicative of its nonobviousness. In the answer5,
the Examiner argues that the rotation and visibility of
information pages of a carrousel are the key features of the
present invention, and that rotation and visibility are
disclosed by Kreitman et al. Lastly, in the answer the
Examiner asserts
". . . the basic issue is whether fanciful or arbitrary
"looks" of an otherwise functionally equivalent icon renders
the claim patentable. It is the position of the examiner that
such is a matter of design choice."
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
Appeal No. 1996-4148
Application No. 08/327,085
9
established using hindsight or in view of the teachings or
suggestions of the
inventor." Para-Ordnance, 73 F.3d at 1087, 37 USPQ2d at 1239,
citing W. L. Gore & Assocs., 721 F.2d at 1551, 1553, 220 USPQ
at
311, 312-13. In addition, our reviewing court requires the
PTO to make specific findings on a suggestion to combine prior
art references. In re Dembiczak, 175 F.3d 994, 1000-01, 50
USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
On page 7 of the brief Appellant addresses method claim
18 and contends that Kreitman et al. does not disclose the
claimed pages containing display images being arranged into a
three dimensional icon with one edge of the pages attached to
a common axis in the middle of the icon, and the pages being
rotated around the axis within the icon. The Examiner did not
specifically address this claim or this argument.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
Appeal No. 1996-4148
Application No. 08/327,085
10
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998).
Turning first to Appellant's claim 1, we note that the
claim recites at section (b), ". . . a plurality of video
displays set in a carrousel . . ., . . . each display
presented on a page within the carrousel . . ., the boundary
of the page having an axial edge facing the center of the
carrousel with the page
extending radially outward from the axial edge . . . ." Claim
1,
at section (c), provides ". . . an axis at the center of the
carrousel . . . ." Thus, Appellant's claim 1 requires a
carrousel held display of pages attached to a common axis in
the middle of the carrousel, and the rotation of the pages
around the axis within the carrousel.
Claim 18 recites ". . . representing each of the
selectable items as a separate representative image on a page
. . ., arranging the pages into a three dimensional icon with
one edge of the pages attached to a common axis in the middle
Appeal No. 1996-4148
Application No. 08/327,085
11
of the icon . . ., . . . rotating the pages around the axis
within the icon to change the subset of pages . . . ." Thus,
Appellant's claim 18 requires arranging the pages into a three
dimensional icon with the pages attached to a common axis in
the middle of the carrousel, and the rotation of the pages
around the axis within the icon to change the subset of pages.
The Examiner's citation of column 1, lines 31-35 of
Kreitman et al. as a basis for the statement that an icon
which depicts a file folder is an example of the carrousel
element of claim 1, is not well taken. As this disclosure by
Kreitman refers only to icons which depict a file folder, it
is devoid of any statements or indications that a carrousel
carries the icon, and clearly
provides none of the specific carrousel and page structure
recited in claim 1.
The Examiner's assertion that changing from a polygon
shape (or any other shape) into a carrousel would have been
obvious to one skilled in the art at the time the present
invention was made because a carrousel can fulfill the
rotation function more effectively fails to show why the
Appeal No. 1996-4148
Application No. 08/327,085
12
carrousel's greater effectiveness would obviate its use in
place of the polyhedrons taught by Kreitman et al.
We agree with the examiner's position that the lack of
disclosure of the carrousel format of display by Kreitman et
al. is not indicative of its nonobviousness. Simply because a
single reference does not disclose an embodiment which may be
obvious therefrom is not evidence of nonobviousness, as, inter
alia, it is not the objective of patents to present all
obvious variations of a disclosed invention.
The argument by the Examiner that the rotation and
visibility of information pages of a carrousel are the key
features of the present invention, and that rotation and
visibility are disclosed by Kreitman et al. is noted.
However, even assuming arguendo that these are "key features
of the present invention," these features are pertinent to the
pages of
the carrousel, and no carrousel or pages in a carrousel are
disclosed by Kreitman et al.
In addition, the Examiner asserts that the basic issue is
Appeal No. 1996-4148
Application No. 08/327,085
13
whether fanciful or arbitrary "looks" of an otherwise
functionally equivalent icon renders the claims patentable,
and that is the position of the examiner that such is a matter
of design choice. The Examiner's position appears to be that
the use of icons placed on pages of a rotatable carrousel as
claimed rather than the rotatable geometric configurations,
such as cubes, pyramids or other polyhedrons disclosed by
Kreitman, would merely be a matter of design choice. This
bald assertion is made without evidentiary basis, and ignores
the functional differences between the rotating carrousel and
rotating polyhedron.
Upon a review of the Kreitman et al. reference relied
upon by the Examiner, we fail to find any explicit showing, or
any suggestion or reason to have the carrousel structure
replace the cubical, pyramid or other polyhedron structure of
Kreitman et al., or any evidence that one skilled in this art
would recognize that rotatable carrousels and polyhedrons are
art recognized substitutes.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a
Appeal No. 1996-4148
Application No. 08/327,085
14
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this
evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d 1468, 223 USPQ 785,
788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under section 102 and 103." Citing
In re Warner, 379 F.2d 1011, 1020, 154 USPQ 173, 177
(CCPA 1967).
Therefore, we will not sustain the rejection of claims 1-
20 under 35 U.S.C. § 103 as being unpatentable over Kreitman
et al.
Appeal No. 1996-4148
Application No. 08/327,085
15
We have not sustained the rejection of claims 1-20 under
35 U.S.C. § 103. Accordingly, the Examiner's decision is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
MRF:lbg
Appeal No. 1996-4148
Application No. 08/327,085
16
LOUIS J. PERCELLO
INTELLECTUAL PROPERTY LAW DEPARTMENT
IMB CORPORATION
P.O. BOX 218
YORKTOWN HEIGHTS, NY 10598