Ex Parte Haley

Board of Patent Appeals and Interferences

Jan 31, 2007

10116774 (B.P.A.I. Jan. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN D. HALEY
____________

Appeal 2006-2033
Application 10/116,774
____________

ON BRIEF
____________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal from the final rejection of claims
1-23, which are all of the claims pending in this application.
The claimed invention relates to an adaptive user interface generator
for generating code which is used for providing a user interface display that
includes a plurality of displayed user interface elements. A user interface
presentation format of a displayed image which can be adaptively scaled to
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Application 10/116,774

fit different display image sizes is determined from a source of presentation
control information. The presentation control information specifies the
relative location and size of the individual interface display elements
exclusive of data which identifies fixed position location information of the
individual interface display elements.
Claim 1 is illustrative of the invention and reads as follows:
1. An adaptive user interface generator for generating code representing
an executable procedure for use in providing a user interface display
including a plurality of displayed user interface display elements,
comprising:

a source of presentation control information determining a user interface
presentation format of a display image capable of being adaptively scaled to
fit different display image sizes, said presentation control information
specifying relative location of individual interface display elements in a
display image exclusively of fixed position location information of said
interface display elements; and

a transformation processor for transforming said presentation control
information into executable procedure representative code for use in
providing a user interface display image with a format suitable for a desired
display size.

The Examiner relies on the following prior art:
Armga 6,390,371 May 21, 2002
(filed Feb. 13, 1998)
Moore 6,310,601 Oct. 30, 2001
(filed May 12, 1998)
Burkett 6,476,828 Nov. 05, 2002
(filed May 28, 1999)

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Application 10/116,774

Claims 1-23, all of the appealed claims, stand finally rejected under
35 U.S.C. § 103(a). As evidence of obviousness, the Examiner offers Moore
in view of Armga with respect to claims 1-12 and 14-23, and adds Burkett to
the basic combination with respect to claim 13.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs1 and Answer for the respective details.
OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner and the evidence of obviousness relied
upon by the Examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, Appellant’s
arguments set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in the Examiner’s
Answer.
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would not
have suggested to one of ordinary skill in the art the obviousness of the
invention as set forth in claims 1-23. Accordingly, we reverse.

1 The Appeal Brief was filed October 12, 2005. In response to the
Examiner’s Answer mailed December 28, 2005, a Reply Brief was filed
February 16, 2006, which was acknowledged and entered by the Examiner
as indicated in the communication dated March 29, 2006.
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Application 10/116,774

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner is expected to make the factual
determinations set forth in Graham v, John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The Examiner must articulate reasons for the
Examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the Examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. at 1343. The Examiner cannot
simply reach conclusions based on the examiner’s own understanding or
experience – or on his or her assessment of what would be basic knowledge
or common sense. Rather, the Examiner must point to some concrete
evidence in the record in support of these findings. In re Zurko, 258 F.3d
1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the Examiner
must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are
deemed to support the Examiner’s conclusion. These showings by the
Examiner are an essential part of complying with the burden of presenting a
prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden
then shifts to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the

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Application 10/116,774

evidence as a whole and the relative persuasiveness of the arguments. See
Id.; In re Hedges, 783 F.2d 1038, 1040, 228 USPQ 685, 687 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 146-147
(CCPA 1976).
With respect to appealed independent claims 1, 10, 15, and 19,
Appellant’s arguments in response to the obviousness rejection assert a
failure by the Examiner to establish a prima facie case of obviousness since
all of the claimed limitations are not taught or suggested by the applied prior
art references. After reviewing the applied Moore, Armga, and Burkett
references in light of the arguments of record, we are in general agreement
with Appellant’s position as stated in the Briefs.
In particular, we agree with Appellant (Brief, pages 13-16, 24-26,
29-31, 32-34; Reply brief, pages 10-14) that, in contrast to the claimed
invention, neither Moore nor Armga, individually or collectively, disclose
the specifying of the relative location of individual interface display
elements exclusive of fixed position location information as claimed. Our
review of the disclosure of Moore reveals that, while one of the command
structure options, i.e., “WIDTH=nn%,” is arguably a relative location
specification, it is quite clear that other command structure options such as
“WIDTH=nn” and “HEIGHT=nn” are fixed position options (Moore,
column 4, lines 5-60). In other words, Moore does not provide for
specifying relative location of display elements exclusive of fixed position
information as claimed.

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We find similar deficiencies with respect to the disclosure of Armga.
The Examiner suggests (Answer, page 12) that, since Armga is directed to
providing a uniform visual display over a variety of display devices having
differing screen sizes, display position information can not be
accommodated with fixed position information but, rather, would require
relative location information. We find, however, no evidence forthcoming
from the Examiner that would support such a conclusion. In our view, the
evidence of record, in particular, the Moore reference discussed supra,
would indicate that, contrary to the Examiner’s contention, the
implementation of a uniform display across devices with different display
sizes does not necessarily mean that relative location information for the
display elements must be used to the exclusion of fixed position as required
by the claims on appeal.
It is well settled that “the Board cannot simply reach conclusions
based on it own understanding or experience - or on its assessment of what
would be basic knowledge or common sense. Rather, the Board must point
to some concrete evidence in the record in support of these findings.” In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). See
also In re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.
Cir. 2002), in which the court required evidence for the determination of
unpatentability by clarifying that the principles of “common knowledge” and
“common sense” may only be applied to analysis of evidence, rather than be
a substitute for evidence. The court further expanded their reasoning on this
topic in In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002).
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In view of the above discussion, it is our opinion that even assuming,
arguendo, that proper motivation existed for the Examiner’s proposed
combination of Moore and Armga, the ensuing combination would not result
in the specific combination set forth in appealed independent claims 1, 10,
15, and 19. Accordingly, since we are of the view that the proposed
combination of references set forth by the Examiner does not support the
obviousness rejection, we do not sustain the rejection of independent claims
1, 10, 15, and 19, nor of claims 2-9, 11, 12, 14, 16-18, and 20-23 dependent
thereon.
We also do not sustain the Examiner’s obviousness rejection of
dependent claim 13 in which the Burkett reference is added to the
combination of Moore and Armga to address the claimed user update
feature. We find nothing, however, in the Burkett reference which would
overcome the innate deficiencies of the previously discussed Moore and
Armga references.

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In summary, we have not sustained the Examiner’s rejections of any
of the claims on appeal. Therefore, the decision of the Examiner rejecting
claims 1-23 under 35 U.S.C. § 103(a) is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP)
Administrative Patent Judge )

ARD:pgc
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Elsa Keller
Intellectual Property Department
Siemens Corporation
186 Wood Avenue South
Iselin, NJ 08830
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