Ex Parte HaleyDownload PDFBoard of Patent Appeals and InterferencesJan 31, 200710116774 (B.P.A.I. Jan. 31, 2007) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 Appeal 2006-2033 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) 2 Appeal 2006-2033 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. 3 Appeal 2006-2033 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 4 Appeal 2006-2033 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. 5 Appeal 2006-2033 Application 10/116,774 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). 6 Appeal 2006-2033 Application 10/116,774 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. 7 Appeal 2006-2033 Application 10/116,774 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 8 Appeal 2006-2033 Application 10/116,774 Elsa Keller Intellectual Property Department Siemens Corporation 186 Wood Avenue South Iselin, NJ 08830 9 Copy with citationCopy as parenthetical citation