Ex Parte Hasha et al

Board of Patent Appeals and Interferences

May 6, 2008

09322964 (B.P.A.I. May. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD HASHA and HARRY S. PYLE
____________

Appeal 2007-2106
Application 09/322,9641
Technology Center 2100
____________

Decided: May 06, 2008
____________

Before FRED E. MCKELVEY, Senior Administrative Patent Judge,
JAMESON LEE and SALLY C. MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL

1 Application for patent filed 28 May 1999. The real party in interest is
William H. Gates III.
Appeal No. 2007-2106
Application 09/322,964

A. Statement of the Case
This is an appeal under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 19, 25, 29-30, 66 and 72.2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm in-part and reverse in-part.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Humpleman et al. US 6,198,479 Mar. 6, 2001
Adams et al. US 6,457,030 Sept. 24, 2002
Claim 29 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Adams.
Claims 19, 25, 30, 66 and 72 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Humpleman in view of Adams.
BACKGROUND
The invention is related to a method for generating a user interface
through user control point (UCP) devices such as a touch panel display or
remote control for controlling components such as a CD player or room
lighting within a home or environment. The user interface includes
individual user interface components for software components used to
control the components within a home or environment. Multiple UCP
devices can be used throughout an environment or home. The user interface
that is generated on an individual UCP within the home or environment will
be dependent upon the type of UCP device that is being used and the

2 Claims 9-18, 37-42 and 52-65 were cancelled in Applicants’ Response to
Restriction Requirement filed 13 Sept. 2002.
Claim 2 was cancelled by Applicants’ Amendment filed 23 Jan. 2003.
Claims 1, 3-8, 20-24, 26-28, 31-36, 43-51, 67-71 and 73-75 were
cancelled by Applicants’ Amendment filed 13 May 2004.
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components that are available to be controlled by the UCP device
(Abs., Spec. 2-4 and 6-9 and figs. 1-6).
B. Issues
The first issue before us is whether Applicants have shown that the
Examiner erred in finding that claim 29 is anticipated under 35 U.S.C. §
102(e) by Adams? For the reasons that follow, Applicants have sufficiently
shown that the Examiner erred in finding that claim 29 is anticipated under
35 U.S.C. § 102(e) by Adams.
The second issue before us is whether Applicants have shown that the
Examiner erred in determining that claims 19, 25, 30, 66 and 72 are
unpatentable under 35 U.S.C. § 103(a) over Humpleman and Adams? For
the reasons that follow, Applicants have not sufficiently shown that the
Examiner erred in determining that claims 19, 25, 30, 66 and 72 are
unpatentable under 35 U.S.C. § 103(a) over Humpleman and Adams.
C. Findings of Facts (“FF”)
The record supports the following findings of facts as well as any other
findings of fact set forth in this opinion by at least a preponderance of the
evidence.
1. Applicants’ claims 19, 25, 29-30, 66 and 72 are the subject of this
appeal.
2. Claims 19, 29-30 and 66 are independent claims.
3. Claims 25 and 72 are dependent on claims 19 and 66 respectively.
4. Applicants indicate that claim 29 stands or falls alone (App. Br. 6-7).
5. Applicants indicate that claims 19, 25, 30, 66 and 72 stand or fall
together (App. Br. 7-8).
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6. Claims 19, 29-30 and 66 are representative and are as follows
[bracketed matter added]:
19. A method in a system for providing a user interface,
the method comprising:
[1] under control of a first software component,
requesting a user interface component of a second
software component to be provided wherein said requesting
includes sending a type of a user control point;
[2] receiving the user interface component wherein the
user interface component that is provided is based on the type
of the user control point; and
[3] using the user interface component to provide a user
interface to the second software component; wherein multiple
user interface components simultaneously provide user
interfaces to the second software component.

29. A method in a computer system for specifying a user
interface, the method comprising:
[1] providing an indication of a user control point device
through which the user interface is to be provided; and
[2] providing an indication of a software component
through which the user interface is provided;
[3] wherein different user interfaces are provided based
on the combination of the provided indications.

30. A method in a computer system for providing user
interfaces for software components, the method comprising:
[1] identifying software components;
[2] based on a type of user control point device for
rendering a control display to a user, retrieving a user interface
component for each identified software component wherein the
retrieving includes providing an indication of a type of user
control point device;
[3] providing an integrated user interface at a user control
point device based on the user interfaces provided by the
retrieved user interface components; and
[4] identifying a group of other software components,
[5] retrieving their user interface components, and
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[6] providing an integrated user interface for that group
of software components at that user control point device.

66. A method in a system for providing a user interface, the
method comprising:
[1] under control of a first software component included
on a user control point device for rendering a display to a user,
[2] requesting a description of a user interface component
of a second software component to be provided wherein the
requesting includes providing an indication of a type of the user
control point device;
[3] receiving the description of the user interface
component; and
[4] using the description of the user interface component
to provide a user interface to the second software component;
[5]wherein multiple descriptions of user interface
components are used to simultaneously provide user interfaces
to the second software component.

7. Applicants’ Specification describes the “user control point device” as
(1) a touch panel display, (2) a television remote control, (3) a display
device with a keyboard or mouse, or (4) a speech synthesizer with voice
recognizer (Spec. 6-7, 11, 17).
8. Applicants’ Specification describes that a “software component” may be
a computer (a) routine, (b) object, (c) thread or (d) process and may
serve to control a hardware component such as a CD player or lighting
(Spec. 6).
9. Applicants’ Specification describes the “user interface” as the content
displayed to the user on the user control point device such as a list of
options, pop up windows or buttons (Spec. 6-9, figs. 1-6).
10. Applicants’ Specification describes that a “user interface component”
provides a user interface for a corresponding software component
(Spec. 3).
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11. The Examiner found that Adams describes providing an indication of
(1) a user control point device through which a user interface is to be
provided (computing device) and (2) a software component through
which the user interface is to be provided (browser), wherein different
user interfaces are provided based on the combination of indications
(Final Rejection 2 and Ans. 3, Adams: col. 3, ll. 21-31 and col. 9,
ll.16-29).
12. The Examiner also found that Adams teaches providing a user interface
through Web content since Adams describes the content may be an
application or applet which inherently provide user interface elements
(Final Rejection 2 and Ans. 3).
13. Adams describes a pervasive computer device (i.e. PDA) that requests
Web content (such as an HTML file) to be displayed on the pervasive
computer device via a Web browser (col. 2, ll. 2-12).
14. The Examiner directs attention to Adams where it describes that certain
elements (i.e. images or text) of the Web content file may be replaced or
modified depending on the type of pervasive computer device that
requests the Web content file (col. 3, ll. 21-31 and col. 9, ll. 16-31).
15. The Examiner found that Humpleman does not describe that the request
of a user interface component includes sending a type of user control
point (Final Rejection 3 and Ans. 4).
16. The Examiner found that Adams describes requesting a user interface
component (HTML file) and receiving a user interface component
based on the type of user control point (computing device) (Final
Rejection 3-4 and Ans. 4-5, Adams: col. 3, ll. 21-32 and col. 9,
ll. 16-29).
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17. The Examiner also found that Adams describes that different interface
components can be presented depending on the specific type of
requesting computing device (Final Rejection 3 and Ans. 4, Adams:
col. 9, ll.16-29).
18. The Examiner found that Adams’s invention advantageously
accommodates computing devices that may have smaller displays and
various performance limitations (Final Rejection 4 and Ans. 5, Adams:
col. 3, ll. 23-24).
19. The Examiner concluded that it would have been obvious to one with
ordinary skill in the art at the time the invention was made to request a
user interface component based on the type of user control point as
suggested by Adams in combination with the teachings of Humpleman.
The Examiner reasoned that one skilled in the art would have
recognized that it would have been beneficial to make Humpleman’s
invention more compatible with different devices comprising a plurality
of display capabilities as suggested by Adams (Final Rejection 4-5 and
Ans. 5-6).
20. Adams describes HTML content or files are displayed via a Web
browser on a pervasive computing device (i.e. PDA) display upon
request by a user (col. 1, l. 66-col. 2, l. 23, col. 3, ll. 33-46, col. 5, l. 42-
col. 6, l. 2).
21. The Examiner found that Humpleman describes identifying software
components (frames [706] and [708] in fig. 8) and retrieving a user
interface component (icon) for each identified software component and
providing an integrated user interface at a control point device (Final
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Rejection 4 and Ans. 5, and Humpleman: col. 6, l. 40-col. 7, l. 32 and
fig. 8).
22. The Examiner also found that Humpleman does not describe that the
retrieving includes providing an indication of a type of user control
point device (Final Rejection 4 and Ans. 5).
D. Principles of Law
“Anticipation under 35 U.S.C. § 102(e) requires that ‘each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.’” In re Robertson, 169 F.3d. 743,
745 (Fed. Cir. 1999) (citing Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 631, (Fed.Cir.1987)).
“[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320,
1324 (Fed. Cir. 2004) (citations omitted).
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734
(2007).
“[T]he examiner bears the initial [examination] burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
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On appeal to the Board, there is a presumption that the Examiner has
correctly discharged the required burden. It is an appellant's burden on
appeal to show that the Examiner erred. Hakim v. Cannon Avent Group,
PLC, 479 F.3d 1313, 1317 (Fed. Cir. 2007) (the presumption of regularity
supports the official acts of public officers, and, in the absence of clear
evidence to the contrary, courts presume that they have properly discharged
their official duties, citing United States v. Chemical Foundation, 272 U.S.
1, 14-15 (1926). See also American Hoist & Derrick Co. v. Sowa & Sons,
Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984) (deference that is due to a
qualified government agency presumed to have properly done its job, which
includes one or more examiners who are assumed to have some expertise in
interpreting the references and to be familiar from their work with the level
of skill in the art and whose duty it is to issue only valid patents).
The Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring an “expansive and
flexible approach” consistent with the Court’s precedents. See KSR Int'l Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1739-41 (2007).
In an obviousness analysis it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. See Id. at 1741.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d, 1392, 1313-14 (CCPA 1971).
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“In determining whether the subject matter of a . . . claim is obvious,
neither the particular motivation nor the avowed purpose of the [inventor]
controls. What matters is the objective reach of the claim.” KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741-42 (2007).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
E. Analysis
Claim 29
Claim 29 recites the limitation “wherein different user interfaces are
provided based on the combination of the provided indications” (of a user
control point device and software component). Our understanding of the
claim language based on Applicants’ Specification is that (1) the “user
control point device” can correspond to a touch panel display, a television
remote control, a display device with a keyboard or mouse or a speech
synthesizer with voice recognizer (FF3 7); (2) a “software component”
corresponds to software used to control individual hardware components
such as a CD player or lighting (FF 8); and (3) a “user interface”
corresponds to the content displayed to the user on the user control point
device such as a list of options, pop up windows or buttons (FF 9).

3 FF indicates Finding of Fact.
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The Examiner found that Adams describes providing an indication of a
user control point device through which a user interface is to be provided
(computing device) and providing an indication of a software component
through which the user interface is to be provided (browser), wherein
different user interfaces are provided based on the combination of
indications (FF 11). The Examiner also found that Adams teaches providing
a user interface through Web content since Adams describes the content may
be an application or applet which inherently provide user interface elements
(FF 12). We understand the Examiner to have found that Adams describes a
pervasive computing device such as a PDA (Personal Digital Assistant) that
corresponds to Applicants’ “user control point device”, a Web browser that
corresponds to Applicants claimed “software component” and applications
or applets provided through the Web content that correspond to Applicants’
“user interface” (FFs 11-12).
More specifically, Adams describes a pervasive computer device (i.e.
PDA) that requests Web content (such as an HTML file) to be displayed on
the pervasive computer device via a Web browser (FF 13). Depending on
the type of pervasive computing device that requests the Web content file,
certain elements (i.e. images or text) of the Web content file may be replaced
or modified (FF 14).
Applicants argue that Adams does not teach or suggest providing
different user interfaces based on the combination of the provided
indications of a user control point device and software component (App. Br.
7 and Reply Br. 2). Applicants argue that Adams’ Web content is displayed
based only on client display hardware parameters (resolution, screen size)
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and not based on a client software component because Adams always
describes the client software component as a browser (App. Br. 7).
It is true that Adams’ elements of the Web content file are modified
based on the type of pervasive computing device (FF 14). However, the
Examiner has not directed us to where Adams describes that the elements of
the Web content file are modified based on a combination that includes an
indication of the software component (i.e. Web browser) which provides the
user interface. The portions of Adams that the Examiner has directed us to
describe that the content file is modified based only on the parameters of the
type of computing device (FF 14). There is nothing in the descriptions that
the Examiner has directed us to which support the finding that the
modification is also determined based on the provided indications of the
software component (i.e. Web browser) (FF 14). Accordingly, we are
unable to hold that the Examiner's finding is supported by substantial
evidence. For all these reasons Applicants have sufficiently shown that the
Examiner erred in determining that claim 29 is anticipated by Adams.
Claims 19, 25, 30, 66 and 72
Claim 19
Claim 19 recites “under control of a first software component, requesting
a user interface component of a second software component to be provided
wherein said requesting includes sending a type of a user control point”. As
explained above, our understanding of the claim language based on
Applicants’ Specification is that (1) “a user control point” can correspond to
a touch panel display, a television remote control, a display device with a
keyboard or mouse, and a speech synthesizer with voice recognizer (FF 7); .
(2) a “second software component” corresponds to software used to control
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individual hardware components such as a CD player or lighting (FF 8); and
(3) the “user interface component of a second software component”
corresponds to a user interface for a corresponding second software
component (FF 10).
The Examiner found that Humpleman does not describe that the request
of a user interface component includes sending a type of user control point
(FF 15). The Examiner found that Adams describes requesting a user
interface component (HTML file) and receiving a user interface component
based on the type of user control point (computing device) (FF 16). We
understand the Examiner to have found that Adams describes an HTML file
that corresponds to “a user interface component” and a pervasive computing
device that corresponds to the “user control point” (FF 16). The Examiner
also found that Adams describes that different interface components can be
presented depending on the specific type of the requesting computing device
(FF 17). The Examiner found that Adams’s invention advantageously
accommodates computing devices that may have smaller displays and
various performance limitations (FF 18). The Examiner concluded that it
would have been obvious to one with ordinary skill in the art at the time the
invention was made to request a user interface component based on the type
of user control point device as suggested by Adams in combination with the
teachings of Humpleman. The Examiner reasoned that one skilled in the art
would have recognized that it would have been beneficial to make
Humpleman’s invention more compatible with different devices comprising
a plurality of display capabilities as suggested by Adams (FF 19).
Applicants do not contest the findings of the Examiner with respect to
Humpleman. Applicants argue that Adams does not teach or suggest
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“requesting a user interface component of a second software component to
be provided wherein said requesting includes sending a type of user control
point” because Adams discloses HTML content and does not disclose a user
interface component (App. Br. 7-8). We understand Applicants to argue that
HTML content or files can not be considered a user interface component of a
second software component.
Adams describes HTML content or files are displayed via a Web browser
on a pervasive computing device (i.e. PDA) display upon request by a user
(FF 20). Although Applicants wish for “a user interface component of a
second software component” to have a narrow meaning, the broadest
reasonable interpretation standard applies during patent prosecution. Since
Adams’ HTML content or files are presented to the user upon request by the
browser and display, under the broadest reasonable interpretation standard,
the HTML content or files constitute a component of the user interface or
display. Moreover, Applicants have not sufficiently explained why HTML
content or files can not be considered a user interface component.
Applicants also argue that a general allegation that it would have been
beneficial to combine two references to provide a better system is not an
adequate motivation for combining references as mandated by the Federal
Circuit (App. Br. 8). Applicants argue that the correct standard for
combining references is the “teaching-suggestion-motivation test” (Reply
Br. 3-4). Applicant also requests the Examiner to provide a more adequate
motivation for combining the references found within the references
themselves (App. Br. 8). Applicants’ arguments are not persuasive because
the Supreme Court recently rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
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flexible approach” used by the Court. Moreover, in an obviousness analysis
it is not necessary to find precise teachings in the prior art directed to the
specific subject matter claimed because inferences and creative steps that a
person of ordinary skill in the art would employ can be taken into account.
Applicants also argue that Humpleman teaches away from the system of
Adams (App. Br. 8). Applicants argue that Humpleman describes a browser
enabled DTV (digital TV) 102 that has a fixed or static hardware display that
always displays the browser the same, while Adams does not require the
user control point hardware to be fixed (App. Br. 8). Applicants assert that it
seems that Adams is being used in hindsight to correct the fixed or static
hardware display that Humpleman explicitly teaches away from doing (App.
Br. 8).
We do not agree with Applicants’ contention that Humpleman teaches
away from utilizing a hardware display that is not fixed or static. Applicants
have not directed us to a disclosure in Humpleman that suggests that using a
hardware display that can be changed would be problematic, less desirable
or unfeasible. Therefore, Humpleman can not be said to teach away from
utilizing hardware that is not fixed or static because Humpleman does not
suggest that the line of development flowing from Humpleman’s disclosure
is unlikely to be productive of the result sought by Applicants. Furthermore,
Applicants’ arguments that the Examiner’s determination of obviousness
was based on hindsight are not persuasive. Applicants have not directed us
to sufficient evidence that the Examiner’s determination of obviousness was
based on knowledge gleaned only from Applicants’ disclosure. Applicants
also have not directed us to sufficient evidence that the Examiner’s
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determination of obviousness was based on knowledge which was beyond
the level of ordinary skill in the art at the time the invention was made.
Applicants also argue that a person with ordinary skill in the art would
not have produced the invention based on Humpleman and Adams because
the invention is directed to distributed control of devices while the
references are not (Reply Br. 4-5). Applicants’ arguments are not persuasive
because the motivation or purpose of the inventor is not a controlling factor
in the determination of obviousness.
For all these reasons, Applicants have failed to show that the Examiner
erred in determining that claim 19 is unpatentable under 35 U.S.C. § 103(a)
over Humpleman and Adams.
Claim 66
Similar to claim 19, claim 66 recites the limitation “under control of a
first software component . . . , requesting a description of a user interface
component of a second software component to be provided wherein the
requesting includes providing an indication of a type of the user control
point device”. Claim 66 stands rejected on the same grounds as claim 19.
The differences in language between claims 19 and 66 are minor and of no
consequence to our decision above. For all the same reasons explained
above in the section addressing claim 19, Applicants have failed to
demonstrate that the Examiner erred in determining that claim 66 is
unpatentable under 35 U.S.C. § 103(a) over Humpleman and Adams.
Claims 25 and 72
Since claims 25 and 72 are dependent upon and include all the limitations
of claims 19 and 66, for the same reasons as explained above, Applicants
have failed to demonstrate that the Examiner erred in determining that
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claims 25 and 72 are unpatentable under 35 U.S.C. § 103(a) over
Humpleman and Adams.
Claim 30
Applicants indicate that claim 30 stands or falls together with claims 19,
25, 66 and 72 (FF 5). However, different from claims 19, 25, 66 and 72,
claim 30 recites “identifying software components; based on a type of user
control point device . . . , retrieving a user interface component for each
identified software component wherein the retrieving includes providing an
indication of a type of user control point device . . .”. Our understanding of
the Applicants claim terms “user control point device” and “software
component” is explained above (FFs 7-8).
The Examiner found that Humpleman describes identifying software
components (frames [706] and [708] in fig. 8) and retrieving a user interface
component (icon) for each identified software component and providing an
integrated user interface at a control point device (FF 21). We understand
the Examiner to have found that the icons described by Humpleman
correspond to a “user interface component for each software component”.
The Examiner found that Humpleman fails to describe that the step of
retrieving includes providing an indication of a type of user control point
device (FF 22).
The Examiner found that Adams describes requesting a user interface
component (i.e. an HTML file) and receiving a user interface component
based on the type of user control point (FF 16). We understand the
Examiner to have found that Adams describes an HTML file that
corresponds to “a user interface component” and a pervasive computing
device that corresponds to the “user control point”. The Examiner also
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found that Adams describes that different user interface components can be
presented depending on the specific type of the requesting device (FF 17).
The Examiner found that Adams’s invention advantageously accommodates
computing devices that may have smaller displays and various performance
limitations (FF 18).
The Examiner concluded that it would have been obvious to one with
ordinary skill in the art at the time the invention was made to request a user
interface component based on the type of user control point device as
suggested by Adams in combination with the teachings of Humpleman. The
Examiner found that one skilled in the art would have recognized that it
would have been beneficial to make Humpleman’s invention more
compatible with different devices comprising a plurality of display
capabilities as suggested by Adams (FF 19). We understand the Examiner to
have concluded that it would have been obvious to one with ordinary skill in
the art at the time the invention was made to modify Humpleman’s method
that includes retrieving user interface components of identified software
components (i.e. icons) by also providing different (size, resolution) user
interface components (i.e. icons) based on the type of user control point
device as taught by Adams in order to make Humpleman’s invention
compatible with different devices comprising a plurality of display
capabilities.
Since Applicants argued the merits of the rejections of claims 19, 25, 30,
66 and 72 together, for all the same reasons explained above addressing the
rejections of claim 19, 25, 66 and 72, Applicants have failed to demonstrate
that the Examiner erred in determining that claim 30 is unpatentable under
35 U.S.C. § 103(a) over Humpleman and Adams.
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Decision
Upon consideration of the record, and for the reasons given, the
Examiner’s rejection of claim 29 as anticipated under 35 U.S.C. § 102(e) by
Adams is reversed, the Examiner’s rejections of claims 19, 25, 30, 66 and 72
as unpatentable under 35 U.S.C. § 103(a) over Humpleman and Adams are
affirmed.

AFFIRMED IN-PART, REVERSED IN-PART
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MAT

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