Ex Parte Haugh et al

Patent Trial and Appeal Board

Apr 29, 2016

12612439 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/612,439 11104/2009 Julianne Frances Haugh
45442 7590 05/03/2016
IBM CORPORATION (RVW)
C/OROBERTV. WILDER, ATTORNEY AT LAW
10212 Cassandra Drive
Austin, TX 78717
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
A US920090 l l 9US 1 4407
EXAMINER
XIAO,DI
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
bobwilder@netzero.net
rwilder6@austin.rr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIANNE FRANCES HAUGH and
CHRISTOPHERJ. TAN
Appeal2014-008273
Application 12/612,439
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008273
Application 12/612,439
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3, 5-11, and 13-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The invention relates to an improved slider bar system for input
selection in a graphical user interface (Spec. 1 :9-12, 2:25-3:22). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for processing a selection of a displayed
indicium, said displayed indicium being one of a plurality of
displayed indicia being presented on a display screen, said
method comprising:
determining an order for said plurality of displayed
indicia;
differentiating each of said displayed indicia from others
of said plurality of displayed indicia in sequence, said
differentiating being effective for a predetermined time period
for each of said plurality of displayed indicia; and
enabling a selection of one of said plurality of displayed
indicia in response to only a single movement of a displayed
pointer during said predetermined time period when a selected
one of said plurality of displayed indicia is being differentiated
from others of said plurality of displayed indicia, said selecting
being accomplished by moving said displayed pointer, while
said displayed pointer is displayed anywhere on said display
screen regardless of pointer position on said display screen
when a selected one of said plurality of displayed indicia is
being differentiated from others of said plurality of displayed
indicia.
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Application 12/612,439
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kimura et al.
Luk et al.
US 2008/0253737 Al
US 2010/0211908 Al
Oct. 16, 2008
Aug. 19, 2010
GLAZEBROOK, ADVANCED JQUERY TABBED Box TECHNIQUES,
http://www.cssnewbie.com/advanced-jquery-tabbed-box-techniques/ (last
visited month day, year) (hereinafter "Glazebrook")
Johnson, "Microsoft Windows Vista On Demand, Second Edition," Mar.
2008 (hereinafter "Johnson")
TAB GROUPS: FIREFOX TAB GROUPING EXTENSION, http://web.archive.
org/web/20070217040933/http:/ lparanoid-androids.com/tab groups/ (last
visited month day, year) (hereinafter "Tab Groups")
REJECTIONS
The Examiner made the following rejections:
Claims 1-3, 5-11, and 13-20 stand rejected under 35 U.S.C § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1-3, 5, 9-11, 13, and 17-19 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Glazebrook, Luk, and Kimura.
Claims 8 and 16 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Glazebrook, Luk, Kimura, and Tab Groups.
Claim 20 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Glazebrook, Luk, Kimura, Tab Groups, and Johnson.
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Appeal2014-008273
Application 12/612,439
ANALYSIS
The Written Description Rejection
The Examiner finds the limitation "said selecting being accomplished
by moving said displayed pointer, while said displayed pointer is displayed
anywhere on said display screen regardless of pointer position on said
display screen," recited in claim 1, and similar limitations in independent
claims 9 and 1 7, are not supported by the originally filed Specification (Final
Act. 2-3). Appellants contend
[T]here is nothing in the [S]pecification that requires that the
pointer be in a certain field or position on the display screen in
order to enable a user to make a selection of a highlighted
indicium. Since there is no requirement for the pointer to be in
any predetermined field when a pointer movement is made, it is
clear that the pointer may be anywhere on the display screen
when the pointer movement is initiated to implement a selection
process as discloses in the [S]pecification.
(App. Br. 11-12). We disagree with Appellants.
The test for meeting the written description requirement "is whether
the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010). We are not persuaded by Appellants'
argument that the absence in the Specification of a pointer location for
making a selection of a highlighted indicium meets this test (see App. Br.
11-12). Rather, the Specification's alleged silence on a pointer location
demonstrates a lack of possession of a feature defining where the pointer can
be in order to select a highlighted indicium, not possession of a feature
permitting the pointer to be anywhere. Moreover, Appellants' statement that
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Appeal2014-008273
Application 12/612,439
the Specification does not require a particular pointer location (see App. Br.
11-12) is undercut by Appellants' Figures 3 to 5, which appear to show a
pointer being located on the highlighted tab being selected. This tends to
support the opposite of what Appellants claim, that the pointer must be in a
specific location to select a highlighted indicium.
We are also not persuaded by Appellants' Reply Brief argument that
the Examiner is unduly requiring Appellants to describe in the Specification
all the places the pointer is not required to be in making a selection (see
Reply Br. 4 ). Rather, Appellants must merely show possession of what is
claimed, not what is not claimed. We have reviewed Appellants'
Specification and have not found written description support for the claim
limitation "said selecting being accomplished by moving said displayed
pointer, while said displayed pointer is displayed anywhere on said display
screen regardless of pointer position on said display screen."
We are, therefore, not persuaded the Examiner erred in rejecting
claims 1-3, 5-11, and 13-20 for failing to satisfy the written description
requirement.
The Obviousness Rejections
The Examiner finds the combination of Glazebrook, Luk, and Kimura
discloses all the limitations of independent claim 1, including that Kimura
discloses "said selecting being accomplished by moving said displayed
pointer, while said displayed pointer is displayed anywhere on said display
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Appeal2014-008273
Application 12/612,439
screen regardless of pointer position on said display screen" (Final Act. 4--5).
Appellants contend
Kimura uses a cursor movement to slow down a moving object
so that the object can be more easily selected by a user ....
There is no selection being accomplished when an action such
as a cursor movement is made during a specific time during
which one of a plurality of objects is visually distinguished
from other of the displayed objects as clearly recited in claim 1.
(App. Br. 15). We agree with Appellants.
Glazebrook discloses a system for automatically rotating through
tabbed pages so that a user does not need to click each tab to reveal the
content therein (Glazebrook 1-2). However, to stop the rotation,
Glazebrook requires the mouse to be moved over one of the tabs
(Glazebrook 4). For showing it would have been obvious to stop
Glazebrook's tab rotation merely by moving the mouse anywhere on the
screen, the Examiner cites to Kimura (Final Act. 5). Kimura discloses an
interactive video player where a user can select a displayed object during
video playback to achieve a defined action, such as accessing a Web page
related to the object (see Kimura i-fi-1 40, 44--46). In order to aid a user in
selecting an object that may be displayed in the video for only a short period
of time, the playback will slow or pause upon movement of a cursor for
selecting the object (Kimura i-f l 0). More specifically, Kimura discloses:
[P]redicting the occurrence of the selection operation of the
area object when a move operation of the cursor 51 by the
pointing device 11 ... has occurred. In this regard, regardless
of the position of the cursor 51, when a move operation of the
cursor 51 occurs, it is predicted that the selection operation of
the area object will occur.
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Application 12/612,439
(Kimura il 52). If such prediction occurs, "the playback control section 7
changes the playback speed of the title to a predetermined speed that is
slower than usual" (Kimura i-f 53).
We find Kimura fails to suggest selecting a highlighted tab in
Glazebrook's automatically rotating tabs simply by moving the cursor when
it is displayed anywhere on the screen. While Kimura does disclose
performing an action based on moving a cursor positioned anywhere, this
action is to control the video playback speed in order to make an object's
selection easier (see Kimura i-fi-152-53). Kimura does not disclose
performing an actual selection based solely on the movement of the cursor
when the cursor is positioned anywhere. One of ordinary skill in the art
would have understood that actual selection of the object in Kimura would
require completing a cursor movement to the desired object. We thus find
the Examiner has failed to show the references disclose "said selecting being
accomplished by moving said displayed pointer, while said displayed pointer
is displayed anywhere on said display screen regardless of pointer position
on said display screen," as recited in claim 1.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting as obvious independent claim 1, independent claims 9 and
17 which recite commensurate limitations, and dependent claims 2, 3, 5-8,
10, 11, 13-16, and 18-20 for similar reasons.
CONCLUSIONS
Under 35 U.S.C. § 112, first paragraph, the Examiner did not err in
rejecting claims 1-3, 5-11, and 13-20.
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Appeal2014-008273
Application 12/612,439
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 1-3,
5-11, and 13-20.
DECISION
For the above reasons, the Examiner's decision rejecting claims 1-3,
5-11, and 13-20 under 35 U.S.C. § 112, first paragraph, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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