11032822 (P.T.A.B. Dec. 14, 2012)

Ex Parte Haynes et al

Patent Trial and Appeal BoardDec 14, 2012

11032822 (P.T.A.B. Dec. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/032,822 01/10/2005 Thomas R. Haynes RSW920040134US1 (166) 5749 46320 7590 12/14/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER TAN, ALVIN H ART UNIT PAPER NUMBER 2172 MAIL DATE DELIVERY MODE 12/14/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte THOMAS R. HAYNES, DOUGLAS A. LARSON, SRINIVASAN MURALIDHARAN, KI H. PARK, SHIRISH AMIN, and ROBIN L. YEHLE ____________________ Appeal 2010-005703 Application 11/032,822 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, MARC S. HOFF, and THU A. DANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005703 Application 11/032,822 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3, 4, 6, 7, 12, 14, 15, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. The claims are directed to macro recording facilities in an application execution environment, and more particularly to recording events in a macro recording session. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A selective macro event recording method comprising the step of selectively enabling and disabling an appending of events associated with a first application context into a macro subject to a macro recording session for events which are associated with a second application context, wherein said step of selectively enabling and disabling comprises the steps of: receiving a request to append events from said first application context to an existing macro recording session, identifying said existing macro recording session, and recording subsequently occurring events in said first application context into said identified existing macro recording session, and said identifying step comprises the steps of: retrieving a list of active macro recording sessions; and, Appeal 2010-005703 Application 11/032,822 3 selecting one of said active macro recording sessions in said list as said existing macro recording session. (disputed limitations emphasized). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Herdeg, III US Pat. App. Pub. No.: 2006/0005132 Al Jan. 05, 2006 (Filed Jun. 30, 2004) Robert Cowart,et al. “Special Edition Using Microsoft® Windows® XP Home Edition” (Publisher: Que 2001), http://proquest.safaribooksonle.com/0789726270 (hereinafter “Cowart”). REJECTION The Examiner rejected claims 1, 3, 4, 6, 7, 12, 14, 15, 17, and 18 under 35 U.S.C §102(e) as being anticipated by Herdeg or, in the alternative, under 35 U.S.C §103(a) as being unpatentable over the combination of Herdeg and Cowart. Contentions Regarding the rejection of claim 1, Appellants contend, inter alia: A list of applications, as taught by Cowart, is not comparable to a list of active macro recording sessions, as claimed. A list of applications in a task manager is a list of computer programs running on a computer - examples of these programs include a web browser, an e-mail client, a word processor, a game, a time entry program, etc. A macro recording session is not an application comparable to those found listed in a task manager. In this regard, Appellants note that the Examiner's analysis has been Appeal 2010-005703 Application 11/032,822 4 flawed by the lack of a claim construction for the term at issue. One interpretation, by those skilled in the art, of the term session is "a semi-permanent interactive information exchange, also known as a dialogue, a conversation or a meeting, between two or more communicating devices, or between a computer and user." Thus, even if one skilled in the art would have considered the combination of Herdeg and Cowart to be obvious, the claimed invention would not result. Specifically, the resultant combination of Herdeg and Cowart would simply add a task manager, as taught by Cowart, to the teachings of Herdeg. Via the task manager, a user would then be able to select an application. Referring to Cowart, upon selecting the application, a user would then be able to "End Task" (i.e., close the application) or "Switch to" (i.e., open the application). However, this resultant combination of Herdeg and Cowart would not teach (i) retrieving a list of active macro recording sessions; (ii) selecting one of the active recording sessions in the list (as part of an identifying step); (iii) recording subsequently occurring events into the identified macro recording session. (Br. 10-11.) In response, the Examiner notes that the claims have been rejected under 35 U.S.C. §102(e) as anticipated by Herdeg, or, in the alternative, under 35 U.S.C. §103(a) as obvious over the combination of Herdeg and Cowart. (Ans. 9). The Examiner further explains the basis for the § 102 and §103 rejections on appeal: Appellant argues that the Examiner has not established the claimed limitation of retrieving a list of active macro recording sessions as inherently disclosed by Herdeg. Contrary to Appellant's arguments, Herdeg discloses recording graphical user interface activity for various applications [Herdeg, paragraph 23] in a Microsoft Windows environment [Herdeg. paragraph 51]. Since each application 115, 116, and 117 Appeal 2010-005703 Application 11/032,822 5 [Herdeg, figure 1] has their own internal macro recorder [Herdeg, paragraph 46; see also figure 2, 245] that records user inputs as the user interacts with the application [Herdeg, paragraph 57], each open application has its own active macro recording session [Herdeg, paragraph 46; figure 1]. As the user interacts with the application, the user inputs are processed and recorded by the internal macro recorder as steps in the application's native macro recording environment [Herdeg, paragraph 57]. Thus, an active macro recording session is selected by activating and interacting with one of the opened applications. Herdeg inherently includes a list where a user can select to open an application (and in effect, select its active macro recording session for appending events) because Herdeg uses a Microsoft Windows environment [Herdeg, paragraph 51], which may provide a list of opened applications to the user. The list is representative of the active macro recording sessions since each opened application has their own native internal macro recorder. As evidenced by Cowart, Microsoft Windows provides a Task Manager having a list of applications where a user can switch to a selected application [Cowart, "Task Manager", figure 24.16]. (Ans. 10-11, emphasis added). ANALYSIS Issue: Under §102, has the Examiner established that Herdeg inherently discloses “retrieving a list of active macro recording sessions,” within the meaning of independent claims 1 and 12? Regarding the Examiner’s finding of inherency under §102, we focus our analysis on the Examiner’s own statement which undermines the Examiner’s finding of inherent anticipation: “Herdeg inherently includes a list where a user can select to open an application (and in effect, select its active macro recording session for Appeal 2010-005703 Application 11/032,822 6 appending events) because Herdeg uses a Microsoft Windows environment [Herdeg, paragraph 51], which may provide a list of opened applications to the user.” (Ans. 10). Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed element and the claimed arrangement or combination of those elements is disclosed, inherently or expressly, by a single prior art reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). Here, the Examiner’s admission that “Herdeg uses a Microsoft Windows environment [Herdeg, paragraph 51], which may provide a list of opened applications to the user,” “(and in effect, select its active macro recording session for appending events),” does not meet the Examiner’s burden to provide reasonable proof that a claim limitation is an inherent characteristic of the prior art. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977); see also Crown Operations Int’l, LTD v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). In particular, our reviewing court guides that “[i]nherency [] may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)) (emphasis added). Here, Cowart’s Windows Task Manager (Fig. 24.16) shows a list of current Windows tasks (processes) that reflects the corresponding Appeal 2010-005703 Application 11/032,822 7 applications executing therein, which may include applications that have their own internal (macro) recording capabilities, as taught by Herdeg, para. [0046]). However, we agree with Appellants that Examiner has not met the requisite burden of production by showing that the disputed “characteristic is necessarily present, or inherent, in the single anticipating reference.” See Schering Corp, 339 F.3d at 1377 (Fed. Cir. 2003) (emphasis added). Moreover, extrinsic evidence (Cowart as relied on by the Examiner) may be used to explain but not expand the meaning of terms and phrases used in the reference relied upon as anticipatory of the claimed subject matter (Herdeg as relied on by the Examiner). See In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991). See also MPEP § 2131.01 (Eighth Edition, August 2001, Revised August 2012). Accordingly, we reverse the Examiner’s anticipation rejection of independent claim 1 and independent claim 12 (which recites the disputed limitation in identical form), and associated dependent claims 3, 4, 6, 7, 14, 15, 17, and 18. Obviousness Rejection Issue: Under § 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested “retrieving a list of active macro recording sessions; and, selecting one of said active macro recording sessions in said list as said existing macro recording session,” within the meaning of independent claims 1 and 12? We reach a different conclusion regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for the claims on appeal. In contrast to our discussion above regarding anticipation, we note that “[t]he test for obviousness is what the combined teachings of the Appeal 2010-005703 Application 11/032,822 8 references would have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (emphasis added). In the context of obviousness, we agree with the Examiner that Cowart’s list of tasks and associated applications (Fig. 24.16), when combined with the teachings of Herdeg, is at least suggestive of a list of active macro recording sessions that may be selected by a user because Herdeg teaches that applications may have their own native internal macro recorder (Herdeg, paragraph [0046]). Given this evidence, on this record, we are not persuaded that the Appellants’ claimed selection of an active macro recording session from a list of active macro recording sessions would have been “uniquely challenging or difficult for one of ordinary skill in the art.” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (U.S. 2007)). For these reasons, on this record, we are not persuaded of Examiner error regarding the rejection under §103. Therefore, we sustain the Examiner’s obviousness rejection of independent claims 1 and 12. Claims 3 and 4 Regarding dependent claims 3 and 4 that also stand rejected under §103, we conclude as an initial matter of claim construction that the received “user interface event” is non-functional descriptive material, because, as claimed, the received “user interface event” is not positively recited as affecting or changing any machine or computer function.1 However, 1 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) Appeal 2010-005703 Application 11/032,822 9 assuming arguendo that the recited “user interface event” may be accorded weight, we agree with and adopt the Examiner’s rationale and supporting evidence rejecting claims 3 and 4 as being obvious over the cited combination of references, as provided on pages 7-8 and 12-14 of the Answer. The remaining dependent claims on appeal (for which no separate arguments were made), fall with associated independent claims 1 and 12. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We reverse the Examiner's rejection of claims 1, 3, 4, 6, 7, 12, 14, 15, 17, and 18 under 35 U.S.C. § 102. We affirm the Examiner's rejection of claims 1, 3, 4, 6, 7, 12, 14, 15, 17, and 18 under 35 U.S.C. § 103. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). ORDER AFFIRMED Vsh (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).