Ex Parte Hochmuth et al

Patent Trial and Appeal Board

Oct 26, 2012

11020982 (P.T.A.B. Oct. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROLAND M. HOCHMUTH and JOHN MARKS
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Appeal 2010-005730
Application 11/020,982
Technology Center 2100
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Before ALLEN R. MacDONALD, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005730
Application 11/020,982

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a computer display control system and
method. Abst. 21. Claims 1 and 23, reproduced below, are illustrative of the
claimed subject matter:
1. A computer display control system, comprising:
an input module adapted to receive a user input corresponding
to a composited desktop display, the composited desktop
display displaying at least two active desktops corresponding to
at least two different computers, the input module adapted to
automatically determine to which of the desktops the user input
corresponds.

23. A computer display control system, comprising:
an input module adapted to receive a user input corresponding
to a composited desktop display, the composited desktop
display overlaying at least two different computer desktops
such that the at least two different computer desktops are active
in the composited desktop display, the input module adapted to
identify to which of the at least two different computer desktops
the user input corresponds.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lumelsky

Anderson
US 5,351,067

US 7,010,755 B2

Sep. 27, 1994

Mar. 7, 2006
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Application 11/020,982

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REJECTIONS
1

The Examiner made the following rejection:
Claims 1-30 stand rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over Anderson and Lumelsky. Ans. 3.

OPINION
Appellants’ Contentions
2

1. Appellants contend that the Examiner erred in rejecting
independent claims 1, 10 and 18 as unpatentable under 35 U.S.C. § 103(a) as
being obvious over Anderson and Lumelsky because the references
singularly and collectively fail to teach or suggest the composited desktop
display displaying at least two active desktops corresponding to at least two
different computers. App. Br. 3-6.
2. Appellants contend that the Examiner erred in rejecting
independent claim 23 as unpatentable under 35 U.S.C. § 103(a) as being
obvious over Anderson and Lumelsky because the combination of references
fails to teach or suggest (i) two different computer desktops or (ii) that the
input module is adapted to identify to which of the at least two different
computer desktops user input corresponds. App. Br. 7-10.

1
Appellants collectively argue claims 1, 10 and 18 (App. Br. 5-6; Reply Br.
2-3) and separately argue independent claim 23 (App. Br. 7-10; Reply Br. 3-
5) and dependent claims 2, 3, 5 and 16 (App. Br. 10-12); dependent claims
4, 6-9, 11-15, 17, 19-22 and 24-30 are not argued separately (App. Br. 10).
2
As our resolution of this contention 1 is dispositive of the outcome of the
appeal of the rejection of claims 1, 10 and 18, we do not address Appellants’
other contentions of error with regard to those claims or the claims
dependent therefrom.
Appeal 2010-005730
Application 11/020,982

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Issues on Appeal
3

Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-8)
and the Reply Brief (Reply Br. 1-4), the issues presented on appeal are:
1. Did the Examiner err in concluding that the combination of
Anderson and Lumelsky teaches or suggests the composited desktop display
displaying at least two active desktops corresponding to at least two different
computers as required by claims 1, 10 and 18?
2. Did the Examiner err in concluding that the combination of
Anderson and Lumelsky teaches or suggests (i) two different computer
desktops or (ii) that the input module is adapted to identify to which of the at
least two different computer desktops user input corresponds as required by
claim 23?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
concur with Appellants’ conclusions that the Examiner erred in finding that
Anderson and Lumelsky disclose or suggest a composited desktop display
displaying at least two active desktops corresponding to at least two different
computers as required by claims 1, 10 and 18. However, we disagree with
Appellants’ conclusions with regard to contention 2 above in connection
with claim 23 and adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken in connection
with claim 23 and, in that regard, concur with the conclusions reached by the
Examiner.

3
See fn. 2.
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Claims 1, 10 and 18
The Examiner has taken the position “that Anderson et al. in view of
Lumelsky et al. is replete with teachings ‘the composited desktop display
displaying at least two active desktops corresponding to at least two different
computers’ and ‘the input module adapted to automatically determine to
which of the desktops the user input corresponds’ ... ’, especially when the
reference as a whole, is taken into consideration.” Ans. 9. The Examiner
further cites to Figures 3 and 6 and col. 2, ll. 20-36 and 46-52 of Anderson
for disclosing at least two different computers. Ans. 3-4 and 9. However,
our review of the Anderson fails to reveal the Examiner’s basis for the
disclosure of the desktops corresponding to at least two different computers.
While Anderson discloses a composited display displaying at least two
virtual desktops (see, e.g. Anderson Abst., Fig. 6, and col. 2, ll. 20-36), the
Examiner does not provide sufficient evidence, nor do we find, that
Anderson’s virtual desktops correspond to different computers. To the
contrary, Anderson describes a problem of the prior art as providing a
confusingly cluttered desktop when multiple application windows are
created so that virtual desktops are provided to expand the size of the
desktop. Anderson, col. 1, ll. 32-36. Thus, Anderson suggests partitioning
one large desktop (i.e., a desktop of one computer) into a number of smaller
virtual desktops but does not otherwise teach or suggest that the desktops
correspond to different computers.
We therefore agree with Appellants that the Examiner has erred by
failing to provide persuasive evidence of how Anderson discloses the
composited desktop display displaying at least two active desktops
corresponding to at least two different computers as required by claims 1, 10
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and 18. Since this issue is dispositive of our reversal of the Examiner's
rejection of those claims and dependent claims 2-9, 11-17 and 19-22, we
need not address Appellants’ other arguments pertaining to other errors
alleged in connection with the rejection of claims 1-22.

Claim 23
In connection with contention 2 above, Appellants argue that, inter
alia, Figs. 5-7 “fails to teach or suggest that these virtual desktops are two
different computer desktops.” App. Br. 8. We disagree. When construing
claim terminology during prosecution before the Office, claims are to be
given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of any
definition by Appellants’ Specification, we construe the phrase “computer
desktop” to include an on-screen area constituting a computer simulation of
the top of a desk. Therefore we conclude that the “different computer
desktops” of claim 23 are not limited to desktops of different computers but
only require that a single computer displays at least two desktops that
contain different information.
In view of our construction of claim 23, we agree with the Examiner
that Anderson discloses different computer desktops. See, e.g., Ans. 9 citing
to Anderson’s Fig. 6 and col. 2, ll. 46-52. Furthermore, in view of our
construction, Appellants’ argument that “the virtual desktops taught by
Anderson correspond to desktops of a single computer, and not to at least
two different computer desktops” (Reply Br. 4) is not commensurate with
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the scope of claim 23 which, unlike claims 1, 10 and 18, does not require
multiple computers. We further agree with the Examiner and find that
Anderson teaches or suggests that the input module is adapted to identify to
which of the at least two different computer desktops user input corresponds.
See Ans. 9-10 citing to Figure 3 of Anderson and quick switch buttons 311-
316.

CONCLUSIONS
Appellants have persuaded us of error in the Examiner’s
determination that the cited references teach or suggest a composited
desktop display displaying at least two active desktops corresponding to at
least two different computers as recited by independent claims 1, 10 and 18.
Accordingly, we will not sustain the Examiner’s rejection of those claims or
of 2-9, 11-17 or 19-22 dependent therefrom.
Appellants have not persuaded us of error in the Examiner’s
determination that the cited references teach or suggest (i) two different
computer desktops or (ii) that the input module is adapted to identify to
which of the at least two different computer desktops user input corresponds
as recited by independent claim 23. Accordingly, we will sustain the
Examiner’s rejection of claims 23 and of claims 24-30 dependent therefrom
and not separately argued.

DECISION
The rejection of claims 1-22 are reversed. The rejection of claims
23-30 are sustained.
Appeal 2010-005730
Application 11/020,982

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No time period for taking any subsequent action in connection 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) (2011).

AFFIRMED-IN-PART

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