Ex Parte Ilic

Board of Patent Appeals and Interferences

Jul 24, 2007

09726776 (B.P.A.I. Jul. 24, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOSTA ILIC
____________

Appeal 2007-1740
Application 09/726,776
Technology Center 2600
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Decided: July 24, 2007
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and JEAN R.
HOMERE, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellant’s claimed invention relates to the magnification of a display
of a signal waveform in which a virtual magnification symbol is positioned
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Application 09/726,776

by a user over a desired portion of the signal waveform. The magnified
portion of the signal waveform is displayed at a location proximate to the
position of the selected waveform portion before magnification, thereby
enabling viewing of the magnified waveform portion within the context of
the entire waveform. (Specification 5-6).
Claim 1 is illustrative of the invention and reads as follows:
1. An instrument for collecting data and which displays the data to a
user, comprising:

a memory for storing data corresponding to a signal waveform; and

a display which displays the data as the signal waveform, wherein said
display is also operable to display a virtual magnifying symbol;

wherein the virtual magnifying symbol is operable to be positioned
over a portion of the signal waveform;

wherein the portion of the signal waveform is located at a first
location in the signal waveform;

wherein the portion of the signal waveform is magnified on the
display after positioning the virtual magnifying symbol over the portion of
the signal waveform;

wherein the magnified portion of the signal waveform is displayed
proximate to the first location in the signal waveform.

The Examiner relies on the following prior art references to show
unpatentability:
Alexander US 6,229,536 B1 May 8, 2001
(filed Mar. 5, 1998)
Engholm US 6,642,936 B1 Nov. 4, 2003
(filed Aug. 8, 2000)
Rosen US 6,938,218 B1 Aug. 30, 2005
(filed Apr. 28, 2000)
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Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alexander in view of Engholm. Clam 31 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Alexander in view of
Rosen.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(1) Under 35 U.S.C § 103(a), with respect to appealed claims 1-30,
would one of ordinary skill in the art at the time of the invention
have been motivated and found it obvious to combine Alexander
with Engholm to render the claimed invention unpatentable.
(2) Under 35 U.S.C § 103(a), with respect to appealed claim 31,
would the ordinarily skilled artisan have been motivated and found
it obvious to combine Alexander with Rosen to render the claimed
invention unpatentable.

PRINCIPLES OF LAW
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
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Application 09/726,776

(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)(quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

ANALYSIS
With respect to the 35 U.S.C. § 103(a) rejection of independent claim
1 based on the combination of Alexander and Engholm, Appellant’s
arguments in response assert a failure by the Examiner to establish a prima
facie case of obviousness since proper motivation for the Examiner’s
proposed combination of references has not been established. After
reviewing the disclosures of the prior art Alexander and Engholm references
in light of the arguments of record, we are in general agreement with the
Examiner’s position as stated in the Answer.
Appellant’s arguments (Br. 9-10) focus on the contention that
motivation for the proposed combination of references is lacking because
Alexander and Engholm have different objectives. Appellant contends (id.,
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Application 09/726,776

at 10) that the objective of Alexander “is to display a main waveform and a
magnified waveform in two separate windows on the same display while
Engholm’s objective is to fill the display with one waveform.”
We do not find Appellant’s argument to be persuasive since it is
apparent to us from the Examiner’s stated position (Answer 3, 4, 11, and 12)
that the Examiner is not suggesting the bodily incorporation of the single
display screen feature of Engholm into the device of Alexander. Rather, it is
Engholm’s teaching of the use of a virtual magnifying symbol (zoom
rectangle 12) movable by a user over a portion of a waveform to be
magnified that is relied on as a rationale for the proposed combination. “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference.... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” See In re Keller, 642 F.2d
414, 425, 208 USPQ 871, 881 (CCPA 1981) and In re Nievelt, 482 F.2d 965,
968, 179 USPQ 224, 226 (CCPA 1973).
We also make the observation that, although the Examiner has relied
upon Engholm to supply a teaching of the use of a movable virtual
magnifying symbol, we find that Alexander in fact already uses such a
symbol, which takes the form of movable rectangular window 340, as
illustrated in Alexander’s Figure 9. This rectangular window is movable by
a user (Alexander, Figures 3B and 3C) to be positioned over a portion of an
original waveform to be magnified. Further, although Alexander displays
the magnified portion of the signal waveform in a separate display window
336, the claimed requirement that the magnified waveform portion be
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displayed “proximate to the first location in the signal waveform” does not
distinguish over such an arrangement.
In view of the above discussion and analysis of the disclosure of the
Alexander reference, we find that all of the claimed elements are in fact
present in the disclosure of Alexander. Further, we find that Engholm
supplements Alexander’s teachings to establish the Examiner’s prima facie
case for the claims being obvious over the combination of those references.
Therefore, it is our view that the Examiner did not err in concluding that the
combination of Alexander and Engholm renders the cited claims
unpatentable.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellant, the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 1, as well as claims 2, 4-10, 12-19, and 21 not
separately argued by Appellant, is sustained.
We also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
separately argued dependent claims 11 and 20. We do agree with
Appellant’s interpretation of the disclosure of Engholm which concludes that
it is not the magnifying glass icons 18 or 20 which are positioned over a
signal waveform portion to be magnified as required by appealed claim 11.
We make reference to our earlier discussion, however, which concluded that
the virtual magnifying symbol in Engholm is in fact the zooming rectangle
12 (as with the moving rectangle 340 in Alexander). In our view, the
magnifying glass icon 18 in Engholm, positioned inside the zooming
rectangle 12, identifies and characterizes the virtual magnifying zooming
rectangle symbol as a “magnifying glass” symbol as claimed.
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With respect to claim 20, we agree with the Examiner (Answer 13)
that as the boundaries of the moving rectangle 340 in Alexander are
adjusted, i.e., moved, to include a larger waveform portion, the additional
waveform portions are magnified. To whatever extent Appellant may be
correct in the assertion (Br. 13) that enlarging the area of magnification in
Alexander requires redefining the magnifying window, i.e., the virtual
magnifying symbol, there is no claim language which precludes redefining
window boundaries to implement moving of the magnifying window.
We also sustain the Examiner’s obviousness rejection of independent
claim 31 based on the combination of Alexander and Rosen. We find no
error in the Examiner’s finding (Answer 15) that the ordinarily skilled
artisan would have recognized that Rosen’s teaching of a magnifying
symbol placed over an area to be magnified and which has the magnified
area displayed inside the symbol would serve as an obvious enhancement to
the device of Alexander. We find Appellant’s arguments (Br. 16) in
response to be similar to those made with respect to the Examiner’s rejection
of claim 1 based on the combination of Alexander and Engholm, and we
find them equally unpersuasive. We do not interpret the Examiner’s
position as suggesting the bodily incorporation of Rosen’s web page
magnifier into the device of Alexander. Rather, it is Rosen’s teaching of a
magnifying symbol in which an area of magnification is displayed inside the
symbol that is relied upon as a basis for the proposed combination with
Alexander.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a)
rejection, based on the combination of Alexander and Engholm, of
dependent claim 3 and independent claim 22 (and its dependent claims 23-
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30, we note that, while we found Appellant’s arguments to be unpersuasive
with the respect to the Examiner’s obviousness rejection of claims 1, 2, 4-21,
and 31, we reach the opposite conclusion with respect to the rejection of
claims 3 and 22-30. Rejected claims 3 and 22-30 require either that the
magnified portion of the signal waveform be displayed “within the signal
waveform” (claim 3) or that the signal waveform is “magnified within the
original waveform” (independent claim 22).
We agree with Appellant that, even if Alexander and Engholm were
combined as proposed by the Examiner, the ensuing combination would not
satisfy the claimed requirements. As asserted by Appellant (Br. 11, 12, 14),
Alexander discloses the display of a magnified portion of a signal waveform
in a separate display window while Engholm discloses the display (Figure 2)
of a magnified waveform portion in which the original displayed waveform
is pushed off the screen. We recognize that, in support of the stated position
of obviousness, the Examiner, in the “Response to Argument” portion of
the Answer at pages 12 and 14, makes reference to the “zoom-out”
embodiment disclosed by Engholm at column 2, lines 21-29. While the
Examiner is correct that in Engholm’s “zoom-out” embodiment, the entire
original waveform is shrunk and displayed within the zoom rectangle, there
would then be no portion of the original waveform which would be
magnified so as to satisfy the requirements of the rejected claims.
Accordingly, since we are of the opinion that the proposed
combination of Alexander and Engholm does not support the obviousness
rejection, we do not sustain the rejection of dependent claim 3, nor of
independent claim 22 and its dependent claims 23-30.

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CONCLUSION
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed claims 1-31, we have sustained the rejection of claims 1, 2, 4-21,
and 31, but have not sustained the rejection of claims 3 and 22-30.
Accordingly, the Examiner’s decision rejecting appealed claims 1-31 is
affirmed-in-part.
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)(iv)(effective
September 13, 2004).

AFFIRMED-IN-PART

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MEYERTONS, HOOD, KIVLIN,
KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN TX 78767-0398
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