Ex Parte KarstensDownload PDFPatent Trial and Appeal BoardJun 30, 201612251178 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/251,178 10/14/2008 57736 7590 07/05/2016 PATENTS ON DEMAND, PA IBM-RSW 4581 WESTON ROAD SUITE 345 WESTON, FL 33331 FIRST NAMED INVENTOR CHRISTOPHER K. KARSTENS 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. RSW920080248US 1 5113 EXAMINER LO,WEILUN ART UNIT PAPER NUMBER 2179 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): brian.buchheit@patentsondemand.com docketing 1@patentsondemand.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER K. KARSTENS Appeal2014-007039 Application 12/251, 178 Technology Center 2100 Before JAMES R. HUGHES, MONICA S. ULLAGADDI, and JOYCE CRAIG, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-11 and 15-23. Claims 12-14 have been canceled. (See Br. 17; Final Act. 1-2.)1 We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 We refer to Appellant's Specification ("Spec.") filed Oct. 14, 2008 and Appeal Brief ("Br,") filed Feb. 13, 2013. We also refer to the Examiner's Answer ("Ans.") mailed Oct. 3, 2013, and Final Office Action (Final Rejection) ("Final Act.") mailed Mar. 16, 2012. Appeal2014-007039 Application 12/251, 178 Appellant's Invention The invention at issue on appeal concerns systems, computer program products, and methods for grouping desktop icons in a graphical user interface (GUI) by: selecting a plurality of desktop icons, associating the desktop icons with a one of multiple desktop containers, and wherein an attribute of the desktop containers may be configured globally for all desktop containers and also individually for each desktop container. (Spec. i-fi-f l, 15, 16, 34, 36; Abstract.) Illustrative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method for grouping desktop icons comprising: selecting a plurality of desktop icons on a graphical user interface (GUI) desktop; marking the plurality of desktop icons as being associated with a desktop container, wherein the marking does not affect file locations in a file management hierarchy of files associated with the desktop icons; visually depicting on the graphical user interface that the selected desktop icons are associated with the desktop container, wherein the desktop container is a GUI object for grouping a plurality of desktop icons and for manipulating a grouped set of desktop icons as a group; receiving a user interaction with the desktop container; and performing a container action responsive to the user interaction, wherein the container action affects each of the selected desktop icons or affects targets to which each of the selected desktop icons point, 2 Appeal2014-007039 Application 12/251, 178 wherein at least one attribute associated with one or more desktop containers is enabled to be configured individually for each desktop container, and wherein said at least one attribute is further enabled to be configured globally for the one or more desktop containers. Rejections on Appeal 1. The Examiner rejects claims 1-11, 15-20, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Park et al. (US 2006/0112354 Al; published May 25, 2006) ("Park") and Moran et al. (US 5,784,061; issued July 21, 1998) ("Moran"). 2. The Examiner rejects claim 21under35 U.S.C. § 103(a) as being unpatentable over Park, Moran, and Bolnick et al. (US 5,838,317; issued Nov. 17, 1998) ("Bolnick"). ISSUE Based upon our review of the administrative record, Appellant's contentions, and the Examiner's findings and conclusions, the dispositive issue before us follows: Does the Examiner err in concluding that the combination of Park and Moran would have collectively taught or suggested "at least one attribute associated with one or more desktop containers is enabled to be configured individually for each desktop container, and wherein said at least one attribute is further enabled to be configured globally for the one or more desktop containers" within the meaning of Appellant's claim 1 and the commensurate limitations of claims 9 and 1 7? 3 Appeal2014-007039 Application 12/251, 178 ANALYSIS Appellant contends that Park and Moran do not teach the disputed features of independent claim 1 (Br. 10-12). Specifically, Appellant contends that "Park does not disclose an icon room feature that can be configured globally for multiple icon rooms as well as individually for a single icon room" (Br. 10). As explained by Appellant, the interface depicted in Figure 5 of Park (cited by the Examiner as describing configuring an attribute globally for all rooms (icon groupings/containers)) "cannot be used to select a skin image style individually for each icon room on a desktop" (Br. 10), and the attributes in Figure 6 of Park (cited by the Examiner as describing an interface for configuring an attribute individually for one of multiple rooms (icon groupings/containers)) "can be set individually for each icon room but cannot be configured globally for all the icon rooms together on the desktop" (Br. 11 ). Appellant persuades us of error in the obviousness rejection of claim 1. Appellant's claim 1 requires the capability of configuring an attribute of a desktop icon grouping (container/room) both individually, for one of multiple groupings, and globally, for all groupings. While we agree with the Examiner that Park teaches configuring attributes for groupings of icons (rooms), including configuring attributes of individual rooms (Park Fig. 6; i-fi-156-59; Final Act. 3-4; Ans. 12-13) and configuring attributes of all groupings/rooms (appearance (skin style)) (see Park Fig. 5; i-fi-153, 54; Final Act. 3-4; Ans. 12-13), Park does not show configuring the same attribute (which affects individual rooms and all rooms) for one grouping/room and also all groupings/rooms). The attributes configured in Park's Figures 5 and 6 differ from each other and they are configured in different interfaces. 4 Appeal2014-007039 Application 12/251, 178 Park does not describe at least one attribute of a desktop container that is capable of being configured individually for each desktop container and that is also capable of being configured globally for all of the desktop containers. Consequently, we are constrained by the record before us to find that the Examiner erred in finding Park and Moran teach the disputed limitations of Appellant's claim 1. Independent claims 9 and 17 include limitations of commensurate scope. Claims 2-8, 10, 11, 15, 16, 18-20, 22, and 23 depend on claims, 1, 9, and 17, respectively. Accordingly, we reverse the Examiner's obviousness rejections of claims 1-11, 15-20, 22, and 23 over Park and Moran. With respect to the obviousness rejection of dependent claim 21, rejected as obvious over Park, Moran, and Bolnick, we reverse the Examiner's obviousness rejection for the same reasons set forth with respect to claim 1 (supra). The Examiner improperly cites Park as teaching an attribute that can be configured individually as well as globally. (See Final Act. 9-10; Ans. 10-11.) Accordingly, we reverse the Examiner's obviousness rejection of claim 21. CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1-11 and 15-23 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner's rejections of claims 1-11 and 15-23. REVERSED 5 Copy with citationCopy as parenthetical citation