Ex Parte KO

Patent Trial and Appeal Board

Jul 29, 2016

12463961 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/463,961 05/11/2009
45833 7590 08/02/2016
SCHWEGMAN LUNDBERG & WOESSNER/APPLE
POBOX2938
SUITE 300
MINNEAPOLIS, MN 55402
Steve KO
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.
772.280US3 1632
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE KO
Appeal2015-000507
Application 12/463,961
Technology Center 2100
Before JOHN P. PINKERTON, JEFFREY A. STEPHENS, and
JOHN D. HAMANN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr'1.r-"\ l\-1,....Al/'\.r'" , .. T"""1 • -, Appeuant' appeals unaer j) u.~.L. s U4~aJ rrom me bxammer s
final rejection of claims 36-50 and 52-64, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies Apple Inc. as the real party in interest. App. Br. 2.
Appeal2015-000507
Application 12/463,961
STATEivIENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention generally relates to
dynamic user interface reporting of computer warnings and errors that is
accomplished by providing a notification object relaying information to a
user about errors and warnings, where each notification object is associated
with a target object, such as a data entry field. Spec. i-f 8.2
Claim 36 is representative of the claims on appeal and reads as
follows (with the disputed limitation emphasized):
36. A method comprising:
determining if a condition associated with an action
received by a computing device requires generation of an
information message;
selecting, by the computing device, an information
message to be generated corresponding to said condition;
identifying, by the computing device, a target object
associated \x1ith said action, to \x1hich the information message
relates; and
displaying a notification object and the target object on a
display device, wherein the displayed notification object
contains said information message, and is displayed in a
persistent manner until dismissed by a user while the user is able
to continue interaction with an application program
corresponding to said target object, at least a part of the displayed
notification object pointing to at least a portion of the displayed
target object; wherein:
2 Our Decision refers to the Final Office Action mailed Nov. 18, 2013
("Final Act."); Appellant's Appeal Brief filed May 16, 2014 ("App. Br.");
the Examiner's Answer mailed July 25, 2014 ("Ans."); Appellant's Reply
Brief filed Sept. 18, 2014 ("Reply Br."); and, the Specification filed May 11,
2009 ("Spec.").
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Application 12/463,961
the displayed target object and the displayed notification
object are movable relative to each other by the user; and
in response to detecting a change in a position of the
displayed target object relative to the displayed notification
object, adjusting the position of the displayed notification object
to maintain the relative position of the displayed target object
to the displayed notification object.
App. Br. 20 (Claims App'x.).
Rejections on Appeal
Claims 36, 38--40, 42--46, 49, 50, 53-55,3 and 58---60 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Evans et al. (US 6,799,286 Bl; issued Sept. 28, 2004) ("Evans") and Carr
(US 5,428,733; issued June 27, 1995).
Claims 37 and 52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Evans, Carr, and Webb (US
2003/0011639 Al; published Jan. 16, 2003).
Claims 41, 47, 48, 56, and 61-64 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Evans and Carr as
applied to claim 3 6, and further in view of Wishoff (US 2002/0051017 A 1;
published May 2, 2002).
Issues on Appeal
Appellant's arguments in the Briefs present us with the following
issues:
1. Does Carr teach or suggest "adjusting the position of the
3 Although the Examiner included claims 51 and 52 in this rejection, we note
claim 51 is canceled and claim 52 is rejected under§ 103(a) as being
unpatentable over the combination of Evans, Carr, and Webb. See Final
Act. 8.
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Application 12/463,961
displayed notification object to maintain the relative position of
the displayed target object to the displayed notification object,"
as recited in claim 3 6, and as similarly recited in claims 46, 49,
and 60?
2. Does the Examiner err by not making the finding that Evans or
Carr, alone or in combination, teaches or suggests the limitation
"in response to detecting a change in a position of the displayed
target object relative to the displayed notification object," as
recited in claim 50?
3. Does the combination of Evans and Carr teach or suggest the
limitation "hiding the notification object when an application
associated with said target object is inactive," as recited in
claims 45 and 59?
4. Does the Examiner articulate a rationale supporting the
conclusion of obviousness based on the combination of Evans
and Carr?
ANALYSIS
Issue 1: Rejection of Claims 36--49, 60--62, and 64 under§ 103(a)
Appellant argues Carr does not teach or suggest the limitation
"adjusting the position of the displayed notification object to maintain the
relative position of the displayed target object to the displayed notification
object," as recited in independent claims 36, 46, 49, and 60. App. Br. 12-
14; Reply Br. 2-3. In particular, Appellant argues "the Examiner
misconstrues the plain meaning of 'maintain the relative position' of two
displayed objects" by interpreting the phrase to mean "adjust[ing] to
changing position." App. Br. 13-14. According to Appellant, the plain
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Application 12/463,961
meaning of the phrase "maintain the relative position" is set forth in
paragraph 24 of the Specification, which specifies that "the notification
object 302 maintains its position relative to its target ... even when the
target is moved ... the x and y position parameters which determine the
location of the object 320 could be specified relative to a reference point on
the [data entry field 212] (e.g., its upper left comer, etc.)." Id. Appellant
further argues that Carr's teaching of positioning the displayed balloon near,
but not overlapping the sensitive area is not "maintaining a 'relative
position' between two objects." Reply Br. 2-3.
We are not persuaded by Appellant's arguments that the Examiner has
erred. Regarding construction of the phrase "maintain the relative position,"
we note that the term "relative position" is broad and the claim does not
specify any standard or criteria to determine whether an adjustment to the
notification object maintains the "relative position" of the target object to the
notification object. Appellant attempts to narrow the meaning of the term by
arguing the Specification states "the x and y position parameters which
determine the location of the object 320 [the notification object] could be
specified relative to a reference point on the [date entry field 212]." See
App. Br. 13-14 (citing Specification i-f 24). However, we do not agree with
Appellant's argument because, while we interpret claims broadly but
reasonably in light of the Specification, we nonetheless must not import
limitations from the Specification into the claims. See Phillips v. A WH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane).
We also disagree with Appellant's argument that Carr does not teach
the disputed limitation. Considering the broadest reasonable interpretation
of the phrase "maintain the relative position," we agree with the Examiner
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Application 12/463,961
that Carr teaches the disputed limitation because Carr teaches, when the
pointer moves within a sensitive area associated with an icon (target area)
and a help message or balloon (notification object), adjusting the position of
the balloon to position it near, but not overlapping the icon. Ans. 10 (citing
Carr 6: 65-7: 11 ). That is, Carr teaches adjusting the position of the balloon
to "maintain the relative position" of the target area to the balloon because
the balloon's original position as "near, but not overlapping" the sensitive
area is maintained. We also note Carr teaches "[p ]referred positions may be
specified for each balloon," even though the preferred position may be
overridden. Carr 7: 13-15. Adjusting a balloon to its preferred position
would "maintain the relative position" of the target to the balloon because
the balloon would be in the same position relative to the target as its original
position. Thus, we do not find error in the Examiner's findings that Carr
teaches or suggests the disputed limitation of claims 36, 46, 49, and 60.
Issue 2: Rejection of Claim 50 under§ 103(a)
Appellant contends the Examiner has not presented a prima facie case
of obviousness of claim 50 because the Examiner has not alleged that Evans
or Carr, alone or in combination, teaches or suggests the limitation "in
response to detecting a change in a position of the displayed target object
relative to the displayed notification object," as recited in claim 50. App. Br.
15. Appellant argues the Examiner ignores this limitation in the Final
Action and Answer. Reply Br. 3--4. We disagree. In the Answer, the
Examiner explains, except for a typographical error in referring to claim 36
as claim 1, the Examiner treats claim 50 as claim 36, which we note recites
the same limitation as the disputed limitation in claim 50. See Ans. 12. In
the Final Action, the Examiner finds Evans fails to teach the disputed
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Application 12/463,961
limitation of claim 36, but Carr does so. See Final Act. 4---6 (citing Carr Fig.
6 in step 160; 1:5-12, 7:3-52, 9:39--42). We agree with the Examiner
because Carr teaches "[t]he method of positioning balloons [adjacent to an
icon] adjusts to changing positions of the icon on monitor 32 and to
placement of the icon within differing and multiple screen displays." Carr
7:7-10 (see also 6:67-7:2 stating"[ w]henever the pointer moves within a
sensitive area associated with an icon and a help message, computer system
30 uses the method of positioning balloons ... to display the help balloon").
Thus, because the Examiner finds Carr teaches the limitation "in response to
detecting a change in a position of the displayed target object relative to the
displayed notification object," as recited in claim 36 (see Final Act. 5), and
also makes this same finding in regard to claim 50, albeit by mistakenly
referring to claim 1, rather than claim 36 (see Final Act. 6), we do not agree
with Appellant's argument that the Examiner ignored this limitation and
failed to present a prima facie case of obviousness of claim 50.
Issue 3: Rejection of Claims 45 and 59 under§ 103(a)
Appellant contends the combination of Evans and Carr fails to teach
or suggest the limitation "hiding the notification object when an application
associated with said target object is inactive," as recited in claims 45 and 59.
App. Br. 16. The Examiner finds "Evans discloses that the balloon 118
appears during the logon process, that is, ifthe logon process (or window) is
not active the balloon 118 is not displayed." Final Act. 7; Ans. 13 (citing
Evans Abstract). However, Appellant argues, and we agree, "hiding the
notification object ... is not the same as merely failing to create the
notification object in the first place." App. Br. 16; Reply Br. 4.
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Accordingly, we do not sustain the Examiner's rejections of claims 45 and
59.
Issue 4: Rejection of Claims 36--50 and 52-64 under§ 103(a)
Regarding issue 4, Appellant contends the Examiner failed to provide
a rationale supporting the conclusion of obviousness based on the
combination of Evans and Carr. App. Br. 16-18. In particular, Appellant
argues the motivation to combine Evans and Carr has not been articulated.
Id. at 16. Appellant also contends the Examiner failed to make the factual
findings set forth in MPEP § 2143(I)(A), which Appellant argues are
required where the rationale for a conclusion of obviousness is combining
prior art elements according to known methods to yield predictable results.
Id. at 17-18. Appellant further argues the Examiner fails to identify the
level of ordinary skill in the art, which is a prerequisite for determining
obviousness. Id. at 17; Reply Br. 4.
We are not persuaded by Appellant's arguments. First, the Supreme
Court has rejected the rigid requirement of demonstrating a teaching,
suggestion, or motivation to combine references to show obviousness. KSR
Int'! Co. v. Teleflex Co., 550 U.S. 398, 419 (2007). Instead, a rejection based
on obviousness only needs to be supported by "some articulated reasoning
with some rational underpinning" to combine known elements in the manner
required by the claim. Id. at 418. Second, as indicated in the heading of
MPEP § 2143(1), the rationales set forth are merely exemplary, and the
section specifically states "the list of rationales provided is not intended to
be an all-inclusive list. Other rationales to support a conclusion of
obviousness may be relied upon by Office personnel." Third, the Examiner
here finds the combination of Evans and Carr teaches or suggests all of the
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limitations of claims 36-50 and 52---64. See Final Act. 3-10; Ans. 9-13.
The Examiner also finds it would have been obvious to incorporate the
method of positioning balloons of Carr with Evans because "[t]he benefit of
positioning of the balloon[ s] relative to a sensitive area is to avoid obscuring
displayed content." Final Act. 6. We agree with this finding and that it
constitutes articulated reasoning with some rational underpinning to support
the Examiner's conclusion of obviousness based on the combination of
Evans and Carr. Thus, the Examiner's analysis or rationale for reaching the
conclusion of obviousness is fully consistent with KSR.
Finally, we are not persuaded by Appellant's argument that the
Examiner errs by failing to identify the level or ordinary skill in the art
because Appellant does not explain how the level of skill was necessary to
resolving any of Appellant's arguments concerning the disputed claim
limitations. Furthermore, we note that an express definition of the level of
ordinary skill in the art is not required in all situations, as the level of
ordinary skill in the art can be reflected in the cited prior art references. See
Okajima v. Bourdeau, 261F.3d1350, 1355 (Fed. Cir. 2001) ("the absence of
specific findings on the level of skill in the art does not give rise to
reversible error 'where the prior art itself reflects an appropriate level and a
need for testimony is not shown"'). Here, we conclude the cited references
reflect the level of skill in the art, and the Examiner did not err in failing to
make an express finding of the level of ordinary skill.
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CONCLUSIONS
We do not find error ( 1) in the Examiner's finding that Carr teaches
"adjusting the position of the displayed notification object to maintain the
relative position of the displayed target object to the displayed notification
object," as recited in independent claims 36, 46, 49, and 60 or (2) in the
Examiner's conclusion that the combination of Evans and Carr renders the
subject matter of these claims obvious under 35 U.S.C. § 103(a). We also
do not find error in the analysis or rationale used by the Examiner in
reaching the conclusion of obviousness of claims 36-44, 46-50, 52-58, and
60-64 under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's
rejections of claims 36, 46, 49, and 60, as well as claims 37--44, 47, 48, 52-
58, and 61-64, which depend variously from these claims and are not argued
separately. See 37 C.F.R. § 41.37(c)(l)(iv).
We do not find error in the Examiner's finding that Carr teaches or
suggests "in response to detecting a change in a position of the displayed
target object relative to the displayed notification object," as recited in claim
50. Thus, we sustain the Examiner's rejection of claim 50, as well as claims
52-59 and 63, which depend from claim 50 and are not argued separately.
See 37 C.F.R. § 41.37(c)(l)(iv).
We agree with Appellant's argument the Examiner erred in rejecting
claims 45 and 59.
DECISION
We affirm the Examiner's decision rejecting claims 36-44, 46-50,
52-58, and 60-64 under 35 U.S.C. § 103(a).
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We reverse the Examiner's decision rejecting claims 45 and 59 under
U.S.C. § 103(a).
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-IN-PART
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