Ex Parte Koivisto et al

Board of Patent Appeals and Interferences

Feb 23, 2012

11007028 (B.P.A.I. Feb. 23, 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.
11/007,028 12/08/2004 Antti Koivisto 037145-8701 7741
10949 7590 02/24/2012
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
SALOMON, PHENUEL S
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
02/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTTI KOIVISTO, ANDREI POPESCU, VIRPI ROTO, GUIDO
GRASSEL, MIKKO K. MAKELA, and ROLAND GEISLER
____________

Appeal 2010-007901
Application 11/007,028
Technology Center 2100
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ANDREW J. DILLON, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007901
Application 11/007,028

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STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-32. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). The Oral Hearing scheduled for February 9, 2012 was waived.
We affirm.
A. INVENTION
The invention at issue on appeal relates generally to viewing and
navigating digital visual content. More particularly, the present invention
relates to viewing and navigating digital visual content on devices having
smaller displays than the digital visual content. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method of viewing material displayed on an
electronic device, comprising:
providing a document, only a portion of which is
viewable on a display at a given moment;
displaying the portion on the display as a primary image;
generating a secondary image, the secondary image
including the portion and additional material of the document
not part of the primary image; and
simultaneously displaying the secondary image and the
primary image on the display in response to a user performing
one of scrolling and panning through the document such that
both the secondary image and the primary image are visible to
the user.

Appeal 2010-007901
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C. REFERENCES

The Examiner relies on the following references as evidence:
Kaasila US 2003/0095135 A1 May 22, 2003
Masera US 7,006,091 B2 Feb. 28, 2006
Frank US 2002/0171682 A1 Nov. 21, 2002

Stuart Pook, Eric Lecoline, Guy Vaysseix, Emmanuel Barillot, "Context and
Interaction in Zoomable User Interfaces," Ecole Nationale Superieure des
Telecommunications, CNRS URA 820, 46 rue Barrault, 75013 Paris,
France, ACM Press, pp. 227-231, 317 (2000)

D. REJECTIONS

Claims 1, 4-5, 9, 12-13, 17, 20-21, 25, and 28-29 are rejected under 35
U.S.C. §103(a) as being unpatentable over Kaasila in view of Pook.
Claims 2, 3, 10, 11, 18, 19, 26, and 27 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Kaasila in view of Pook in further view of
Frank.
Claims 6-8, 14-16, 22-24 and 30-32, are rejected under 35 U.S.C. §
103(a) as being unpatentable over Kaasila in view of Pook in further view of
Masera.

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Application 11/007,028

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ANALYSIS
Appellants argue that the proposed combination does not teach or
suggest concerning "simultaneously displaying the secondary image and the
primary image on the display in response to a user performing one of
scrolling and panning through the document such that both the secondary
image and the primary image are visible to the user" as recited in
independent claim 1. In particular, Appellants contend that:
the Examiner's assertion that the panning operation of Pook
constitutes a "triggering" mechanism is not correct.
Specifically, and as the text of Pook itself demonstrates, the
portions of Pook dealing with panning operations do nothing
more than describe how a panning operation works.
…
Other than this panning operation, no other action is triggered
or otherwise occurs in response to the panning request by the
user. In other words, the only operation "triggered" by the
panning command is the panning operation itself.

(Reply Br. 2-3). Appellants further contend that:
Appellants addressed Pook's deficiencies in the Background of
the present application, noting in paragraph [0004]:

However, this system involves the use of such a
transparent overview at all times, including when a user
is staying in a single portion of the document and other
times when such an overview is neither necessary nor
desirable. This can make it more difficult for the user to
review and work within the document.

In other words, although Pook may disclose the general
concept of a transparent overview, it neither recognizes nor
provides a solution to the problem which Appellant alone
addressed, namely the fact that the simultaneous displaying of
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primary and secondary images results in sometimes undesired
clutter on a small display, making it difficult for a user to
actually work within a document. In response to this problem,
Appellant invented a system and method by which the
simultaneous use of primary and secondary images as described
in the independent claims occurs in response to a scrolling or
panning action. Pook simply does not teach having a
"triggering" mechanism of any support to cause the
simultaneous exhibition of such primary and secondary images.

(App. Br. 9).
The Examiner disputes the Appellants' position and maintains that the
combination of Pook and Kaasila teaches and fairly suggests the claimed
limitations set forth above. (Ans. 8). The Examiner maintains that there is a
clear description of an action being performed in Kaasila and combining the
teachings of Kaasila with Pook's simultaneous display will lead to the
claimed invention. (Ans. 8). We agree with the Examiner.
While the Examiner has not set forth an express interpretation of the
claim language or identified that Appellants' arguments are not
commensurate in scope with the express claim language, we note that
Appellants' argument with respect to "triggering" is more specific than the
instant claim language "in response to…." Therefore, Appellants’ argument
is not commensurate in scope with the claim, and consequently does not
show error in the Examiner's showing of obviousness of independent claim
1. We note that there is no temporal limitation set forth in the language of
independent claim 1. We find no limitation that the simultaneous display of
the primary and secondary image on the display "only" appears "in response
to user performing one of scrolling and panning through the document…" or
that the "simultaneous display" goes away after a period of time so as to
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preclude display at all times. Giving the claimed invention a broad and yet
reasonable interpretation, we find the Examiner's rejection to be reasonable.
Furthermore, we find that the change of either the primary or secondary
images or a combination of the two on the screen would necessarily form a
new display combination which would have been formed in response to
scrolling or panning through the document.
With respect to the combination of Kaasila and Pook, Appellants
contend that the Examiner has not provided any support for the motivation
and the references fail to provide such motivation (App. Br. 13). Appellants
further contend that their own disclosure is the source of the motivation, but
cannot be relied upon by the Examiner for a proper motivation. The
Examiner maintains that the skilled artisan would be motivated based upon
the general knowledge available to allocate valuable screen real-estate to
pertinent information. (Ans. 9). Appellants contend that the Specification at
paragraph [0007] clearly notes why one would be motivated to "selectively
display a minimap or transparent overview when it would be most useful,
and not when it would be a hindrance." (App. Br. 13). We note that
Appellants' argument regarding "selective display of a minimap or
transparent overview" is not commensurate in scope with the language of
independent claim 1. Therefore, we find no error in the Examiner's
proffered motivation, and we will sustain the rejection of representative
independent claim 1.
Appellants further contend that the Examiner has not made an
appropriate showing of "common knowledge in the art" with respect to
"official notice" (Reply Br. 4). However, as discussed above, Appellants’
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contentions are not commensurate in scope with the language of independent
claim 1.
Since Appellants have not set forth separate arguments for
patentability of independent claims 9, 17, and 25 along with dependent
claims 4, 5, 12, 13, 20, 21, 28, and 29, we will group those claims as falling
with representative claim 1.
With respect to claims 6-8, 14-16, 22-24, and 30-32, Appellants rely
upon the same argument advanced with respect to independent claim 1 and
maintain that Masera does not remedy the noted deficiencies in the
combination discussed above. Since we found no such deficiencies in the
base combination, we find no error in the Examiner's showing of
obviousness.
With respect to claims 2-3, 10-11, 18-19 and 26-27 over the
combination of Kaasila and Pook with Frank, Appellants have set forth no
separate arguments for patentability in the briefs. Therefore, we will group
these dependent claims as falling with their respective independent claims.

CONCLUSION
For the aforementioned reasons, Appellants have shown no error in
the Examiner's showing of obviousness of independent claim 1.

ORDER
We affirm the obviousness rejections of claims 1-32.
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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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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