Ex Parte Ku et al

Board of Patent Appeals and Interferences

Aug 30, 2007

09925258 (B.P.A.I. Aug. 30, 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today is not binding precedent of the Board.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
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Ex parte WILLIAM HSIAO-YU KU, JOHN SHIH-YUAN WANG,
DEREK WAN HOK HO, and JOEY ALLEN PERRY
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Appeal 2007-0262
Application 09/925,258
Technology Center 2100
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Decided: August 30, 2007
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Before JOSEPH F. RUGGIERO, LANCE LEONARD BARRY, and
MAHSHID D. SAADAT, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 09/925,258

Appellants’ disclosed invention relates to a multi-window display
environment in which user alert signals are generated whenever an
underlying display window requires user attention. Various types of alert
signals, such as audio signals, video signals, and combinations thereof, can
be specified by the user. An alert repeat interval may also be specified by a
user to define an elapsed time between successive alert signals.
(Specification 2-3).
Claim 1 is illustrative of the invention and it reads as follows:
1. A method for processing a display of an entry panel window on
a display device of a user terminal, said entry panel window
being selectively caused to appear on said display device to
enable input of information in order to effect a continuation of
an application coupled to said user terminal from a remote
server, said method comprising:
enabling a user to specify entry panel window parameters, said
entry panel window parameters being selectively applicable for
defining predetermined characteristics associated with a display
of said entry panel window;
detecting a receipt of a request at said user terminal from said
application at said remote server to present an entry panel
window on said display device;
displaying said entry panel window received from said remote
server in accordance with said entry panel window parameters
specified by said user; and
enabling said input of information by said user into said entry
panel window in order to effect said continuation of said
application.
The Examiner relies on the following prior art references to show
unpatentability:
Trueblood US 5,675,755 Oct. 7, 1997
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Wilks US 6,246,407 B1 Jun. 12, 2001
Ohmori US 6,292,620 B1 Sep. 18, 2001
(filed Aug. 13, 1999)

Claims 1, 2, 5, 11, 12, 15, 22, and 23 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Trueblood. Claims 3, 4, 6-10, 13, 14, and
16-21 stand rejected under 35 U.S.C. § 103(a). As evidence of obviousness,
the Examiner offers Trueblood alone with respect to claim 21, adds Wilks to
Trueblood with respect to claims 3, 4, 13, and 14, and adds Ohmori to
Trueblood with respect to claims 6-10 and 16-20.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants 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
(i) Under 35 U.S.C § 102(a), does Trueblood have a disclosure
which anticipates the invention set forth in claims 1, 2, 5, 11, 12, 15, 22, and
23?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claim 21,
has the Examiner established a prima facie case of obviousness based on
Trueblood alone?
(iii) Under 35 U.S.C § 103(a), with respect to appealed claims 3, 4,
13, and 14, would one of ordinary skill in the art at the time of the invention
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have found it obvious to combine Trueblood and Wilks to render the
claimed invention unpatentable?
(iv) Under 35 U.S.C § 103(a), with respect to appealed claims 6-10
and 16-20, would one of ordinary skill in the art at the time of the invention
have found it obvious to combine Trueblood and Ohmori to render the
claimed invention unpatentable?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346,
51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
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of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
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
(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
35 U.S.C. § 102(a) REJECTION
With respect to the 35 U.S.C. § 102(a) rejection of independent claims
1, 11, and 23 based on the teachings of Trueblood, the Examiner indicates
(Answer 4 and 8-11) how the various limitations are read on the disclosure
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of Trueblood. In particular, the Examiner directs attention to the
illustrations in Figures 2 and 13A of Trueblood, as well as the disclosure at
column 6, lines 24-49 and column 7, lines 13-19 of Trueblood.
Appellants’ arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of
Trueblood so as to establish a prima facie case of anticipation. Initially,
Appellants contend (Br. 11-12) that the “always on top” window feature of
Trueblood teaches away from Appellants’ claimed invention since a user
could not work a second window application while waiting for a first
window log-in screen since it would be at least partially blocked by the
“always on top” first window. Aside from the fact that a “teaching away”
argument is inappropriate in an anticipation rejection, we agree with the
Examiner that Appellants’ argument inaccurately characterizes the
disclosure of Trueblood. As pointed out by the Examiner (Answer 9),
Trueblood provides (e.g., Figure 2) for the full non-overlapping display of
multiple “always visible” windows, thereby permitting a user to work
multiple applications.
We also agree with the Examiner (Answer 9-10) that Appellants’
argument (Br. 12) that Trueblood does not disclose the display of a log-in
panel in which a user is requested to input identification information in order
to continue with an accessed application is not commensurate with the scope
of the claimed invention. As argued by the Examiner, the language of each
of the appealed independent claims 1, 11, and 23 does not require a “log-in”
panel window but, rather, merely an “entry” panel window. We find no
error in the Examiner’s interpretation of the displayed windows (e.g. col. 6,
ll. 24-27) in Trueblood which require user entry of information as
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corresponding to the “entry” panel windows as claimed. It is our opinion
that Appellants’ arguments improperly attempt to narrow the scope of the
claims by implicitly adding disclosed limitations which have no basis in the
claims. See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-
28 (Fed. Cir. 1997).
We further find to be without merit Appellants’ argument which
attempts to distinguish the claimed request receipt detection feature from the
disclosure of Trueblood. According to Appellants (Br. 12-13), in contrast to
the language of the appealed claims which requires the detection of the
receipt of a request from a server to a user terminal for display of a entry
panel window, Trueblood discloses the opposite, i.e., requests are made from
a user terminal to a server for performance of a particular operation.
In the first instance, we find no error in the Examiner’s stated position
(Answer 10) that any request by a user to a server for access to an
application will result in a request by the server to the user terminal to
display the necessary windows to process a particular application. For
example, the “event” messages disclosed by Trueblood (e.g. col. 5, ll. 56-64)
as being communicated from a server to a user terminal in a response to a
user request for application access would, in our view, be reasonably
considered to be “requests” for information to be entered into the display
windows for the requested application.
Secondly, our review of Appellants’ disclosure finds no specific
identification of the presentation of a log-in screen on a user terminal
resulting from a communication between a user terminal and a server as
being a “request.” Accordingly, we fail to see why the communications
from Trueblood’s server to the user terminal, such as the previously
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discussed event messages, would not be considered to be “requests” at least
as much as the server to user terminal communications described by
Appellants would be considered “requests.”
We similarly find to be unpersuasive Appellants’ contention (Br. 13-
14) that Trueblood lacks any disclosure of the claimed feature of enabling
user input of information into the entry panel window to effect continuation
of the application. We agree with the Examiner (Answer 10-11) that, at the
very least, Trueblood’s teaching (col. 6, ll. 24-27) of enabling a user to enter
information into displayed entry panel windows to perform such tasks as
moving and resizing windows and starting a new application would satisfy
such enabling feature, at least in the manner broadly set forth by Appellants.
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Trueblood, the Examiner’s 35 U.S.C.
§ 102(a) rejection of independent claims 1, 11, and 23, as well as dependent
claims 2, 5, 12, 15, and 22 not separately argued by Appellants, is sustained.

35 U.S.C. § 103(a) REJECTION
Appellants’ arguments (Br. 14, 15) in response to the Examiner’s
obviousness rejection of dependent claims 3, 4, 13, and 14 based on the
combination of Trueblood and Wilks initially reiterate those arguments
made alleging the deficiencies of Trueblood in disclosing the claimed
“detecting” and “enabling” features. For all of the reasons discussed, supra,
we find such arguments to be unpersuasive.
We also agree with Examiner (Answer 12) that the teaching of Wilks
(col. 5, ll. 4-30) of bringing displayed windows into and out of focus at
predetermined intervals satisfies the claimed intermittent window display
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feature. We further find no error, and we find no convincing arguments to
the contrary from Appellants, in the Examiner’s finding that the intermittent
window display feature taught by Wilks would serve as an obvious
enhancement to the system of Trueblood. As taught by Wilks, the
intermittent window display periodically directs a user’s attention to the
intermittently displayed window without interfering with other displayed
program windows.
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 Appellants, the Examiner’s 35 U.S.C.
§ 103(a) rejection of dependent claims 3, 4, 13, and 14 based on the
combination of Trueblood and Wilks is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a)
rejection of dependent claims 6-10 and 16-20 in which the Ohmori reference
has been applied to Trueblood, we sustain this rejection as well. As with the
previously discussed rejection of claims 3, 4, 13, and 14, although
Appellants contend (Br. 15) that Ohmori lacks a disclosure of the claimed
“detecting” and “enabling” features, these features are disclosed by
Trueblood. We also find no error in the Examiner’s finding of obviousness
to the skilled artisan of applying the audio and video alert teachings of
Ohmori to Trueblood for all of the reasons articulated by the Examiner at
pages 7 and 12 of the Answer.
Lastly, we also sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claim 21 based on Trueblood alone. Appellants have made no
separate argument with the respect to the claimed wireless device features of
this claim. Instead, Appellants’ arguments reiterate the contention that
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Trueblood lacks the claimed “detecting” and “enabling” features, argument
which, as discussed previously, we find to be unpersuasive.

CONCLUSION
In summary, we have sustained the Examiner’s rejections of all the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
1-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(effective
September 13, 2004).
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AFFIRMED

eld

ROBERT V. WILDER
ATTORNEY AT LAW
4235 KINGSBURG DRIVE
ROUND ROCK TX 78681
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