Ex Parte Lengeling

Board of Patent Appeals and Interferences

Oct 14, 2010

10334252 (B.P.A.I. Oct. 14, 2010)

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.
10/334,252 12/31/2002 Gerhard Lengeling 04860.P3018 5795
45217 7590 10/15/2010
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUITE 300
SUNNYVALE, CA 94085-4040
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
10/15/2010 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 GERHARD LENGELING
____________________

Appeal 2009-004557
Application 10/334,2521
Technology Center 2100
____________________

Before JOHN A. JEFFERY, JAY P. LUCAS, and DEBRA K. STEPHENS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed December 31, 2002. The real party in interest is Apple,
Inc. of Cupertino, California.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004557
Application 10/334,252
STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 18 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm-in-part.

Appellant’s invention relates to a method for manipulating a signal in
a user interface so that one of a plurality of components is distinguished
from the others. In the words of Appellant:
Audio and/or video signals are often defined
by various components. In an audio signal, such
components may comprise different instruments or
sound generations or frequency ranges.
Manipulation of the signals involves varying one
component in relation to the other components.
When using a GUI, each component may be
displayed on a separate axis. This results in a
plurality of axes.
Due to the large number of components,
there are typically a large number of axes which
consume a large amount of space on the GUI. To
accommodate for a plurality of such axes, it has
been proposed to reduce each in size. When the
axes have the same variables used on the ordinate
and abscissa, then the axes can be displayed with
one axis which is in line. An example of which is
shown in Figure 1. However it is difficult for the
user to compare the data between the various axes
and only a limited number of axes can be
displayed at the same time.
. . . .
The present invention relates to a method of
manipulating an audio and/or video signal in a
graphical user interface (GUI), said signal
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Application 10/334,252
comprising at least two components, each of which
having a first variable which varies against a
second variable, said method comprising:
determining that the variables of said
components are the same and have an equal scale;
defining an axis with the first variable
forming the ordinate and the second variable
forming the abscissa;
selecting one component to be a primary
component; and
displaying said components on the axis in
the GUI by manipulating said primary component
to be distinguished from the other component.
Preferably, the primary component is
distinguished from the other component by varying
the light intensity. In addition, there may be three
or more components and each of the other
components have [sic] the same light intensity.
Alternatively, there may be three or more
components and all of the other components are
distinguished from each other by varying the light
intensity.
(Spec. 2, 3).
The following illustrates the claims on appeal:
Claim 1:
1. A method of manipulating an audio
and/or video signal in a graphical user interface
(GUI), said signal comprising at least two
components, each of which having a first variable
which varies against a second variable, said
method comprising:

determining that the variables of said
components are the same and have an equal scale;

defining an axis with the first variable
forming the ordinate and the second variable
forming the abscissa;
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Application 10/334,252

selecting one component to be a primary
component; and

displaying said components on the axis in
the GUI by manipulating said primary component
to be distinguished from the other component.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin US 4,257,104 Mar. 17, 1981
Lee US 6,269,325 B1 Jul. 31, 2001
Phillips US 6,473,084 B1 Oct. 29, 2002

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 4 and 7 to 18 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Martin in view of Phillips.
R2: Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Martin in view of Phillips further in view of Lee.

We will review the rejections in the order argued and as grouped in
the Briefs. We have only considered those arguments that Appellant
actually raised in the Briefs. Arguments Appellant could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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Application 10/334,252
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether Martin and Phillips teach determining that the variables of the
components are the same and have an equal scale and selecting one of the
components to be a primary component.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. According to Appellant, an audio signal may have various components,
for example from different instruments (¶ [0004]). Appellant has
invented a method of manipulating the components of an audio or video
signal, so when displayed on a graphical user interface (GUI) of a
computer screen, the graph of multiple components may be overlaid on
the same scale (¶ [0007]). Additionally, one of the components, selected
as a primary component, is distinguished from the others by the intensity
of its trace or by its color (¶¶ [0008], [0020]).
2. The Martin reference teaches multiple traces on the screen of a display
overlaid on the same scale (Fig. 11; col. 12, l. 15). The user has selected
one trace to be brighter than the others, that is, distinguished by their
intensity (Col. 11, ll. 59-61).
3. The Phillips reference teaches different related data components
displayed on the same scale (Col. 33, l. 47 to col. 34. l. 6) (Fig. 8, col. 30,
l. 17).

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Application 10/334,252
PRINCIPLES OF LAW

Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Our guiding court has held “[t]he prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claims in the ’198 application.” (In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 4 and 7 to 18
under 35 U.S.C. § 103(a) [R1]

The Examiner has rejected the noted claims for being obvious over
Martin in view of Phillips. Appellant argues that two elements of their
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Application 10/334,252
invention, present in all the claims, are missing from the combined teachings
of the references (App. Br. 6, middle).
First Appellant contends that the references fail to teach or disclose
the limitation “determining that the variables of said components are the
same and have an equal scale.” (Id.).
Appellant and the Examiner agree that Martin discloses a display of
three traces (App. Br. 6, middle; Ans. 3, middle). And we notice that in
Martin the display of the combined trace of the three components has an
equal scale (Fig. 11). But the Examiner relies on Phillips for the teaching of
the components being the same and on an equal scale (Ans. 4, top).
Appellant contends that Phillips “is silent with respect to determining
that the variables (e.g. axis) of the components are the same.” (App. Br. 7,
middle). To the contrary, we find that Phillips does teach and suggest that
the components are displayed with the same variables. Note in Figures 8, 9
and 10 the simulated displays all show a time axis for the different
components. We further find that they are displayed along the same scales,
along both the abscissa and the ordinate (Col. 33, l. 48 to col. 34, l. 6). This
is intentionally performed by the Phillips system, using the default values
disclosed, namely time from DTd, the earliest display date to present, with
the granularity G (Col. 33, l. 48). Thus, we find that Phillips teaches
determining that the components are on an equal scale, as claimed.
Appellant next contends that the references fail to teach “selecting
one component to be a primary component” as claimed. (App. Br. 6,
middle) (Board’s emphasis). Appellant notes that Martin teaches three
traces, (App. Br. 6, middle), and even that they are differentiated from each
other (Id.), but Appellant argues that this is not sufficient for the selection as
a primary component.
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Application 10/334,252
Reading the claim as a whole, we find that the only functional
difference for a primary component is that it is manipulated to be
distinguished from the other components (Claim 1). Though Phillips does
not label one component as “primary”, “anticipation is not an ipissimis
verbis test.” (In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo
N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed.
Cir. 1986)). Nor, we may add, is obviousness. In providing a differentiated
intensity for the trace under consideration, Martin provides all of the
functional characteristics of the claimed “primary component”. (Col. 11, ll.
57 to 64). Each component is distinguished from the others, which is all that
the claim requires.
With respect to claims 17 and 18, Appellant argues that the references
do not teach, inter alia, “advising a user that the second set (of components)
cannot be presented with the first set.” (Brief 9, middle). We have
considered this argument, and the references as directed by the Examiner.
(Answer 7, middle). We cannot find the teaching of this limitation in the
references. As the Examiner also relies upon this teaching for claims 11 and
14 (Id.), we will not sustain the rejection of claims 11, 14, 17 and 18.
Appellant argues claim 3 separately, with respect to the non-primary
components having the same light intensity. (Brief 11, top). We find this
limitation taught by Martin, as recited by the Examiner (Answer 4, bottom),
and thus do not find error in the rejection.
Appellant argues claim 7 separately, with respect to changing which
component is the primary component. Martin teaches that any of the traces
may be the primary trace, as pointed out by the Examiner. (Answer 5, top).
We do not find error in the rejection.
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Appellant argues claim 10 separately, with respect to storing the
components in a disc drive, and modifying the components therein. (Brief
14). The Examiner points to Martin, column 16, in which the signal is
modified including the center frequency and thus the span of the displayed
signal. (Answer 6, bottom). We do not find error in this rejection.
Appellant argues with respect to claims 12 and 15 that the references
fail to teach requesting the user to change the scale of a component. (Brief
17, bottom). The Examiner has pointed to Phillips, column 9, where on line
55 permitting the user to change the scale of the graphs is taught. We find
that offering the user such a control renders obvious requesting the user to
change the scale.
Finally with respect to claim 13, Appellant argues that it would not be
obvious to select another component to be the primary one instead of the
first chosen one. We find this argument unconvincing for skilled artisans
would have recognized that emphasizing or highlighting a particular desired
component via such a selection would have been merely a common-sense
engineering decision. (See KSR, cited above.)

Arguments with respect to the rejection
of claims 5 and 6
under 35 U.S.C. § 103(a) [R2]

The Examiner has rejected the noted claims for being obvious over
Martin and Phillips further in view of Lee. Appellant relies on the
arguments for the independent claims, which arguments have been
considered above (App. Br. 20, middle). In addition, Lee teaches the
claimed color and line display type variations (Fig 3C; col. 3, ll. 32 to 49).

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CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 11, 14, 17
and 18. We do not find error in the rejections of the remaining claims.

DECISION
We affirm the Examiner’s rejections R1 and R2 of claims 1 to 18,
except with respect to claims 11, 14, 17 and 18. The rejection of those latter
claims is reversed.

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).

AFFIRMED-IN-PART

peb

APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUITE 300
SUNNYVALE, CA 94085-4040
10