Ex Parte Louch

Patent Trial and Appeal Board

Apr 26, 2018

11693604 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111693,604 0312912007
132324 7590 04/30/2018
Fernando & Partners LLP
228 Hamilton Ave.
3rd Floor
Palo Alto, CA 94301
FIRST NAMED INVENTOR
John Louch
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.
27753-50075US 9551
EXAMINER
SONG, DAEHO D
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LOUCH
Appeal 2017-002119
Application 11/693,604
Technology Center 2100
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 8, 11, 13, 14, 18-20, 22, 28-30, 34, 37, 38, 43--47, 50-52, 55,
56, and 60-63, which are all the claims pending in this application. Claims
5,6, 7,9, 10, 12, 15-17,21,23-27,31-33,35-36,39--42,48,49,53,54,
57-59, and 64---68 are cancelled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We reverse.
Appeal 2017-002119
Application 11/693,604
STATEMENT OF THE CASE
Introduction
Appellant's invention "relates generally to presenting information
within a cursor, and more particularly to techniques for presenting
information, within a cursor, about a target represented by an on-screen
element." (Spec. i-f 2).
Illustrative Claim
1. A method comprising:
moving a cursor on a display of a computing device in
response to a first user input to the computing device; and
while the cursor is positioned at a first location to point to
a user-activatable element referencing a link that corresponds to
content:
presenting, alongside the cursor, a user interface element
including a preview of the content at a first size;
while displaying the user interface element alongside the
cursor, detecting a press input with an input mechanism; and
responsive to receiving the press input, displaying
additional information in the preview of the content, [L] the
additional information being displayed only as long as the
press input is held down.
(Emphasis added regarding contested limitation L ).
Rejection
Claims 1--4, 8, 11, 13, 14, 18-20, 22, 28-30, 34, 37, 38, 43--47, 50-
52, 55, 56, and 60-63 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Kelly et al.
(US 2006/0101341 Al) (hereinafter "Kelly"), in view of Branson et al. (US
2
Appeal 2017-002119
Application 11/693,604
2005/0114778 Al) (hereinafter Branson), and further in view of Thames et
al. (US 2003/0145281 Al) (hereinafter Thames).
Issue on Appeal
Did the Examiner err in rejecting claims 1--4, 8, 11, 13, 14, 18-20, 22,
28-30, 34, 37, 38, 43--47, 50-52, 55, 56, and 60-63 as being obvious over
the cited combination of references under pre-AIA 35 U.S.C. § 103(a)?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented.
Claim 1 rejected under§ 103 (a)
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding Kelly, Branson, and Thames collectively teach or suggest contested
limitation L:
responsive to receiving the press input, displaying
additional information in the preview of the content, [L] the
additional information being displayed only as long as the
press input is held down [,]
within the meaning of representative claim 1? 1 (Emphasis added regarding
contested limitation L ).
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
3
Appeal 2017-002119
Application 11/693,604
Appellant notes possible dictionary interpretations of limitation L of
claim 1, inter alia:
Each of the independent claims recites "the additional
information being displayed only as long as the press input is
held down." In ordinary English, the phrase "as long as" has
multiple meanings. One of those meanings is "provided that."
Another meaning is "for the duration" or "during the time that."
Interpreting which of these meanings is used in the claim is not
a matter of reading in limitations from the specification, but of
correctly interpreting the claims in light of the specification.
App. Br. 10 (emphasis added).
Appellant cites to various dictionaries in support of various plain
meanings. (Id., fn. 15-17). Appellant then focuses on claim construction in
light of the Specification, citing to Spec. i-f 57, contending:
it is clear that the embodiment in which "information only
remains in cursor 303 as long as" the press input is received
is distinct from the embodiment in which the press input merely
acts as a "toggle." In the "as long as" embodiment, the
information is presented while the key is pressed down, and
ceases to be presented when the key is released. In the
"toggle" embodiment, the information is presented when the
key is pressed, continues to be shown when the key is released,
and is hidden when the key is pressed a second time.
App. Br. 11 (emphasis added).
The Examiner disagrees, and construes the contested claim language
broadly under BRI: "First of all, it should be noted that paragraph [0057] of
the specification states, in part, 'the additional information only remains in
cursor 303 as long as the modifier key or other key is held down."'
(Emphasis added). From this support, the Examiner concludes the claim
language "as long as the press input is held down" can be construed under
4
Appeal 2017-002119
Application 11/693,604
BRI such that "the additional information is displayed as provided that a key
is pressed or a command is executed." (Ans. 3) (emphasis added).
In the Final Action ( 4), the Examiner relies on Thames, Figure 68, and
paragraph 974, in combination with Kelly and Branson, for teaching or
suggesting the contested claim limitation: "the additional information being
displayed only as long as the press input is held down [(fig. 68; 0974)]."
(Emphasis added).
Turning to the evidence, paragraph 97 4 of Thames describes Figure
68, in pertinent part:
When the manager goes to the display for patch
smatrix and does a mouseover of answer symbol 6775 (FIG.
68), tooltip 6710 appears with the original query. However,
the question mark at the end of the query is now a link.
Hence, if the manager holds control key 6890 down, positions
cursor 1601 on the link, and clicks a mouse key, a
popup answer window 6810 is presented that contains the
answer to the query.
The Examiner provides a rationale to modify the combination of Kelly
and Branson with Thames, as follows:
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the system,
disclosed in Kelly and Branson, to include: the additional
information being displayed only as long as the press input is
held down, for the purpose of providing for user to view
information intuitively, as taught in Thames.
(Final Act. 4).
We find the dispositive point of disagreement in this appeal turns
upon the Examiner's broader claim construction: "It should be noted that in
the interpretation of [A ]ppellant regarding [the] 'as long as' embodiment, the
5
Appeal 2017-002119
Application 11/693,604
operation of which 'the information ceases to be presented when the key is
released' has been assumed and is not consistent with the supporting
description of the specification." (Ans. 4) (emphasis added in bold and
italics, underline omitted).
Smith:
We disagree. As recently emphasized by our reviewing court in
Even when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims "so broadly
that its constructions are unreasonable under general claim
construction principles." Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015). "[T]he protocol of
giving claims their broadest reasonable interpretation ... does
not include giving claims a legally incorrect interpretation"
"divorced from the specification and the record evidence." Id.
(citations and internal quotation marks omitted); see PPC
Broadband, Inc. v. Corning Optical Commc 'ns RF, LLC, 815
F.3d 747, 751-53 (Fed. Cir. 2016).
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is "consistent with the
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Swface, 603 F.3d 1255, 1259---60 (Fed. Cir. 2010).
In re Smith Int'!, Inc., 871F.3d1375, 1382-83 (Fed. Cir. 2017).
Applying our reviewing court's guidance here, we broadly but
reasonably interpret the disputed claim language in a manner consistent with
6
Appeal 2017-002119
Application 11/693,604
Appellant's Specification. (Id.). As pointed out by Appellant (App. Br. 10)
we find the contested claim limitation L ("the additional information being
displayed only as long as the press input is held down" finds clear support in
at least the third sentence of paragraph 57 of the Specification: "Thus, the
user can indicate when he or she would like to see the additional information
in cursor 303. In one embodiment, the additional information only remains
in cursor 303 as long as the modifier key or other key is held down."
(Emphasis added).
Given the aforementioned context and support in the Specification
(i-f 57), we conclude the broadest reasonable interpretation of "the additional
information being displayed only as long as the press input is held down"
(claim 1), that is "consistent with the specification" Morris, 127 F.3d at
1054, means that when the press input is not held down, the additional
information is no longer displayed. Therefore, we conclude the Examiner's
broader construction is overly broad, unreasonable, and inconsistent with the
Specification. (Ans. 4).
On this record, we find a preponderance of the evidence supports
Appellant's arguments for essentially the same reasons articulated in the
Briefs. We note remaining independent claims 22, 28, 30, and 43 recite
contested limitation L of claim 1 in similar form having commensurate
scope.
Accordingly, we are constrained on this record to reverse the
Examiner's§ 103(a) rejection of all independent claims on appeal. Because
we have reversed the rejection of all independent claims, for the same
reasons we reverse the Examiner's§ 103(a) rejection of all dependent claims
on appeal.
7
Appeal 2017-002119
Application 11/693,604
DECISION
We reverse the Examiner's decision rejecting claims 1--4, 8, 11, 13,
14, 18-20, 22, 28-30, 34, 37, 38, 43--47, 50-52, 55, 56, and 60-63 under
pre-AIA 35 U.S.C. § 103(a).
REVERSED
8