Ex Parte MaengDownload PDFPatent Trial and Appeal BoardJun 29, 201612047952 (P.T.A.B. Jun. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/047,952 03/13/2008 Aaron K. Maeng 34399 7590 07/01/2016 GARLICK & MARKISON Melanie Murdock P.O. BOX 160727 AUSTIN, TX 78716-0727 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. MANG-1-1001 3962 EXAMINER HUR,ECE ART UNIT PAPER NUMBER 2172 NOTIFICATION DATE DELIVERY MODE 07/01/2016 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): MMurdock@TEXASPATENTS.COM ghmptocor@texaspatents.com bpierotti@texaspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AARON K. MAENO Appeal2014-009999 Application 12/04 7 ,952 Technology Center 2100 Before JENNIFER L. McKEOWN, JOHN P. PINKERTON, and CARLL. SILVERMAN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE Appellant's invention relates generally to software, and more specifically, to systems and methods for providing additional information for objects in electronic documents. Abstract. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for providing additional information for objects in a document, the method comprising the steps of: Appeal2014-009999 Application 12/047 ,952 presenting an active object in a document to a user via an application program, the active object being activatable upon selection; on activation of the active object, presenting a balloon to the user having any combination of a selector and an operator, the selector and the operator being selectable, the operator being associated with an operation, wherein at least one of: the selector, and the operator, are configured in response to input from the user via operation of the application and prior to presenting the active object, wherein the configuration causes, via operation of the application, the at least one of: the selector, and the operator, to be retrieved from a location external to the application program and included in the balloon; when the balloon has a selector, on selection of the selector, presenting a second balloon having any combination of an additional selector and operator; and when the balloon has an operator, on selection of the operator, performing the operation associated with the operator with respect to the active object in the document. THE REJECTIONS The Examiner rejected claims 1, 2, 4, 7-12, 14, and 17-20 under 35 U.S.C. § 103(a) as unpatentable over Bhumkar (US 2008/0235594 Al; publ. Sept. 25, 2008) and Liggett (US 2007 /0174338 Al; publ. July 26, 2007). Final Act. 3-9. 1 The Examiner rejected claims 3 and 13 under 35 U.S.C. § 103(a) as unpatentable over Bhumkar, Liggett, and Carson (US 2006/0101012 Al; publ. May 11, 2006). Final Act. 9-10. 1 Throughout this Opinion, we also refer to: (1) the Final Office Action, mailed October 10, 2013 ("Final Act."); (2) the Appeal Brief, filed March 3, 2014 ("App. Br."); (3) the Examiner's Answer, mailed July 14, 2014 ("Ans."); and, (4) the Reply Brief, filed September 5, 2014 ("Reply Br."). 2 Appeal2014-009999 Application 12/047 ,952 The Examiner rejected claims 5, 6, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Bhumkar, Liggett, and Lin (US 6,999,916 B2; iss. Feb. 14, 2006). Final Act. 10-11. ANALYSIS THE OBVIOUSNESS REJECTION BASED ON BHUMKAR AND LIGGET Claims 1, 2, 4, 7-12, 14, and 17-20 Based on the record before us, we are not persuaded the Examiner erred in rejecting claims 1, 2, 4, 7-12, 14, and 17-20 as unpatentable over Bhumkar and Liggett. Appellant contends that Liggett fails to teach that: at least one of: the selector, and the operator, are configured in response to input from the user via operation of the application and prior to presenting the active object, wherein the configuration causes, via operation of the application, the at least one of: the selector, and the operator, to be retrieved from a location external to the application program and included in the balloon, as recited in claims 1 and 11. See App. Br. 9. According to Appellant, Liggett's toolbar "is presented outside of the window of the word processing system" and thus "is separate from and not part of the application program itself." App. Br. 8; see also Reply Br. 6-8. These arguments, however, fail to consider the teachings of Bhumkar. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the Examiner explains, Bhumkar teaches: 3 Appeal2014-009999 Application 12/047 ,952 Bhumkar discloses the claimed aspect selector and operator are configured in response to input from the user via operation of the application in FIGs. 7-9, wherein in FIG. 8, wherein a user may select (e.g., highlight) a word(active object) or a phrase 70 that appears on a Web page 72 displayed within a browser interface. Then, in response to a cursor control operation (e.g., a right click) a menu 74(selector) opens. One of the options in menu 74 is a search submenu 7 6, which allows the user to submit the highlighted word/phrase as a query to any site( operator) (e.g., including but not restricted to search engines such as Google, on- line dictionaries such as FreeDictionary, on-line encyclopedias such as Wikipedia, and image search engines such as Google Images). Ans. 3 (citing Bhumkar i-f 7 6). The Examiner, then, relies on Liggett merely for teaching prior configuration or customization. Ans. 3; Final Act. 2-3, 5- 6. As such, Appellant's arguments with respect to Liggett are unpersuasive. Likewise unavailing is Appellant's contention that a skilled artisan would not combine Liggett with Bhumkar. Appellant does not challenge the Examiner's reason to combine the references, but instead asserts that neither Bhumkar nor Liggett teaches the disputed configuration limitation. See, e.g., App. Br. 10 (alleging that the Examiner admitted that Bhumkar fails to disclose the function of the disputed limitation and concludes that since "Bhumkar fails to disclose these functions themselves, logic dictates that Bhumkar must also fail to disclose these functions, via operation of the application."); id. ("This deficiency in Bhumkar cannot be corrected via combination with Ligget, because as discussed above, Ligget also fails to disclose these functions via operation of the application."); see also Reply Br. 8-9. 4 Appeal2014-009999 Application 12/047 ,952 For the reasons discussed above, we agree with the Examiner that the combination of Bhumkar and Liggett teaches the disputed configuration limitation. As the Examiner further explains, It would be obvious to one of ordinary skill in the art at the time of the invention to add this feature of customizing add-in/plug-in by the user because this would allow one or more portion of the research software may be customized by the user to match their specific work, such as practice type and/or jurisdiction or their interests or abilities. Final Act. 5---6. As such, Appellant's unsupported blanket assertion that a skilled artisan would not combine Bhumkar and Liggett is unpersuasive. Appellant also asserts that Liggett teaches away from the cited combination. App. Br. 10-11; Reply Br. 9. Specifically, In the instant case, Ligge[t]t not only fails to teach or suggest the Configuration via Operation of the Application Feature, but further teaches away from the use thereof. As discussed above, Ligge[t]t's toolbar is provided entirely separate from the application. This is not for want of opportunity. The application program is presented, it is simply presented as a separate from the toolbar. Therefore, Ligge[t]t explicitly teaches away from Configuration via Operation of the Application Feature. App. Br. 10-11. We disagree. Appellant fails to identify any teaching of Liggett that discourages or discredits the use of a customizable toolbar within the same application. Contrary to Appellant's assertion, the mere use of a toolbar that is allegedly separate from an application does not teach away from including a customizable toolbar within the application. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A 5 Appeal2014-009999 Application 12/047 ,952 reference does not teach away ... if it merely expresses a general preference for an alternative invention ... "). Accordingly, for the reasons discussed above and by the Examiner, claims 1, 2, 4, 7-12, 14, and 17-20 are unpatentable over the cited combinations of prior art. THE REMAINING OBVIOUSNESS REJECTIONS Claims 3, 5, 6, 13, and 16 Appellant presents no separate arguments for patentability of claims 3, 5, 6, 13, and 16, but relies solely on the arguments presented for claims 1 and 11. See App. Br. 11-12; Reply Br. 10. As discussed above, we find these arguments unpersuasive. Accordingly, we agree with the Examiner that the remaining claims are unpatentable over the cited combinations of prior art. CONCLUSION The Examiner did not err in rejecting claims 1-20 under§ 103(a). DECISION We affirm the Examiner's decision to reject claims 1-20. 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 6 Copy with citationCopy as parenthetical citation