Ex Parte Massaro et al

Board of Patent Appeals and Interferences

Jan 18, 2008

09594308 (B.P.A.I. Jan. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte KEVIN L. MASSARO and STACY L. WOLFF
___________

Appeal 2007-2102
Application 09/594,308
Technology Center 2100
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Decided: January 18, 2008
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Before JOSEPH L. DIXON, ROBERT E. NAPPI, and JAY P. LUCAS,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-9, 11-16, and 18-24. We have
jurisdiction under 35 U.S.C. § 6(b).

We REVERSE.
Appeal 2007-2102
Application 09/594,308

BACKGROUND
Appellants’ invention relates to a method and apparatus for
coordinating display elements with the structure of a computer system. An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. A method of displaying computers, comprising:

providing a plurality of computers, each with a video display
design and having an interchangeable panel chosen from a plurality of
panels installed on a housing, the plurality of panels each having a
distinct visual design scheme;

correlating the distinct visual design schemes of the plurality of
interchangeable panels and the video display designs of the plurality
of computers such that they create an integrated design scheme; and

displaying the plurality of computers in the same place; so that
the integrated design scheme is observable by individuals.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
André 5,870,282 Feb. 9, 1999
Selig 6,492,978 B1 Dec. 10, 2002
Glaser 6,392,671 B1 May 21, 2002

PC Magazine, Vol. 15, No. 11 (June 11, 1996)

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REJECTIONS
Claims 1-9, 11-16, and 18-22 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Glaser in view of André and further in view of PC
Magazine.
Claims 23-24 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Glaser in view of André and PC Magazine as applied to
claims 1-22 above, and further in view of Selig.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejections, we make
reference to the Examiner's Answer (mailed Jun. 2, 2006) for the reasoning
in support of the rejections, and to Appellants’ Brief (filed Mar. 13, 2006)
and Reply Brief (filed Jun. 23, 2005) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
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 (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 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
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Application 09/594,308

presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’”
. . . however, 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 (2007)(quoting In re
Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006)).

The present invention generally relates to a business method for
configuring a computer screen such that the screen displays a pattern that is
complementary to the design of various components of a computing system
(Spec. 1). The system uses multiple interchangeable panels or sets of
matching panels that can be installed on components of the computing
system such as the central processing unit and video display. The system
and method provide logic to detect a particular panel or set of panels and
retrieve and display the corresponding wallpaper or screensaver on the video
display (Spec. 2).
Appellants argue that the Glaser reference fails to disclose an
interchangeable panel, much less an interchangeable panel that is installed
on a computer as recited in independent claims 1, 8, and 16. Appellants
argue that in contrast, Glaser merely discloses a peripheral that is connected
to a computer system in column 3, lines 24-25 (Br. 8). Additionally,
Appellants provide dictionary definitions of “peripheral” and “panel” on
page 8 of the Brief and provide a reasoned conclusion that a peripheral does
not comprise items such as panels (Br. 8). We agree with Appellants’
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Application 09/594,308

reasoned conclusion that a peripheral does not teach or fairly suggest a panel
installed on a computer.
Appellants argue that the Examiner has not provided any persuasive
motivation or suggestion to combine the teachings of André and Glaser (Br.
9). We agree with Appellants’ contention that the Examiner’s subjective
assertion for the combination of André’s replaceable panels for cosmetic or
functional individuality would not have taught or fairly suggested the
invention as recited in independent claims 1, 8, and 16 (Br. 9). Additionally,
we agree with Appellants’ contention that the further combination with PC
Magazine for the correlating of distinct visual design schemes for a plurality
of computers in the same place would not obviate the above-noted
deficiencies in Glaser and André. Appellants additionally argue that there is
“simply no reason other than hindsight gained from the present invention to
combine the cited references to ‘create an integrated design scheme’” (Br.
10). We agree with the Appellants and find that the Examiner has not made
a convincing showing for the combined teachings of Glaser, André, and PC
Magazine to teach or fairly suggest the invention as recited in independent
claims 1, 8, and 16. Therefore, we cannot sustain the rejection of
independent claims 1, 8, and 16 and their respective dependent claims 2-7, 9,
11-15, and 18-22.
With respect to dependent claims 23 and 24, the Examiner has not
identified how, and we do not find that the teachings of Selig remedy the
deficiencies in the combined teachings of Glaser, André, and PC Magazine.
Therefore, we cannot sustain the rejection of dependent claims 23 and 24.
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CONCLUSION
To summarize, we have sustained the rejection of claims 1-9, 11-16, and
18-24 under 35 U.S.C. § 103(a).

REVERSED

clj

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