Ex Parte Matsa et al

Board of Patent Appeals and Interferences

Feb 23, 2010

10138119 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MOSHE E. MATSA, JULIUS Q. QUIAOT,
CHRISTOPHER D. SPITZER, and CHRISTOPHER R. VINCENT
____________

Appeal 2008-005094
Application 10/138,119
Technology Center 2100
____________

Decided: February 23, 2010
____________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse, and enter a new ground of rejection under 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellants invented a method for editing a graphical user interface
(GUI) for an application. During execution of the application, a “toggle
widget”1 is provided to the user which, when pressed, places the GUI in an
editing mode. While in the editing mode, the user can change the location of
all widgets in the GUI. When the user presses the “toggle widget” again, the
GUI exits the editing mode which restores the normal functions of all
widgets in the GUI. See generally Abstract; Spec. 3-4. Claim 1 is
illustrative with key disputed limitations emphasized:
1. A method for modifying a graphical user interface
(GUI), said method comprising the steps of:

executing an application that presents a GUI during
execution, the GUI including a plurality of widgets associated
with the application upon execution of the application;

providing a toggle widget on the GUI presented by the
application during execution of the application presenting the
GUI, the toggle widget being provided on the GUI upon
execution of the application in addition to the widgets
associated with the application;

detecting pressing of the toggle widget during execution
of the application presenting the GUI;

if pressing of the toggle widget is detected during
execution of the application presenting the GUI, placing the
executing application in an editing mode that suspends normal
functions of all the widgets associated with the application;

1 “A toggle widget is a widget [a GUI element] which toggles between two
modes when the widget is pressed by a user. Examples of a toggle widget
are: a button, a pair of radio buttons and a switch.” Spec. 8:14-17.
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while the executing application is in the editing mode,
allowing modification of the location of all the widgets
associated with the application;

detecting pressing of the toggle widget while the
executing application is in the editing mode; and

if pressing of the toggle widget is detected while the
executing application is in the editing mode, exiting the editing
mode so that modification of the location of any of the widgets
associated with the application is no longer allowed and
restoring normal functions of all the widgets associated with the
application.

The Examiner relies on the following as evidence of unpatentability:
Henderson, Jr.
Shoji
US 5,533,183
US 6,031,527
July 2, 1996
Feb. 29, 2000

THE REJECTIONS
1. The Examiner rejected claims 1-3, 6, 8-10, 13, 14, 16-19, 22, and 23
under 35 U.S.C. § 102(b) as anticipated by Shoji. Ans. 3-9.2
2. The Examiner rejected claims 7 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Shoji. Ans. 10.
3. The Examiner rejected claims 4, 5, 11, 12, 20, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Shoji and Henderson. Ans. 10-12.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed December
18, 2006; (2) the Examiner’s Answer mailed December 11, 2007; and (3) the
Reply Brief filed February 19, 2008.
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THE ANTICIPATION REJECTION
Regarding representative claim 1, the Examiner finds that Shoji
discloses a method for modifying a graphical user interface (GUI) with all of
the claimed subject matter. Ans. 3-4. Specifically, the Examiner equates
Shoji’s buttons 466, 472, 406, and 412 in Figures 12 and 14 with the recited
“widgets.” Ans. 3. According to the Examiner, pressing a “widget” toggles
the application between (1) an “active” mode (i.e., normal execution), and
(2) an edit mode (i.e., an application execution enabling modification). Ans.
3, 4, 14-16.
Appellants argue that Shoji’s system enables changing an
application’s buttons during the application’s design—not its execution—and
therefore differs from the claimed invention which enables GUI
modification during execution. App. Br. 9-12; Reply Br. 2-6; emphases
added.
Appellants add that selecting toggle button in Shoji does not suspend
normal functions of all widgets associated with the application to enable
modification as claimed, but rather only enables modifying a particular
window associated with the toggle button (i.e., other windows and buttons
are unaffected by this selection). App. Br. 13-14; Reply Br. 7-9.
The issues before us, then, are as follows:

ISSUES
Under § 102, have Appellants shown that the Examiner erred in
rejecting claim 1 by finding that Shoji provides a “toggle widget” on a GUI
during application execution that, when pressed:
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(1) places the executing application in an editing mode that suspends
normal functions of all widgets associated with the application to enable
their modification, and
(2) exits the editing mode to restore normal functions of all widgets
associated with the application?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Shoji
1. Shoji’s system enables users to easily design their own applications
using program modules (“cells”) that have an associated display window,
and, when executed, can communicate with each other to perform desired
activities. Shoji, Abstract; col. 3, ll. 6-10.
2. Some cells can be switched into an edit mode to enable changing
the cells’ characteristics by entering information in an edit window. When
the edit mode is switched off, the cell returns to an executing mode where
the cell takes on a new behavior defined by the entered information. Shoji,
col. 6, ll. 11-21.
3. Figure 12 shows a window 400 representing a first visual cell
displayed on display screen 402 under the control of Microsoft Windows.
When the user clicks icon 406 in window 400, a sidebar 408 is displayed
containing icons allowing the user to add functionalities to the first visual
cell associated with window 400. Shoji, col. 17, ll. 51-58; Fig. 12.

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4. After the user clicks another icon in the sidebar, a symbol helps the
user place an icon 412 inside window 400 for representing a second visual
cell. A window 430 then appears allowing the user to define the
characteristics of the second visual cell. Shoji, col. 17, ll. 59-65; Figs.
12-13.
5. When a user clicks icon 412, a window 416 is opened to represent
one instance of the second visual cell. Clicking icon 412 again causes
another window 418 of the second visual cell to appear simultaneously with
window 416. Shoji, col. 18, ll. 56-64; Fig. 12.
6. Figure 14 shows a similar display with two different cells: (1) a
visual cell, and (2) a button cell represented by window 460. Clicking icon
466 in this window displays a side window 468 containing icons allowing
the user to add or remove buttons from window 460. Shoji, col. 19, ll. 16-
24; Fig. 14.
7. Clicking icon 470 in side window 468 causes a symbol to appear to
help the user place a button 472 at a desired position inside window 460.
The user can later click this new button to cause a sequence of user-defined
activities to occur. Shoji, col. 19, ll. 25-31; Fig. 14.
8. Clicking icon 474 in side window 468 opens window 500 allowing
the user to define the characteristics of button 472. As shown in Figure 15,
these characteristics include various “actions” in action window 504 and
“addition” window 506 (e.g., “EXECUTE VISUAL SAMPLE,” “execute
program,” “execute button,” “execute visual,” etc.). Shoji, col. 19, l. 34 –
col. 20, l. 1; Figs. 14-15.

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9. Side window 468 can be removed by clicking icon 466 which acts
as a toggle for displaying and removing side window 468. Removing this
side window changes window 460 from an edit mode (for allowing users to
add, modify, and remove buttons) to an active mode (for allows users to
invoke buttons in window 460). Shoji, col. 20, ll. 36-43; Fig. 14.
10. After side window 468 is removed, the user can click on button
472 to invoke its associated actions. Shoji, col. 20, ll. 43-46; Fig. 14.

Appellants’ Disclosure
11. “The term ‘widget,’ as used by those of ordinary skill in the art of
GUI programming, refers to any GUI element. Examples of a widget are: a
text field, a button, a pull-down menu, a scroll bar, a pane and a radio
button.” Spec. 8:10-13.
12. “A toggle widget is a widget which toggles between two modes
when the widget is pressed by a user. Examples of a toggle widget are: a
button, a pair of radio buttons and a switch.” Spec. 8:14-17.

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

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ANALYSIS
We begin by noting that it is undisputed that Shoji provides a “toggle
widget” on a GUI in Figure 14 that toggles between (1) an editing mode that
allows users to add, modify, and remove buttons, and (2) an active mode
allowing users to invoke buttons in window 460. FF 9. The Examiner
equates this “toggle widget” with Shoji’s icon 466 in window 460 which
toggles the display of side window 468 on and off. See Ans. 15-16; see also
FF 9. Not only does this interpretation comport with Appellants’ definition
of the term in the Specification (FF 11-12), Appellants even characterize
Shoji’s icon 466 as a “toggle widget.” See App. Br. 12 (referring to “toggle
widget” 466 in Shoji).
The dispute before us therefore hinges on whether Shoji’s ability to
modify the GUI occurs during execution of the application, and if so,
whether toggling the edit and active modes in Shoji suspends and restores
normal functions of all widgets associated with the application as claimed.
Although Shoji’s system enables users to design their own
applications (FF 1), it is nonetheless an application that executes to achieve
that end. The Examiner’s point in this regard (Ans. 14) is well taken, for
Shoji’s system does not exist in a vacuum, but rather results from some type
of application that interprets instructions in a computer system to achieve the
disclosed functionality—even in an edit mode. See FF 1-10.
In any event, Shoji expressly states that when the edit mode is
switched off, the cell returns to an executing mode where the cell assumes a
new behavior defined by the entered information. FF 2; emphasis added.

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The clear import of this discussion is that by returning to an executing
mode, the cell was originally in an executing mode before the edit mode was
invoked. See id.
We therefore find unavailing Appellants’ contention (App. Br. 9-12;
Reply Br. 2-6) that Shoji’s modification functionality occurs only during the
application’s design—not its execution. Not only does Shoji imply that the
user can interrupt an executing cell by entering the editing mode, nothing in
claim 1 precludes Shoji’s executing the design application itself to achieve
this functionality.
But we fail to see how toggling the edit and active modes in Shoji
suspends and restores normal functions of all widgets associated with the
application as claimed. We emphasize the word “all” since it is a crucial
qualifier that distinguishes the claim from Shoji.
As Appellants indicate (App. Br. 13-14; Reply Br. 7-9), Shoji only
enables modifying a particular window associated with the toggle button
(i.e., other windows and buttons are unaffected by this selection).
Various passages from Shoji confirm this point. As Shoji indicates,
when the edit mode is switched off, the cell returns to an executing mode
where the cell assumes a new behavior defined by the entered information.
FF 2; emphasis added. Notably, this passage says nothing about how the
edit mode affects the operation of other cells or associated “widgets” in the
application: it only pertains to one cell. See id.
Similar limitations exist in the embodiments of Figures 12 and 14. In
Figure 12, for example, when the user clicks icon 406 in window 400, a
sidebar 408 is displayed allowing the user to click an icon to add
functionalities to the first visual cell associated with window 400. FF 3.
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And clicking another icon in the sidebar assists in placing an icon inside the
window for representing and defining the characteristics of a second visual
cell. FF 4-5. But these passages are silent regarding suspending normal
functions of all widgets (i.e., GUI elements (FF 11)) associated with the
application in the editing mode, let alone restoring the functions of all
widgets when exiting the edit mode.
Likewise, in Figure 14, clicking icon 466 toggles the display of side
window 468 which changes window 460 from (1) an edit mode for allowing
users to add, modify, and remove buttons, to (2) an active mode allowing
users to invoke buttons in window 460. FF 9; emphases added. But apart
from describing how toggling icon 466 affects window 460, Shoji says
nothing about how this toggling affects all widgets associated with the
application (namely the widgets other than those associated with window
460), let alone suspending and resuming normal functions of these other
widgets as claimed.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1, and independent claims 8, 17, and 23 which recite
commensurate limitations. We also reverse the Examiner’s rejection of
dependent claims 2, 3, 6, 9, 10, 13, 14, 16, 18, 19, and 22 for similar reasons.

THE OBVIOUSNESS REJECTIONS
Since the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding the independent claims, we will not
sustain the obviousness rejections of claims 4, 5, 7, 11, 12, 15, 20, and 21
(Ans. 10-12) for similar reasons.

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NEW GROUND OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection. Claims 8-16 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.

FINDINGS OF FACT
13. “[T]he computer readable medium may comprise computer
readable information in a transitory state medium such as a network link
and/or a network interface, including a wired network or a wireless network,
that allow a computer to read such computer readable information.” Spec.
20:16-19.

PRINCIPLES OF LAW
Signals are not patentable subject matter under § 101. In re Nuijten,
500 F.3d 1346, 1355 (Fed. Cir. 2007).
According to U.S. Patent & Trademark Office (USPTO) guidelines,
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.

U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at
2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
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25_interim_101_instructions.pdf (emphasis in original) (“Interim
Instructions”).

ANALYSIS
Claim 8 recites a computer readable medium including computer
instructions for modifying a GUI. In the Specification, Appellants indicate
that the computer readable medium can be a “transitory state medium such
as a network link and/or a network interface, including a wired network or a
wireless network, that allow a computer to read such computer readable
information.” FF 13; emphasis added.
Interpreting independent claim 8 in light of the Specification, the
recited “computer-readable medium” encompasses transitory state media
that, by their very nature, includes signals. But signals are not patentable
subject matter under § 101. Nuijten, 500 F.3d at 1355.
Since independent claim 8 and dependent claims 9-16 include both
statutory subject matter and non-statutory subject matter (signals), these
claims are not patent-eligible under § 101. See Interim Instructions, at 2.

CONCLUSION
Appellants have shown that the Examiner erred in rejecting (1) claims
1-3, 6, 8-10, 13, 14, 16-19, 22, and 23 under § 102, and (2) claims 4, 5, 7,
11, 12, 15, 20, and 21 under § 103.
We enter a new ground of rejection of claims 8-16 under § 101.

ORDER
The Examiner’s decision rejecting claims 1-23 is reversed.
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This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) that provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request that the proceeding be reheard under § 41.52 by the
Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

pgc/nhl

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