Ex Parte McLean et al

Patent Trial and Appeal Board

Mar 28, 2013

11560224 (P.T.A.B. Mar. 28, 2013)

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.
11/560,224 11/15/2006 James G. McLean RPS920060178US1 5398
63638 7590 03/28/2013
STREETS & STEELE - IBM CORPORATION
13100 WORTHAM CENTER DRIVE, SUITE 245
HOUSTON, TX 77065
EXAMINER
HOPE, DARRIN
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
03/28/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES G. MCLEAN and WILLIAM G. PAGAN
____________

Appeal 2011-000993
Application 11/560,224
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-8, and 10-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention blocks a selected “user interface (UI)”
component from being displayed on a shared workspace. Spec., ¶ 7.
Appellants describe the “UI components” as including for example: “an
application, a window of the application; a document of the application,
parent and child documents of an application, a button, a field, a text area, a
window frame, a dialog box, a menu, a menu item, a subframe, a desktop
display, any desired item separately renderable on the UI 130.” Spec., ¶ 22.
Independent claim 1 is illustrative:
1. A method for controlling security of a user interface
(UI) in a computer system, the method comprising:
allowing a user to selectively mark UI components as
private, the UI components being separately renderable on the
UI;
displaying the UI components on a secure portion of the
UI regardless of their privacy;
rendering a shared workspace such that the UI
components marked as private are blocked from display on the
shared workspace; and
wherein the privacy and attendant blocking of display on
the shared workspace follows the individual UI components
marked as private.
The Examiner relies on the following references as evidence of
unpatentability:
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Smith US 5,107,443 Apr. 21, 1992
Ben-Shachar US 2003/0189601 A1 Oct. 9, 2003

REJECTION
The Examiner rejected claims 1, 2, 4-8, and 10-20 under 35 U.S.C.
§ 103(a) as unpatentable over Smith and Ben-Shachar. Ans., pp. 3-14.1

ANALYSIS
Claim 1 stands rejected as obvious over Smith and Ben-Shachar. The
Examiner found that Smith teaches all but the claimed “follows” feature –
“wherein the privacy and attendant blocking of display on the shared
workspace follows the individual UI components marked as private.” Ans.,
p. 5. The Examiner found that this feature is taught by Ben-Shachar and, in
turn, determined that it would have been obvious to add this feature to
Smith’s system so as to likewise “allow sharing of UI components on a
component basis.” Id. We agree with the Examiner for the reasons below.
Smith teaches a display space mechanism for blocking UI components
from a shared workspace. Smith, abstract. That is, “[t]o make a component
temporarily private, the user need only make a [display] region private that
contains that component or move the component into a private region.”
Smith, col. 4, ll. 39-42. “The private region’s contents are displayed only to
users that have visual access.” Smith, abstract. Smith thereby teaches the
claimed “secure portion” of a UI – where UI components are displayed
“regardless of their privacy” – because the display view of Smith’s

1 Throughout this opinion, we refer to the Appeal Brief filed April 20, 2010
(“App. Br.”) and the Examiner’s Answer mailed July 8, 2010 (“Ans.”).
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controlling user includes the contents of both the private region and shared
workspace. Smith also thereby teaches the claimed shared workspace of a
UI – where “UI components marked as private are blocked from display” –
because the shared display view of Smiths’ controlling user and sharing
users does not include the contents of the private region.
Ben-Shachar teaches a checklist mechanism for blocking UI
components from a shared workspace. Ben-Shachar, abstract. That is, the
user creates “a window list describing the shared and unshared status of
various windows.” Ben-Shachar, abstract; see also ¶¶ 8 and 40-41. Ben-
Shachar thereby teaches the claimed “follows” feature – note above –
because a UI component’s privacy status is not dictated by its display
position.
The proposed combination of Smith and Ben-Shachar merely
aggregates their mechanisms within one device, and merely such that the
controlling user can mark a UI component as private via either a private
region as in Smith or a checklist as in Ben-Shachar. The combination is,
therefore, a predictable use of prior art elements according to their
established functions. When an invention “simply arranges old elements
with each performing the same function it had been known to perform and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (citation and internal quotation marks omitted).
Appellants argue that Smith’s mechanism does not “mark” a UI
component as private, but is “quite differently directed to establishing and
operating private regions within a shared workspace.” App. Br., p. 9. We
disagree in light of the ordinary meaning of “mark.” The noun “mark”
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encompasses a distinguishing feature. See Random House Webster’s
Unabridged Dictionary 1177 (2d ed. 2001) (defining “mark” as “a
distinguishing feature of: a day marked by rain”). The verb “mark”
encompasses an act of differentiating. See id. (also defining “mark” as “to
single out; destine …: to be marked out for promotion”). Given these
ordinary usages, a broadest reasonable interpretation of “mark” encompasses
a mere act of identifying a UI component as private. This meaning is not
disclaimed by Appellant’s Specification, which rather states that a UI
component may for example be “marked” by changing an attribute of the
component. Spec., ¶ 27. Note also that, in any event, Ben-Shachar’s
mechanism indisputably marks a UI component in the manner claimed.
Appellants also argue that it would be “unnecessary” and
“ambiguous” for Smith’s system to include Ben-Shachar’s mechanism
“because Smith teaches that it is the privacy of the region around the
component that controls privacy of the component itself.” App. Br., pp.
9-10. Appellants add that “whether documents or windows are marked as
shared or unshared (per Ben-Shachar) is moot, because the display or non-
display of such objects would already be controlled (per Smith) according to
whether a region is made private.” Id. at 10-11. We disagree. Though
Smith’s and Ben-Shachar’s mechanisms have the same function, i.e.,
blocking UI components from a shared workspace, the mechanisms’
implementations and advantages are different enough to merit inclusion
within a single device. Furthermore, even assuming arguendo that the
mechanisms are incompatible as disclosed, the test for obviousness does not
preclude combining them with common sense adaptations. See KSR, 550
U.S. at 417 (“A person of ordinary skill is also a person of ordinary
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creativity [.]”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated[.]”). For example, it would be common sense to
configure the modified device such that Ben-Shachar’s privacy mark
overrides Smith’s shared workspace; that is, such that the user may
permanently mark a UI component as private regardless of its display
position (Ben-Shachar) or temporarily mark a UI component as private via
its display position (Smith).
For the foregoing reasons, we sustain the obviousness rejection of
claim 1 over Smith and Ben-Shachar. As Appellants do not present separate
arguments for independent claims 1 and 7 (App. Br., p. 8) nor any arguments
for their dependent claims, we also sustain the obvious rejection of claims 2,
4-8, and 10-12 over Smith and Ben-Shachar.
Though Appellants present separate arguments for independent claims
13 and 20 (id. at 11), Appellants do not present separate bases of
patentability for claims 13 and 20 nor any arguments for their dependent
claims. Accordingly, for the foregoing reasons, we also sustain the obvious
rejection of claims 13-18 and 20 over Smith and Ben-Shachar.2
ORDER

2 If Appellants view the repeated arguments as differing amongst claims,
then the difference should be meaningfully explained and supported.
Otherwise, Appellants fail to address – and we likewise will not attempt to
address – how the separately argued claims respectively distinguish over the
prior art. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (affirming in
part because appellant “merely argued that the claims differed from [the
prior art], and chose not to proffer a serious explanation of this difference.”);
In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not
the function of this court to examine the claims in greater detail than argued
by an appellant[.]”).
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For the above reasons, the Examiner’s decision rejecting claims 1-2,
4-8, and 10-20 is affirmed.
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

Vsh