Ex Parte Mercer

Patent Trial and Appeal Board

Apr 8, 2014

11945226 (P.T.A.B. Apr. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PAUL MERCER

__________

Appeal 2012-000322
Application 11/945,226
Technology Center 2100
__________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a system,
program product, and method for scrolling a document within a display area
of a display screen. The Examiner rejected the claims as indefinite, as
anticipated, and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Hewlett-Packard
Development Company, L.P. (see App. Br. 1).
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Application 11/945,226

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Statement of the Case
Background
“The present invention relates to scrolling operations in a user
interface, and more particularly to techniques for enhancing visual
continuity by displaying a visual context indicator during a scrolling
operation” (Spec. 1 ¶ 0001).
The Claims
Claims 1 and 3-24 are on appeal. Claims 1 and 10 are representative
and read as follows (emphasis added):
1. A method for scrolling a document within a display
area of a display screen, comprising the steps of:
a) displaying content from a first portion of the
document within the display area of the display
screen; and
b) subsequent to step a):
b.1) scrolling the document on the display
screen to display content from a second
portion of the document within the
display area of the display screen; and
b.2) responsive to the displayed content from
the second portion comprising any of the
content displayed in step a) and any
content not displayed in step a),
displaying a visual indicator on the
display screen to differentiate the content
displayed in step a) from the content not
displayed in step a).

10. The method of claim 1, wherein displaying the visual
indicator comprises displaying the content from the second
portion that was displayed in step a) with a first style and
displaying the content from the second portion that was not
displayed in step a) with a second style.
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Application 11/945,226

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The issues
A. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 112,
second paragraph, as indefinite (Ans. 5).
B. The Examiner rejected claims 1, 3, 4, 13, 18, and 21-24 under 35
U.S.C. § 102(e) as anticipated by Applicant Admitted Prior Art (Ans. 6-7).
C. The Examiner rejected claims 5-12 and 20 under 35 U.S.C. § 103(a)
as obvious over Applicant Admitted Prior Art and Peters2 (Ans. 7-9).
D. The Examiner rejected claims 14-17 and 19 under 35 U.S.C. § 103(a)
as obvious over Applicant Admitted Prior Art and Chellapilla3 (Ans. 9-10).
A. 35 U.S.C. § 112, second paragraph
The Examiner finds that
Regarding claim 10, in the specification of the present
application, a boldface style versus normal style is disclosed
for visual indicator application. However, none of the
disclosure refers to display an entire portion of a document
in one style (supposedly boldface style) and another portion
of the document in another style (supposedly normal style).

(Ans. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that claims 10 and 11 are indefinite?
Principles of Law
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claims when read in light of the specification.”

2 Peters, J., US 2007/0143705 A1, published Jun. 21, 2007.
3 Chellapilla et al., US 7,305,129 B2, issued Dec. 4, 2007.
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Application 11/945,226

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Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir.
1993).
The fact that a claim is broad does not mean it is indefinite. In re
Johnson, 558 F.2d 1008, 1016 n. 17 (CCPA 1977). Even “undue breadth is
not indefiniteness”. Id.
Analysis
The Examiner does not identify any element of either claim 10 or 11
which is unclear, indefinite, or which would not have been understood by
the person of ordinary skill in the art. Instead, the Examiner discusses the
absence of disclosure, which might suggest an issue of descriptive support
under 35 U.S.C. § 112, first paragraph, but is not an issue of definiteness
under 35 U.S.C. § 112, second paragraph.
In the Examiner’s response to argument, the Examiner finds that
“neither paragraph [0055] nor [0056] describes how and when the display
(font) style change is taking place during a continuous scrolling by an end
user” and relies upon “In re Katz, 687 F.2d 450 (Fed. Cir. 2011)”4 for
support (Ans. 11). However, the passages quoted from Katz are focused on
“means plus function” claims, which require structural support in the
Specification, not a “displaying” type claim. In re Katz Interactive Call
Processing Litigation, 639 F.3d 1303, 1315 (Fed. Cir. 2011). When
discussing claim terms such as the “displaying” function of claim 10, Katz
states that “[a]bsent a possible narrower construction of the terms

4 The Examiner cites “In re Katz, 687 F.2d 450 (Fed. Cir. 2011)”,
but the correct citation appears to be In re Katz Interactive Call
Processing Litigation, 639 F.3d 1303, 1315 (Fed. Cir. 2011).
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‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can
be achieved by any general purpose computer without special programming.
As such, it was not necessary to disclose more structure than the general
purpose processor that performs those functions.” Id. at 1316.
We find that claims 10 and 11 are clear and definite. We further note
that Appellant, in the Appeal Brief, identifies reasonable descriptive support
for claims 10 and 11 (see App Br. 8-10).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that claims 10 and 11 are indefinite.
B. 35 U.S.C. § 102(e) over Applicant Admitted Prior Art
The Examiner finds that the Applicant Admitted Prior Art teaches:
“displaying content from a first portion of the document
within the display area of the display screen” shown in p.1
[0002]; “scrolling the document on the display screen to
display content from a second portion of the document
within the display area of the display screen” shown in p.1
[0002]; “responsive to the displayed content from the
second portion comprising any of the content displayed in
step a) and any content not displayed in step a)” shown in
p.1 [0005] & [0006]; “displaying a visual indicator on the
display screen to differentiate the content displayed in step 1
[sic, a]) from the content not displayed in step a)” shown in
p.1 [0009].

(Ans. 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Applicant Admitted Prior Art
anticipates claim 1?
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Findings of Fact
1. The Specification teaches that:
It is well known to provide scrolling functionality in a user
interface, so as to facilitate the display of documents that are
too large to be effectively presented on a display device or
within a particular window on a display device. Typically, a
portion of the document is shown within a display area such
as a window. The user inputs a command to cause the
display to change so that a different portion of the document
is displayed. The user can input the command by
manipulating a scrollbar or by any known input means, such
as for example, a menu command, keyboard command, or
the like. Scrolling can take place in one dimension (such as
vertical scrolling in a text document), or in two dimensions
(such as horizontal and vertical scrolling for an image
document).

(Spec. 1 ¶ 0002).
2. The Specification teaches that:
Scrolling may also be implemented on a fixed-increment
basis, such as line-by-line, page-by-page, or the like. Page-
by-page scrolling is commonly implemented using “page
up” and “page down” keys. In scrolling operations, “page-
by-page” typically refers to scrolling by approximately a
screen’s worth of displayed content, which does not
necessarily correspond to an actual page of printed output.
Thus, scrolling down by one page causes the last line of the
currently displayed portion to move to the top of the display
area. In some applications, when the bottom of the
document is reached, a scrolling down by one page causes a
partial page-down scroll, so that the last line of the
document moves to the bottom of the display area.

(Spec. 2-3 ¶ 0005).
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3. The Specification teaches that:
Conversely, scrolling up by one page causes the first line of
the currently displayed portion to move to the bottom of the
display area. In some applications, when the top of the
document is reached, a scrolling up by one page causes a
partial page-up scroll, so that the first line of the document
moves to the bottom [sic, top?] of the display area.

(Spec. 3 ¶ 0006).
4. The Specification teaches that:
Various visual indicators have been devised in an attempt to
provide users with an indication as to the position, or
context, of the displayed portion within the document. One
common device is a position controller and indicator (often
referred to as a “thumb”) within a scroll bar. However, such
indicators are typically limited to providing a static and
indirect indication of the current scroll position within a
document, rather than an indication of the effect of the most
recent scrolling operation on the displayed content itself.
Furthermore, such indicators are typically provided in a
border area of a screen or window, where the user may not
notice them.

(Spec. 4 ¶ 0009).
5. The Specification teaches:
a visual indicator to distinguish between newly displayed
content and previously displayed content during and/or after
a scrolling operation. The newly displayed content is
displayed in a different format, or with a different
background, or with some other visual indication, as
compared with content that was previously displayed and is
still displayed after the scrolling operation.

(Spec. 5 ¶ 0012).
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6. Figures 2A-B and 4A-B are reproduced below:

“Figs. 2A through 2C depict an example of a page-by-page scrolling
operation for a text document, according to the prior art. . . . Figs. 4A
through 4F depict an example of a scrolling operation wherein
visual context is displayed by background highlighting” (Spec. 7 ¶¶ 0017,
0019).
Principles of Law
Anticipation under 35 U.S.C. § 102(a) requires that “each and every
element as set forth in the claim is found, either expressly or inherently
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described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
Analysis
The description of related art portion of the Specification certainly
teaches a method of scrolling, including the steps of displaying content from
a first portion of a document on a display screen and scrolling the document
to display content from a second portion of the document on the display
screen (FF 1-3). This description of related art portion also discusses visual
indicators such as a “thumb” which may be displayed on a display screen
(FF 4).
However, we are not persuaded by the Examiner’s finding that the
description of related art teaches a visual indicator which functions to
“differentiate the content displayed in step a) from the content not displayed
in step a)” as required by claim 1. The only specific visual indicator
described in the description of related art portion of the Specification is the
“thumb” or indicator 104, but this indicator 104 does not differentiate the
content displayed in step a) from the content not displayed in step a) in any
way.
A “visual indicator”, interpreted in light of the Specification, clearly
requires distinguishing “between newly displayed content and previously
displayed content” (Spec. 5 ¶ 0012; FF 5). That the prior art indicator 104
fails to differentiate the content is evident when comparing Figures 2A-B,
identified as prior art, with Figures 4A-B, an embodiment of the claimed
invention (FF 5). While the location of indicator 104 differs between Figure
2A and Figure 2B, the newly displayed content itself is not differentiated or
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distinguished. By comparison, the shading in Figure 4B clearly
differentiates the content displayed in Figure 4A from the newly displayed
content displayed in Figure 4B, as required by claim 1.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Applicant Admitted Prior Art anticipates claim 1.
C-D. 35 U.S.C. § 103(a)
These rejections rely upon the underlying anticipation rejection over
Applicant Admitted Prior Art. Having reversed the anticipation rejection,
we necessarily reverse the obviousness rejections further including Peters
and Chellapilla, since the Examiner does not rely upon these references to
teach the content differentiation required by claim 1.
SUMMARY
In summary, we reverse the rejection of claims 10 and 11 under 35
U.S.C. § 112, second paragraph, as indefinite.
We reverse the rejection of claims 1, 3, 4, 13, 18, and 21-24 under 35
U.S.C. § 102(e) as anticipated by Applicant Admitted Prior Art.
We reverse the rejection of claims 5-12 and 20 under 35 U.S.C.
§ 103(a) as obvious over Applicant Admitted Prior Art and Peters.
We reverse the rejection of claims 14-17 and 19 under 35 U.S.C.
§ 103(a) as obvious over Applicant Admitted Prior Art and Chellapilla.

REVERSED

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