Ex Parte Meserth et al

Board of Patent Appeals and Interferences

Apr 26, 2011

10075861 (B.P.A.I. Apr. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY ANDREAS MESERTH and
HEATHER N. STERLING
____________

Appeal 2011-001316
Application 10/075,861
Technology Center 2100
____________

Before: JOSEPH L. DIXON, ST. JOHN COURTENAY, and
THU A. DANG, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-21. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

A. INVENTION
Appellants invented a system and method for controlling real-time
display with a user positionable icon. (Spec. 1). An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below.

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.

1. A method of representing real time data in a
graphical format on a display of a data processing system,
comprising:

providing a user positionable icon as a portion of the display;

determining the position of the icon; and

refreshing the graphical representation responsive to receiving a
new data point, wherein the position of the icon determines how
much historical data is retained in the refreshed display.

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C. REFERENCES
The Examiner relies on the following references as evidence:

Takahashi US 5,999,162 Dec. 7, 1999
Venolia US 2008/020447 7 Aug. 28, 2008

D. REJECTION
Claims 1- 21 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Takahashi and further in view of Venolia.

II. ISSUE
Has the Examiner set forth a sufficient showing of obviousness
of independent claim 1? Specifically, does the combination of
Takahashi and Venolia teach or fairly suggest the claimed "providing
a user positionable icon as a portion of the display; determining the
position of the icon; and refreshing the graphical representation
responsive to receiving a new data point, wherein the position of the
icon determines how much historical data is retained in the refreshed
display"?
III. PRINCIPLES OF LAW
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
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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
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, 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., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

IV. ANALYSIS
From our review of the showing in the Answer at pages 3-10, we
adopt the Examiner's findings of fact and responses to Appellants' arguments
as our own.
Appellants argue independent claims 1, 8, and 15 as a group, and we
select independent claim 1 as the representative claim for all the claims at
issue. (App. Br. 5).
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Appellants contend at pages 5-8 in the Appeal Brief that the Decision
the Board in Appeal No. 2008-2296, mailed November 19, 2008, is res
judicata with respect to various elements of the claimed invention.
Appellants cite no authority for this contention and are informal with the
citations to the record, and further combine various quotations from the
Decision with their own contentions. We find Appellants' arguments are
unpersuasive with respect to the holding of our prior Decision.
We previously held that the combination did not teach or suggest the
claimed invention and that Takahashi did not teach the use of an icon. Here,
the Examiner has set forth a different combination of teachings and has
relied upon the teachings of Venolia to teach or suggest the use of an icon on
a graphical user interface which allows a user to vary the amount of
historical data included on the display. The Examiner stated "[i]n the same
field of the invention, Venolia teaches a graphical display with data
adjustment similar to that of Takahashi et al. In addition, Venolia further
teaches the user positionable icon as a portion of the display." (Ans. 4). We
agree with the Examiner's finding.
As we stated in our prior Decision, "the end result of moving the
graphical representation when refreshed to retain a predetermined amount of
historical data is similar between Takahashi and the claimed invention, it is
the manner in which the claimed invention achieves the end result which is
being specifically claimed." (Decision 5). Takahashi teaches the basic
claimed invention, but does not identify an interface for the user to set the
amount of historical data to be displayed. The Examiner remedied that
deficiency in the present combination with the teachings of Venolia which
teach the well-known use of a graphical user interface using icons to set
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various quantities. Since the use of icons on a graphical user interface are
taught and suggested in the prior art, we agree it would have been obvious to
one of ordinary skill in the art to apply that type of interface to the basic
methodology and end result display of Takahashi for the same reasons
proffered by the Examiner.
Appellants argue that the display of Venolia is not a graphical display
of real-time data and there is no disclosure that the display is refreshed
responsive to receiving a new data point. (App. Br. 9). The Examiner has
relied upon the teachings of Takahashi to show these claimed features for
the type of data. (Ans. 3). Therefore, Appellants' argument does not show
error in the Examiner's showing of obviousness.
Consistent with KSR, the Federal Circuit recognized that “[a]n
obviousness determination is not the result of a rigid formula disassociated
from the consideration of the facts of a case. Indeed, the common sense of
those skilled in the art demonstrates why some combinations would have
been obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
416). The Federal Circuit relied in part on the fact that Leapfrog had
presented no evidence that the proposed modification was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162.
Similarly, the Federal Circuit recently found that adapting existing
electronic processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the
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known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
2008) (quoting KSR, 550 U.S. at 421).
Appellants have provided no persuasive evidence on this record
establishing that these improvements would have been beyond the level of
skilled artisans. See id. (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”); Muniauction, 532
F.3d at 1327; Leapfrog, 485 F.3d at 1162.
Appellants also argue that paragraphs [0047] and [0081] do not teach
or suggest "the position of any icon determining, upon receiving a new data
point, how much historical (real time) data is retained on a graphical
representation of real time data that is refreshed responsive to receipt of a
new (real-time) data point" (App. Br. 9). While we agree with Appellants
that the totality of the argument is not taught by Venolia, the Examiner did
not rely upon the teachings of Venolia for all the argued limitations. In the
Examiner's proffered rejection Takahashi teaches a user adjustable value for
the amount of historical data displayed (wind-up position) and Venolia
teaches a well-known graphical user interface with an icon for the user to
adjust the value as shown by the changes in scale for historical value in
Venolia. Therefore, we do not find Appellants' argument persuasive of error
in the Examiner’s showing of obviousness regarding independent claim 1.
Therefore, we will sustain the rejection of independent claim 1. Appellants
have not set forth separate arguments for the patentability of dependent
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claims 2-7 and independent claims 8 and 15 and their respective dependent
claims. Therefore, these claims fall with independent claim 1.

V. CONCLUSION
For the aforementioned reasons, the Appellants have not shown that
the Examiner erred in rejecting independent claim 1 over the combination of
Takahashi and Venolia.

VI. ORDER
We affirm the obviousness rejection of claims 1-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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