Ex Parte Mody et al

Board of Patent Appeals and Interferences

Jan 27, 2010

10680542 (B.P.A.I. Jan. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RASHESH C. MODY and GURUPRASAD Y.P. RAO
____________

Appeal 2009-005171
Application 10/680,542
Technology Center 2100
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Decided: January 27, 2010
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal1 under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-18, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Oral hearing held December 9, 2009.
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Invention
Appellants’ invention relates to a tablet PC having industrial/
manufacturing process control and data management applications. Abstract.

Representative Claim
1. A tablet personal computer system and software
facilitating performing a variety of design, supervisory and/or data
management tasks associated with industrial processes including:
a human-machine interface, including a touch-sensitive display
region, integrated into a tablet personal computer;
a wireless communication resource; and
a set of one or more application programs relating to
supervisory control of industrial processes, wherein the application
programs interact with a user via a set of tablet PC interface services
associated with the human-machine interface.

Prior Art
ViewSonic Corp., ViewPad 1000 Tablet PC User Guide, Document
No. A-CD-ViewPad 1000-1 (2001) (“ViewSonic”).

Wonderware Corp., Factory Suite InTouch User Guide, Revision E,
(June 2001) (“Wonderware”).

Examiner’s Rejections
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over ViewSonic and Wonderware.

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Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1 and dependent claim 5. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
We refer to, and rely on, the Examiner’s findings set out in the
Answer.

PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966).
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“[W]hen a patent ‘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) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
The Examiner offers the teachings of ViewSonic (a touch-screen
tablet personal computer) and Wonderware (application software for
industrial processes) as evidence of the prima facie obviousness of the
subject matter of instant claim 1.
As noted by the Examiner, Appellants admit that tablet PCs such as
that described by ViewSonic were known at the time of invention. App. Br.
5. Appellants further admit that the applications described by Wonderware
could run on such a tablet PC system. Id. Appellants’ position is consistent
with the Specification (e.g., at 8:24 et seq.), which describes using the
Wonderware industrial process applications on a tablet PC.
Appellants argue, however, that the prior art tablet PC applications as
described by ViewSonic did not include the claimed “services” that would
enable the user to exploit the tablet PC user interface’s electronic pen or
stylus. According to Appellants, these claimed “services” are what are
absent from the teachings of the prior art. App. Br. 7.
A “human-machine interface,” according to claim 1, includes a touch-
sensitive display region integrated into a tablet personal computer. With
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respect to the claimed “services,” the claim recites a set of one or more (e.g.,
one) application program(s) relating to supervisory control of industrial
processes, “wherein the application programs interact with a user via a set of
tablet PC interface services associated with the human-machine interface.”
The Examiner, at pages 15 through 19 of the Answer, compares
Appellants’ disclosed “services” with the teachings of ViewSonic, while
noting that the details of disclosed embodiments are not to be read into claim
1. The Examiner finds that ViewSonic’s “PenOffice® for Windows®”
teaches the set of tablet PC interface services by which application programs
interact with a user.
PenOffice® adds a natural handwriting recognition capability to
your ViewPadTM 1000 that works for all handwriting styles --
cursive, print, or mixed.

PenOffice® for Windows® gives you the freedom to enter
information into applications quickly and efficiently. Pen
strokes written in any application window are analyzed by
PenOffice®. Employing advanced fuzzy logic and neural-net
techniques, PenOffice® recognizes arbitrary alphanumeric
strings as well as words from its integrated dictionary then
converts them into text. The text is then sent to a target
application.

ViewSonic at 31 (emphasis added).
ViewSonic further teaches that, in a “Recognition” mode, PenOffice®
can recognize a user’s drawing on the screen as handwriting, interpret it, and
send the result to the active application window (the window in which the
text cursor is currently located). Id. at 32. ViewSonic also describes the
“MS Word MarkUp mode,” which is available only when the word
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processing program is running as a foreground application, enabling a user
to mark up a document. Id.
Appellants respond that ViewSonic’s PenOffice® is a “standalone”
application, while the claimed “tablet PC interface services” are
“incorporated into the application program,” referring to the Specification at
page 8, lines 8 through 10. Reply Br. 3; id. at 4.
As the Examiner indicates, however, instant claim 1 does not recite or
require that the “interface services” are incorporated into any of the
“application programs.” Moreover, the Specification at page 8, lines 8
through 10 states that the common services 220 “can be” incorporated into a
set of applications, but the services are otherwise described (e.g., Fig. 2) as
separate from the application programs 230.
Appellants also allege that PenOffice® is not a “service” as “that term
is defined by Appellants’ specification” (Reply Br. 4, 2nd full para.), but do
not allege what that definition may be. Appellants’ position appears to be
that the “claimed tablet PC interfaces” are “incorporated into the application
programs themselves,” and go so far as to argue that the services “are recited
in claim 1 within the ‘set of one or more application programs’ element.”
Id.
Appellants chose to set forth the invention of claim 1 by placing the
“services” within a “wherein” clause that modifies the “applications
programs” such that the program(s) interact with a user via a set of tablet PC
interface services. In view of the required broadest reasonable interpretation
of claim 1, we disagree with Appellants to the extent of any requirement that
the services be part of, or incorporated into, one or more of the application
programs.
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Appellants also offer a “no motivation to combine” heading in the
Reply Brief (at 5), but the argument in support of the allegation is, again,
that the claimed “services” are absent from the teachings of the prior art.2
We are therefore not persuaded that the Examiner erred in finding that
ViewSonic teaches a set of tablet PC interface services within the
requirements of instant claim 1. To the extent that Appellants may be
arguing to the contrary, we are also not persuaded that the ordinary artisan
would not have been motivated to, and capable of, using application
programs as described by Wonderware in a tablet PC as described by
ViewSonic, for reasons that include facilitating the entry of data by users
into the prior art programs described by Wonderware. Moreover, placing
prior art application programs on a prior art tablet PC appears to represent no
more than the predictable use of prior art elements according to their
established functions, and thus would seem to have been prima facie obvious
to the ordinarily skilled artisan, even without a showing of motivation to
combine. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. at 417.
In defense of dependent claim 5, Appellants submit (App. Br. 9) that
the teachings of the applied prior art do not include the claimed
“Annotation” functionality for capturing and annotating a view on a tablet
PC’s graphical interface.
The Examiner specifies where ViewSonic teaches the “annotation
functionality” of claim 5. Ans. 6-7. Appellants respond with general

2 Although providing the “no motivation to combine” heading, Appellants
do not address the Examiner’s extensive and specific findings in support of
the combination (Ans. 4-5).
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allegations (Reply Br. 6), rather than addressing the specific findings by the
Examiner. We are thus not persuaded of error in the rejection of claim 5.3
We have considered all of Appellants’ arguments in the briefs, but do
not find them persuasive of error in the Examiner’s rejection. We sustain
the rejection of claims 1-18 under 35 U.S.C. § 103(a).

DECISION
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over ViewSonic and Wonderware 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

msc

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3 Although dependent claims 10 and 16 are listed with claim 5 in the Appeal
Brief, they are not separately argued. In any event, the Answer also sets
forth where the features of claims 10 and 16 are taught by the applied prior
art. Appellants provide no specific response to the findings.