Ex Parte Mody et alDownload PDFBoard of Patent Appeals and InterferencesJan 27, 201010680542 (B.P.A.I. Jan. 27, 2010) Copy Citation 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 ____________ 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. Appeal 2009-005171 Application 10/680,542 2 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. Appeal 2009-005171 Application 10/680,542 3 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). Appeal 2009-005171 Application 10/680,542 4 “[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 Appeal 2009-005171 Application 10/680,542 5 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 Appeal 2009-005171 Application 10/680,542 6 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. Appeal 2009-005171 Application 10/680,542 7 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). Appeal 2009-005171 Application 10/680,542 8 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 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO IL 60601-6731 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. Copy with citationCopy as parenthetical citation