Ex Parte Nicholson et al

Patent Trial and Appeal Board

Jul 18, 2018

13039365 (P.T.A.B. Jul. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/039,365 03/03/2011
58127 7590 07/18/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
John W. Nicholson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RPS920110010USNP(710.158) 1750
EXAMINER
DISTEFANO, GREGORY A
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
07/18/2018 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 JOHN W. NICHOLSON and PHILIP J. JAKES
Appeal2017-001585
Application 13/039,365 1
Technology Center 2100
Before JEAN R. HOMERE, JOHN A. EV ANS, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1---6, 8-16, and 18-20. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
The invention is directed to taskbar grouping by user task. Abstract.
Claim 1 is illustrative of the invention and is reproduced below:
1. A method comprising:
identifying a plurality of applications open on a
computing device;
1 According to Appellants, the real party in interest is Lenovo (Singapore)
PTE. LTD. App. Br. 3.
2 Claims 7 and 17 have been canceled. App. Br. 19-20.
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Application 13/039,365
identifying one or more files open in said plurality of
applications;
determining one or more objective measures of said one
or more files belonging to a particular task; and
automatically grouping, without user intervention, files
sharing one or more objective measures of belonging to a
particular task together in a common taskbar icon of a display,
wherein said one or more files are open in different applications
of said plurality of applications.
REJECTIONS AT ISSUE3
Claims 1-3, 8, 9, 11-13, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Haug (US 7,882,448
B2; issued Feb. 1, 2011) and Adams et al. (US 5,796,403; issued Aug. 18,
1998) (hereinafter, "Adams"). Final Act. 4--12. 4
Claims 4--6 and 14--16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Haug, Adams, and Sahni et al.
3 In the event of further prosecution, the Examiner should consider
evaluating claim 20 in light of 35 U.S.C. § 101 and Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential). We note that Appellants'
Specification specifically states "[t]he non-signal computer readable medium
may be a computer readable storage medium." Spec. ,r 34 (emphasis
added). "May" is a non-limiting term in this context. Therefore, the
broadest reasonable construction of claim 20 in light of the Specification
encompasses a transitory signal.
4 The Examiner states claims 1, 7-11, and 17-20 in the rejection heading
and includes claims 7 and 17 in the body of the rejection. Final Act. 4, 6, 9-
10. And Appellants state "[c]laims 1-3, 7-13, and 17-20 stand rejected."
App. Br. 10. However, claims 7 and 17 have been cancelled. Id. at 19-20.
We, therefore, interpret the Examiner and Appellants' statement as Claims
1-3, 8, 9, 11-13, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Haug and Adams.
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Application 13/039,365
(US 2010/0023506 Al; published Jan. 28, 2010) (hereinafter, "Sahni").
Final Act. 12-16.
Claims 10 and 19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Haug, Adams, and Stoakley5 et al. (US
2001/0035882 Al; published Nov. 1, 2001) (hereinafter, "Stoakley"). Final
Act. 16-18.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
Rejection of Claims 1, 8--11, and 18--20 under 35 U.S.C. § 103(a)
The Examiner finds Haug suggests automatically grouping open
applications together in a taskbar, which the Examiner maps to the limitation
"automatically grouping, without user intervention, files sharing one or more
objective measures of belonging to a particular task together in a common
taskbar icon of a display" as recited in claim 1 ( and similarly recited in
claims 11 and 20). Ans. 4 (citing Haug, 4:7-32). The Examiner finds
Adams teaches grouping together a plurality of windows that are open,
which the Examiner maps to the limitation "one or more files are open in
different applications of said plurality of applications." Ans. 5 ( citing
Adams, 7:6-24, 10:10-20, Fig. 7A).
5 The Examiner refers to this reference as Haug. Final Act. 16-18.
However, the publication number corresponds to Stoakley. We, therefore,
interpret the Examiner's reference as Stoakley rather than Haug.
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Application 13/039,365
Appellants argue neither Haug nor Adams teaches "automatic
grouping, without user intervention" as recited in claim 1 ( and similarly
recited in claims 11 and 20) because Haug teaches allowing operators to
intervene and Adams teaches automatic window replacement. App. Br. 11-
12. Appellants argue Adams' window replacement teaches away from
Haug's operators organizing and label taskbar groups. Id. at 12-13.
Moreover, Appellants argue the Examiner improperly changed their
rejection in the Answer without labeling it as a new ground of rejection.
Reply Br. 12. And Appellants argue the Examiner's new ground still
demonstrates Haug fails to teach "without user intervention" because Haug
permits operator intervention. Id. at 13-14 (citing Haug, 4:7-32, 3:60-61).
We disagree with Appellants.
Initially, we note the issue of whether an Examiner raises a new
ground of rejection for the first time in an Answer, by citing to a new
interpretation of Haug that the Examiner previously stipulated was not
taught in Haug, is a petitionable matter and not an appealable matter. See
37 C.F.R. §4I.40(a); compare Ans. 4 (citing Haug, 4:7-32) with Final Act.
5. Appellants failed to file timely such a petition and, therefore, have
waived the argument that the rejection must be designated as a new ground
of rejection. See 37 C.F.R. §4I.40(a).
Regarding Appellants' argument that Haug fails to teach "without
user intervention" because Haug permits operator intervention (Reply Br.
13-14 (citing Haug, 4:7-32, 3:60-61)), we disagree because Haug teaches
the results are generated, then the operator intervenes (see Haug, 4:7-32). In
other words, Haug's automatic grouping is performed without user
intervention, then after the results of the automatic grouping are obtained,
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the operator is prompted to accept or reject the operation. See Haug, 4:7-32.
We find that this is similar to Appellants' Specification, which discloses user
intervention before and after the automatic grouping. Spec. ,r 24.
Significantly, Appellants also refer to paragraph 24 as providing written
description support for the limitation "without user intervention" recited in
claim 1. App. Br. 5 (citing Spec. ,r 24).
Accordingly, Haug's automatically grouping open applications
together in a taskbar suggests the limitation "automatically grouping,
without user intervention, files sharing one or more objective measures of
belonging to a particular task together in a common taskbar icon of a
display" as recited in claim 1 (and similarly recited in claims 11 and 20).
Ans. 4 (citing Haug, 4:7-32). And the cited portions of Adams teach
grouping together a plurality of windows that are open, which teaches the
limitation "one or more files are open in different applications of said
plurality of applications" recited in claims 1, 11, and 20. Ans. 5 ( citing
Adams, 7:6-24, 10:10-20, Fig. 7A).
We disagree with Appellants' argument that Adams teaches away
from combining with Haug because the Federal Circuit held "[a] reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551,553 (Fed. Cir.1994)). In this case, we
conclude that Adams does not discourage from combining with Haug
because both references pertain to grouping objects together on a user
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interface. See Haug, 4:7-32; Adams, 7:6-24, 10:10-20, Fig. 7A. Thus,
Adams does not teach away.
Appellants do not argue separately dependent claims 8-10, 18, and 19
with particularity, but assert the rejections of those claims should be
withdrawn for at least the same reasons as argued in independent claims 1,
11, and 20. App. Br. 10. Accordingly, we sustain the Examiner rejection of:
(1) independent claims 1, 11, and 20; and (2) dependent claims 8-10, 18,
and 19 under 35 U.S.C. § 103(a).
Rejection of Claims 2, 3, 12, and 13 under 35 U.S.C. § 103(a)
Claims 2 and 12 recite "wherein said one or more objective measures
comprises a commonality in file paths." App. Br. 18. And claims 3 and 13,
which depends from claims 2 and 12, respectively, recite "wherein the
commonality in file paths is derived from one or more handles. Id.
The Examiner finds Adams teaches organizing software application
displays by categories, including path name, which the Examiner maps to
claims 2, 3, 12, and 13. Final Act. 5---6, 9 (citing Adams, 2:28-32). Also,
the Examiner finds paragraph 24 of the Specification describes a handle,
recited in claims 3 and 13, as "a data structure that represents an open
instance of a basic operating system object an application interacts with."
Final Act. 5, 9 (citing Spec. ,r 24).
Appellants argue Adams fails to teach claims 2, 3, 12, and 13 because
it only mentions using path names to determine whether the software will be
used to manage the application, not to determine any type of grouping that it
could be argued that Adams teaches. App. Br. 14. We disagree with
Appellants.
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The cited portion of Adams teaches organizing software application
displays by categories, including path name, which teaches the limitations
recited in claims 2 and 12. Final Act. 5-6, and 9 (citing Adams, 2:28-32).
Also, we agree with the Examiner's finding that paragraph 24 of the
Specification describes a handle, recited in claims 3 and 13, as "a data
structure that represents an open instance of a basic operating system object
an application interacts with." Final Act. 5, 9 (citing Spec. ,r 24). We,
therefore, agree with the Examiner that Adams' file path teaches the
limitations in claims 3 and 13.
Accordingly, we sustain the Examiner's rejection of claims 2, 3, 12,
and 13 under 35 U.S.C. § 103(a).
Rejection of Claims 4, 5, 14, and 15 under 35 U.S.C. § 103(a)
Claims 4 and 14 recite "wherein said one or more objective measures
comprises an indication that a switching threshold has been exceeded."
App. Br. 18, 20. Claims 5 and 15 recite "wherein the switching threshold is
predefined as a number of times a user switches between files per unit time."
The Examiner finds Sahni teaches storing the first metadata item as
user profile information may be in response to a number of times the first
metadata item is generated in a defined time period being greater than a
threshold teaches the limitations recited in claims 4, 5, 14, and 15. Final
Act. 12-15 (citing Sahni ,r 18); Ans. 7-8 (citing Sahni ,r 43). And the
Examiner finds Sahni teaches a recency score based upon the recency in
time when a first metadata item is accessed, wherein the first metadata item
is relevant to a content object in response to the recency score being at least
a threshold value teaches the limitations recited in claims 4, 5, 14, and 15.
Ans. 7-8 ( citing Sahni ,r 18).
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Appellants argue Sahni does not teach switching between files as
described in claims 5 and 15, and paragraph 29 of the Specification. App.
Br. 14--15; Reply Br. 17-18. We agree with Appellants.
After reviewing the Specification, numerous dictionaries, the
limitations of the cited claims, we agree with Appellants that Sahni does not
teach switching; rather, Sahni teaches accessing the same file repeatedly
rather than switching between files. In this case, the Examiner is taking the
broadest possible interpretation of "switching," rather than the broadest
reasonable interpretation. See MPEP § 2111 ("The broadest reasonable
interpretation does not mean the broadest possible interpretation. Rather, the
meaning given to a claim term must be consistent with the ordinary and
customary meaning of the term (unless the term has been given a special
definition in the specification), and must be consistent with the use of the
claim term in the specification and drawings.").
Accordingly, for the reasons stated supra, we do not sustain the
Examiner's rejection of claims 4, 5, 14, and 15 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 6, 8-13, and
16, and 18-20 under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 4, 5, 14, and 15
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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