Ex parte Nielsen

Board of Patent Appeals and Interferences

Aug 15, 2001

08673184 (B.P.A.I. Aug. 15, 2001)

1 The oral hearing was waived in a letter filed Mar. 27, 2001. Therefore, this decision is based upon
the brief.
2 We note claims 14 and 18 have been canceled, and claims 4 and 19 have been objected to by
the examiner.
The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAKOB NIELSEN
____________
Appeal No. 1999-1570
Application No. 08/673,184
____________
ON BRIEF1
____________
Before HAIRSTON, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3, 5-13, 15-
17, and 20. 2
Appeal No. 1999-1570
Application No. 08/673,184
We REVERSE.
Appeal No. 1999-1570
Application No. 08/673,184
3
The appellant's invention relates to a system for visualizing various degrees of
information in an information attribute. The invention employs various other information
variables coupled with an icon to convey information to the user. An understanding of the
invention can be derived from a reading of exemplary claim 1 which is reproduced below.
1. Apparatus for displaying information, comprising:
a. a computer
b. a display controller configured to control the display of icons so that each
displayed icon can simultaneously depict more than one independent information variable
corresponding to said each displayed icon, a level of each independent variable being
respectively depicted by at least one of frequency of blinking, degree of blinking and
degree of fill of the icon; and
c . a display connected to said computer by said display controller.
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Pajak et al.(Pajak) 5,065,347 Nov.12, 1991
Alexander 5,257,349 Oct. 26, 1993
Bronson 5,305,435 Apr. 19, 1994
Torres 5,365,360 Nov.15, 1994
Microsoft Mail User’s Guide- Electronic Mail for PC Networks -Workstation Software for
Windows and Presentation Manager, Version 3.0, Microsoft Corporation, Chapter 1-
Overview of Mail and the Online Documentation, pp. 1-2 (1992).
Appeal No. 1999-1570
Application No. 08/673,184
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Claims 13 and 17 stand rejected under 35 U.S.C. § 102 as being anticipated by Pajak.
Claims 1-3, 5, 15,16 and 20 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Torres in view of Bronson. Claims 6 and 7 stand rejected under
35 U.S.C. § 103 (a) as being unpatentable over Torres and Bronson in view of Alexander.
Claims 8-12 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over Torres
and Bronson in view of Microsoft Mail User’s Guide.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 11, mailed Sep. 30, 1998) for the examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 10, filed Sep. 15, 1998) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appeal No. 1999-1570
Application No. 08/673,184
5
35 USC § 102
Appellant argues that Pajak does not teach “setting visual characteristics of an icon
based on said keywords or phrases.” Appellant argues that Pajak teaches highlighting the
text or label associated with an icon as the result of a search rather than setting the visual
characteristics of the icon itself. (See brief at page 5.) We agree with appellant. Since
Pajak does not teach the invention as claimed, we cannot sustain the rejection of claims
13 and 17.
35 USC § 103
Appellant argues that Torres merely adjusts the size of the icon (length, width and depth)
and also allows for another icon to be superimposed on top of the first icon to reflect
information contained therein. (See brief at pages 6-7 and Torres figure 4 and columns 4
and 9.) We agree with appellant. The examiner maintains that Bronson supplies the
missing teaching concerning “a level of each independent variable being respectively
depicted by at least one of frequency of blinking, degree of blinking and degree of fill of the
icon.” Specifically, the examiner relies upon the teaching of Bronson at column 4 which
teaches using color coding, patterning or blinking. Here, the examiner relies on this
teaching to generically suggest the use of some “alternative visual effect” to help visually
distinguish a particular window from another. (See answer at page 5.) From our review of
Bronson, we do not find any teaching or suggestion in Bronson with respect to the specific
Appeal No. 1999-1570
Application No. 08/673,184
6
visual effects recited in the language of claim 1. Nor has the examiner provided any line of
reasoning why one skilled in the art would have desired to use “frequency of blinking,
degree of blinking and degree of fill of the icon.” Appellant argues that the examiner has
applied “classical hindsight.” (See brief at page 8.) We agree with appellant.
Furthermore, the examiner has not provided a teaching, suggestion or a line of reasoning
for modifying the teachings of Torres to include the claimed depiction of the independent
variable. Therefore, we cannot sustain the rejection of claim 1 and its dependent claims 2
and 3. Claims 5, 15, and 16 contain similar limitations which are not taught or suggested
by the combination of Torres and Bronson. Therefore, we cannot sustain the rejection of
independent claims 5, 15, 16 and dependent claim 20. With respect to the addition of
Alexander and Microsoft Mail, the examiner does not rely on the teachings of these
references to teach the deficiency in the base combination. Therefore, these teachings do
not remedy that deficiency, and we cannot sustain the rejection of dependent claims 6-12.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 13 and 17 under
35 U.S.C. § 102 is reversed, and the decision of the examiner to reject claims 1-3, 5-12,
15, 16, and 20 under 35 U.S.C. § 103 (a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JD/RWK
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