Ex Parte Ording et al

Board of Patent Appeals and Interferences

Nov 12, 2008

10100067 (B.P.A.I. Nov. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BAS ORDING and STEVEN P. JOBS
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Appeal 2008-2307
Application 10/100,067
Technology Center 2100
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Decided: November 12, 2008
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 6, 11-13, 18-22, 27, and 28. The Examiner
has indicated that claims 1-5 are allowable (Final Rej. 5). The Examiner has
objected to claims 7-10, 14-17, and 23-26 and indicated that these claims

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would be allowable if rewritten in independent form (Id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
The disclosed invention relates generally to graphical user interfaces
for computer systems (Spec. 1). More particularly, Appellants’ invention is
directed to a user interface having elements that provide an intuitive
appearance to depict an operation being performed (Id.).
Independent claim 6 is illustrative:
6. A method for representing actions to be performed on
objects in a computer system as a result of drag-and-drop
operations within a graphical user interface, comprising the
steps of:

classifying objects in said computer system into at least a
first type and a second type corresponding to respective first
and second actions that can be performed on said objects;

detecting that a classified object has been selected, and
determining which type of object has been selected;

assigning first and second images to an element of the
graphical user interface that respectively correspond to said first
and second actions; and

displaying said element with said first image or said
second image in accordance with the type of object determined
to have been selected.

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THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the anticipation rejection:
Hocker US 5,754,179 May 19, 1998

THE REJECTION
Claims 6, 11-13, 18-22, 27, and 28 stand rejected under 35 U.S.C.
§102(b) as being anticipated by Hocker.

CONTENTIONS BY APPELLANTS
Appellants contend that the Examiner erred in rejecting independent
claims 6, 13, 20, 21, and 22 as being anticipated by Hocker because the
Hocker patent “does not disclose the step of ‘detecting that a classified
object has been selected, and determining which type of object has been
selected.’ There is no type determination when the user selects the object
160.” (App. Br. 9). “Furthermore, even if one were to argue that the act of
dragging the icon 160 onto one of the icons 262 results in a detection of the
particular destination icon selected by the user, there is no disclosure of the
further step of ‘determining which type of object has been selected.’” (App.
Br. 8). In particular, Appellants aver that “[i]n a system of the Hocker
patent, the fact that the user may have selected one of the icons 262 as a
destination does not cause that icon to be displayed in the highlighted or
non-highlighted state. Rather, the choice of highlighted or non-highlighted
state is dictated by the user's selection of the icon 160.” (App. Br. 8-9).
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EXAMINER’S RESPONSE
Regarding the recited limitation of “detecting that a classified object
has been selected” (claim 6), the Examiner responds as follows:
However, the claims as presented in this appeal remain broad
enough to allow for the "selected" object to be a destination of a
"drag-and-drop" operation. Like what is claimed, the
destination icons (the certain icons to which an object may be
dragged in Hocker) are classified according to whether they can
accept the drop or not. When a user drags an object over the
top of such a classified destination, "detecting that a classified
object has been selected" occurs, if only by the system
recognizing the overlay in the user's graphical input, but also in
that the system takes as input the user positioning of the
dragged object as having "selected" the classified destination
icon.
(Ans. 5).

Regarding the recited limitation of “determining which type of object
has been selected” (claim 6), the Examiner fails to directly address
Appellants’ argument. However, the Examiner does state that “all that is
called for is a ‘selected ... classified object’ whose identity directs the
display of ‘an element of the graphical user interface’, and nothing in this
language requires that the two components are separate. By selecting a
destination ‘object’, Hocker affects the ‘image’ given for ‘an element's
display.’” (Ans. 6, ¶2).

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ISSUE(S)
In accordance with the aforementioned contentions, we have
determined that the following issue is dispositive in this appeal:
Have Appellants shown that the Examiner erred in finding that
Hocker discloses detecting that a classified object has been
selected and determining which type of object has been
selected, as required by the equivalent language of each of
independent claim before us on appeal (independent claims 6,
13, 20, 21, and 22).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.

FINDINGS OF FACTS
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
The Hocker reference
1. Hocker discloses that “[i]n a preferred embodiment, when one
icon/window is selected and/or dragged, other related icons are then
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distinguished by one of a plurality distinguishing features, such as by
brightening, by rounded corners, or by an oval shape and/or
highlighted text.” (Hocker, col. 1, l. 67 through col. 2, l. 4).
2. Hocker discloses that “[t]his distinguishing [i.e., highlighting] allows
the user to see and understand which icons are related to the target
icon, thus creating an interactive visual index for the user and/or
guiding the user to specific targets (drop sites) in [a]drag-and-drop
interface.” (Hocker, col. 2, ll. 6-10).
3. Hocker discloses that “[i]cons are related when they represent data,
functions, and/or programs that can be used together. The user can
also specify which icons are related, e.g., those in a similar class like
office applications, word processing, or drawings.” (Hocker, col. 2, ll.
10-14).
4. Hocker discloses “[a] selectable icon 160 or window 180 may be
selected 204 and dragged 205 on the primary monitor 230 using a
mouse 140 or other selecting device 140.” (Hocker, col. 3, ll. 21-24).
5. Hocker discloses that “[o]nce an icon 160 is selected 204, certain
icons in the set of displayed icons 261 are highlighted 262 (by color
changes or other graphical means) if they are related to the icon 160
or can receive the select icon 160 in a drag and drop icon interface.
For example, icons 262 may be the only valid ‘drop sites’ for selected
icon 160.” (Hocker, col. 3, ll. 27-32; Fig. 2).
6. Hocker discloses that “[t]he relation between icons may be defined by
a user profile 271.” (Hocker, col. 3, ll. 37-38).

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ANALYSIS
Independent claims 6, 13, 20, 21, and 22
We consider the Examiner’s rejection of independent claims 6, 13, 20,
21, and 22 as being anticipated by Hocker.
After considering the evidence before us, and the respective
arguments on both sides, we find the Hocker reference falls short of
anticipating Appellants’ claimed invention for essentially the same reasons
argued by Appellants in the Briefs. In particular, we agree with Appellants’
observation that “[i]n a system of the Hocker patent, the fact that the user
may have selected one of the icons 262 as a destination does not cause that
icon to be displayed in the highlighted or non-highlighted state. Rather, the
choice of highlighted or non-highlighted state is dictated by the user's
selection of the icon 160.” (App. Br. 8-9).
In the rejection of claim 6, the Examiner reads the claimed “type of
object” on whether Hocker’s destination icons are highlighted or not
highlighted (Ans. 3-5). The highlighting of an icon 262 indicates that it is a
valid drop site when icon 160 is selected and dragged and dropped onto one
of the destination icons 262 (FF 2). We note that the Examiner reads the
claimed limitation of “detecting that a classified object has been selected” on
the moment when Hocker’s selected icon 160 is dragged and dropped (i.e.,
overlaid) onto one of Hocker’s destination icons 262 that the Examiner
considers as the claimed classified objects, as follows:
The "first type" are those icons that might be valid "drop sites"
for selected icon 160, while the "second type" are those that are
not. Once an icon 160 is selected 204, the certain icons will

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then be subject to user selection as a destination, and this
destination selection reads upon "detecting that a classified
object has been selected".
(Ans. 3-4).

Hocker discloses that the highlighting of a destination icon 262 allows
the user to see and understand which icons are related (FF 2). We find the
deficiency with the Examiner’s reading of the claim on the Hocker reference
is that the determination of the type of destination icon 262 (i.e., whether
icon 262 is highlighted or not-highlighted) occurs at the moment icon 160 is
selected, i.e., this determination occurring before icon 160 is dragged and
dropped onto one of destination icons 262 (FF 5). We find the “selection” of
the destination icon 262 (by dragging and dropping icon 160 onto icon 262
as proffered by the Examiner), does not change the already highlighted or
not-highlighted state of target destination icon 262. Thus, we agree with
Appellants’ contention that “the fact that the user may have selected one of
the icons 262 as a destination does not cause that icon to be displayed in the
highlighted or non-highlighted state. Rather, the choice of highlighted or
non-highlighted state [i.e., determining object type] is dictated by the user's
selection of the icon 160.” (App. Br. 8-9). Thus, even if dragging and
dropping icon 160 on one of destination icons 262 detects that a “classified
object” has been selected, we find that the type of the destination icon 262
(i.e., highlighted or not highlighted) has already been determined by
selection of a different icon 160 (i.e., object) (Hocker, Fig. 2). Therefore,

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the evidence before us supports Appellants’ position as argued in the Briefs.
We note that “absence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
Accordingly, we conclude Appellants have met their burden of
showing that the Examiner erred in finding that Hocker discloses detecting
that a classified object has been selected and determining which type of
object has been selected, as required by the equivalent language of each of
independent claim before us on appeal (independent claims 6, 13, 20, 21,
and 22).
Therefore, we reverse the Examiner’s rejection of independent claims
6, 13, 20, 21, and 22 as being anticipated by Hocker. Because we have
reversed the Examiner’s rejection of each independent claim on appeal, we
also reverse the Examiner’s rejection of each dependent claim on appeal.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude
Appellants have met their burden of showing that the Examiner erred in
rejecting claims 6, 11-13, 18-22, 27, and 28 under 35 U.S.C. § 102(b) for
anticipation.

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DECISION
We reverse the Examiner’s decision rejecting claims 6, 11-13, 18-22,
27, and 28.
REVERSED

pgc

James A. LaBarre
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. Box 1404
Alexandria VA 22313-1404