Ex Parte Pagan

Patent Trial and Appeal Board

May 29, 2014

11770294 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM G. PAGAN
____________

Appeal 2011-012951
Application 11/770,294
Technology Center 2100
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 13-27 (App. Br.
2). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We reversed and enter a new ground of rejection.
STATEMENT OF THE CASE
The claims are directed to a method for application bar browsing of
tabbed-view applications within a user interface of a computer hardware

1 The Real Party in Interest is International Business Machines Corporation
(App. Br. 1).
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device, a computer hardware system for application bar browsing of tabbed-
view applications within a user interface, and a computer program product
comprising computer-readable storage medium having stored therein
computer usable code for application bar browsing of tabbed-view
applications within a user interface of a computer hardware device. Claims
13, 18, and 23 representative and are reproduced in the Claims Appendix of
Appellant’s Brief.
Claims 13-15, 18-20, and 23-25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Haug2 and Lewis-Bowen.3
Claims 16, 17, 21, 22, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Haug, Lewis-Bowen, and
Shahrbabaki.4
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses that
Older forms of the content browser [e.g., a web browser5]
permitted the viewing of a single page of content at a time,
though multiple pages can be opened in multiple different
instance[s] of the content browser and accessed through the
“Window” menu item of the menu bar for the content browser.
New forms of the content browser, however, permit tabbed
browsing.
(Spec. 2: ¶ [0003].)

2 Haug, T., US 2007/0157099 A1, published Jul. 5, 2007.
3 Lewis-Bowen et al., US 2007/0050727 A1, published Mar. 1, 2007.
4 Shahrbabaki et al, US 2004/0113948 A1, published Jun. 17, 2004.
5 See Spec. 1: ¶ [0003].
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FF 2. Appellant discloses that
Tabbed browsing refers to the rendering of different
content pages in different views arranged according to a
“tabbed notebook” paradigm. In the tabbed notebook
paradigm, a small tab section can be placed above a content
view section in which the content of a selected tab is displayed.
The activation of another tab can result in the display of
associated content in the content view section. The entirety of
the tabs, however, can be compartmentalized in a single content
browser instance, eliminating the need to generate multiple
content browser instances.
(Id. at ¶ [0004].)
FF 3. Appellant discloses that
To address the problem of application window clutter, the
modern computing desktop provides for an application bar in
which entries in the application bar correspond to an application
window displayed in the computing desktop either in a
maximized mode, a minimized mode, or a normalized mode as
will be recognized by the skilled artisan.
(Id. at 2-3: ¶¶ [0005].)
FF 4. Appellant discloses that “[w]hen . . . multiple different instances of
the application . . . [are] rendered in the computing desktop . . . only a single
entry will be provided [in the application bar] for the application despite the
number of different instances,” wherein the “selection of the entry in the
application bar will result in a pop-up window listing the different titles for
the different documents opened for editing in the application” (id. at 3:
¶ [0006]).
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FF 5. Appellant discloses that
[T]he behavior of the application bar does not differ for an
application configured for tabbed browsing. In this regard, so
long as only a single instance of the application is present in the
computing desktop, only a single entry in the application bar
will be provided, even where multiple tabs are open for the
single instance. . . . [W]here multiple instances of the
application are present in the computing desktop, some of
which include multiple tabs, the titles of the different instances
of the application will be presented in the pop-up window. Yet,
the titles of the different tabs in the different instances of the
application will not be presented in the pop-up window.
Rather, only the active tab in each of the instances will be
presented in the pop-up window. As a result, to view the
different tabs, first the host application instance must be
activated through the pop-up window and then the different tabs
must be activated to identify the content of any given tab.
(Id. at 3-4: ¶ [0007].)
FF 6. Haug’s Figure 1 is reproduced below:

In FIG. 1, a taskbar 110 illustrates various group identifiers
120, 130, 140 [representing a browser application, personal
information management application and word processing
application respectively]. The group identifiers 120, 130, 140
may represent applications active on a computer system and
initially may be grouped according to application type. . . .
User interaction with a group identifier 120[] may cause the
computer system to display a pop up window that identifies
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each of the application instances 120.1-120.n that are collected
within the group identifier 120[].
(Haug 1: ¶ [0008]; Ans. 5 and 9; Cf. FF 1, 3, and 4.)
FF 7. Examiner finds that Haug fails to suggest “a tabbed-view
application” and relies on Lewis-Bowen to make up for the deficiencies in
Haug (Ans. 5 and 9).
FF 8. Lewis-Bowen’s “invention is directed towards providing customized
[contextual] desktops [CDTs]” (Lewis-Bowen 1: ¶ [0009]).
FF 9. Lewis-Bowen distinguishes between a “desktop” and an
“application,” explaining that a desktop is a defined space wherein a user
may “place files, folders, applications and shortcuts to allow easy access to
those commonly used items” (Lewis-Bowen 4: ¶ [0066]).
FF 10. Lewis-Bowen’s Figure 9 is reproduced below:

“FIG. 9 depicts an example of tabularly accessing a CDT,” wherein the
“contextual desktop view 901 . . . [is] a consequence of selecting the
‘contextual Desktop 1’ tab 803,” wherein “‘Folder 1’ folder 902, ‘File 1’ file
903 and ‘Application 1’ program 904” are displayed in the contextual
desktop (id. at 2: ¶ [0041], at 5 ¶ [0073] (emphasis added)).
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FF 11. Examiner finds that the combination of Haug and Lewis-Bowen fails
to suggest a “pop-up list [that] includes a tab iterator, positioned adjacent a
respective entry, associated with each of the different instances of the
tabbed-view applications having multiple tabs” and relies on Shahrbabaki to
make up for this deficiency in the combination of Haug and Lewis-Bowen
(Ans. 7).
ANALYSIS
Based on the combination of Haug and Lewis-Bowen, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious “to modify Haug to . . . have entries for instances
of tabs of the same application instead of instances of the same application
window” (Ans. 6). According to Examiner, “[t]he motivation to do so”
comes from Lewis-Bowen’s tabular contextual desktop system (id.). In
support of this assertion, Examiner concludes that Lewis-Bowen’s
“contextual desktop[] . . . is . . . equivalent to an instance of [a] single
application[, e.g, a web browser,] configured for tabbed browsing” (Ans.
10). We are not persuaded.
Notwithstanding Examiner’s unsupported assertion to the contrary,
Lewis-Bowen suggests that a “contextual desktop” and an “application” are
distinct (FF 9; see Reply Br. 5). To further refine this point and distinguish
Lewis-Bowen from Appellant’s claimed invention, Examiner failed to
establish an evidentiary basis on this record to support a conclusion that
Lewis-Bowen suggests consolidating multiple instances of a contextual
desktop in the “application bar” of a user interface.
In sum, while Haug and Lewis-Bowen may relate to GUI interfaces
for a computer system, Examiner failed to establish an evidentiary basis on
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this record that supports a conclusion that Lewis-Bowen’s suggestion of
contextual desktops makes up for Haug’s failure to suggest “a tabbed-view
application” that is consolidated on the application bar entry for a tabbed-
view application as is required by Appellant’s claimed invention (see Ans.
10; Cf. FF 7).
Examiner also failed to establish that Shahrbabaki makes up for the
foregoing deficiency in the combination of Haug and Lewis-Bowen (see FF
11).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 13-15, 18-20, and 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Haug and Lewis-Bowen is
reversed.
The rejection of claims 16, 17, 21, 22, 26, and 27 35 U.S.C. § 103(a)
as unpatentable over the combination of Haug, Lewis-Bowen, and
Shahrbabaki is reversed.
NEW GROUND OF REJECTION
Claims 13, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Haug and Appellant’s admitted prior
art.
ISSUE
Does Haug in combination with Appellant’s admitted prior art, make
obvious the invention set forth in Appellant’s independent claims?
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ANALYSIS
Appellant’s independent claims require the display of:
1. a consolidated application bar entry for a tabbed-view
application, within an application bar of the user interface
and
2. a pop-up list associated with the application bar entry, in
response to the activation of the application bar entry for the
tabbed-view application in the application bar of the user
interface.
Appellant’s independent claims further require that the pop-up list includes a
plurality of entries respectively associated with different instances of the
tabbed-view application, and that an entry in the pop-up list for one of the
plurality of entries in the application bar is the active tab for the tabbed-view
application (see Appellant’s claim 13; see also Appellant’s claims 18 and
23).
For clarity, the following example is provided to illustrate Appellant’s
claimed invention with reference to factual findings (FFs) based on
Appellant’s disclosure of the state of the art at the time of Appellant’s
claimed invention or, stated differently, Appellant’s “Description of the
Related Art” (see Spec. 1: 7- 4: 4). Assume a user is using a web browser
application and has four web browser windows open. Each web browser
window represents a different “instance” of the web browser application (see
FF 1). All four of these web browser windows may have 2 tabs, e.g.,
tabbed-views, wherein each tab shows different content within a single
window or “instance” (see FF 1-2). Only one tab in each of the four web
browser windows may be active at a time (see generally FF 2 and 5). All
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four web browser windows are consolidated into a single web browser entry
in the application bar (see generally FF 3-4; Cf. Appellant’s claim 13
(display a consolidated application bar entry for a tabbed-view application)).
When the consolidated web browser entry in the application bar is activated
a pop-up list will be displayed (FF 4; Cf. Appellant’s claim 13 (a pop-up list
associated with the application bar entry is displayed in response to the
activation of the tabbed-view application in the application bar.)). The pop-
up list displays an entry associated with the active tab for each of the four
web browser windows (see FF 4-5; Cf. Appellant’s claim 13 (the pop-up list
includes a plurality of entries respectively associated with different instances
of the tabbed-view application, wherein the pop-up list for one of the
plurality of entries in the application bar is the active tab for the tabbed-view
application)).
Haug suggests that multiple instances of a specific application, e.g., a
web browser, can be consolidated into a single “group identifier” on the
application bar, wherein a “[u]ser[’s] interaction with a group identifier
. . . may cause the computer system to display a pop up window that
identifies each of the application instances . . . collected within the group
identifier” (FF 6). Thus, Haug suggests Appellant’s claimed invention with
the exception of an application, e.g., a web browser, comprising tabbed-
views (FF 7). Haug, however, must be considered in the context of the
common knowledge of a person of ordinary skill in this art. See DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1367 (Fed. Cir. 2006). See also In re Kotzab, 217 F.3d 1365, 1369
(Fed. Cir. 2000) (“A critical step in analyzing the patentability of claims
pursuant to section 103(a) is casting the mind back to the time of invention,
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to consider the thinking of one of ordinary skill in the art, guided only by the
prior art references and the then-accepted wisdom in the field”).
On this record, Appellant concedes that tabbed-view applications,
such as web-browsers, were known in the art prior to the date of Appellant’s
claimed invention (FF 1-5; see also App. Br. 11 (“Appellants [sic] concede
that tabbed view applications have existed for decades and have noted as
much in paragraph [0004] of Appellants’ [sic] originally filed specification”
(alteration original, emphasis added))). Therefore, at the time of Haug, a
person of ordinary skill in this art would have recognized that Haug’s
suggestion of a consolidated application bar entry for an application such as
a web browser includes, or makes obvious, a consolidated application bar
entry for a tabbed-view application such as a web-browser having tabbed-
views.
In sum, Haug in combination with the common knowledge available
to a person of ordinary skill in this art, as admitted by Appellant, suggests
the subject matter of Appellant’s independent claims.
Appellant’s dependent claims are currently free from rejection. In this
regard, we leave the application of available prior art relative to Appellant’s
dependent claims to the Examiner for further consideration.
CONCLUSION OF LAW
Haug in combination with Appellant’s admitted prior art, make
obvious the invention set forth in Appellant’s independent claims.
Appellant’s independent claims 13, 18, and 23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Haug and
Appellant’s admitted prior art.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; 37 C.F.R. § 41.50(b)

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