Ex Parte Paquette et al

Patent Trial and Appeal Board

Aug 26, 2016

12543401 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/543,401 08/18/2009
62579 7590 08/30/2016
APPLE INC. (Brownstein)
c/o Brownstein Hyatt Farber Schreck LLP
41017thSt.
Suite 2200
DENVER, CO 80202
FIRST NAMED INVENTOR
MichaelJ. Paquette
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.
P3596USC1 7258
EXAMINER
PHAM,LONGD
ART UNIT PAPER NUMBER
2691
NOTIFICATION DATE DELIVERY MODE
08/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@bhfs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. PAQUETTE, HOW ARD A. MILLER, and DAVID
HAYWARD
Appeal2014-008182
Application 12/543,401 1
Technology Center 2600
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
STACY B. MARGOLIES, Administrative Patent Judges.
MARGOLIES, Administrative Patent Judge.
DECISION ON APPEAL
This appeal arises under 35 U.S.C. § 134(a) from the rejection of
claims 41---63. No other claims are pending. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Apple Inc. App. Br. 3.
Appeal2014-008182
Application 12/543,401
SUMMARY OF THE INVENTION
The invention is generally directed to accentuating a pointer in
response to a determination that an idle time period associated with the
pointer has elapsed. See Abstract, Spec. 4: 13-22.
Claim 41 is illustrative of the subject matter on appeal and is
reproduced below (with the disputed limitation emphasized):
1. A method, comprising:
setting at least one idle time period criteria associated
with a first displayable input feature of a display and
associated with a second displayable input feature of the
display;
monitoring an idle time period based upon the at least
one idle time period criteria;
determining whether a termination of said idle time
period has occurred based upon said monitoring; and
modifying a representation of said first displayable input
feature of the display in response to said termination of said idle
time period.
REFERENCES AND REJECTIONS
The Examiner rejected claims 41--45 and 47---61 under 35 U.S.C.
§ 103(a) as being unpatentable over Rogalski (US 2006/0095867 Al;
published May 4, 2006) and Emerson (US 2004/0036679 Al; published Feb.
26, 2004). Final Act. 2-10.
The Examiner rejected claim 46 under 35 U.S.C. § 103(a) as being
unpatentable over Rogalski, Emerson, and Forlenza (US 2002/0063740 Al;
published May 30, 2002). Final Act. 11.
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Appeal2014-008182
Application 12/543,401
The Examiner rejected claims 62 and 63 under 35 U.S.C. § 103(a) as
being unpatentable over Rogalski, Emerson, and Kolmykov-Zotov (US
2006/0132460 Al; published June 22, 2006). Final Act. 11.
ISSUE
The issue in this appeal is whether the Examiner erred in finding that
the combination of Rogalski and Emerson teaches or suggests "setting at
least one idle time period criteria associated with a first displayable input
feature of a display and associated with a second displayable input feature of
the display," as recited in independent claim 41 and similarly recited in
independent claims 50, 53, 58, and 61.
ANALYSIS
Appellants argue that the combination of Rogalski and Emerson
discloses setting at least one idle time period criteria that is associated with a
first displayable input feature (a cursor); but does not teach or suggest setting
at least one idle time period criteria associated with two displayable input
features of a display as claimed. App. Br. 8-9. Appellants argue that, in
Rogalski, the period of time inactivity cannot be associated with both cursor
420 (shown in Figure 4) and cursor 520 (shown in Figure 5) because the
cursors are from two separate and distinct embodiments. Reply Br. 2.
Appellants also argue that even if Rogalski were modified to include both
cursors in a single embodiment, the period of time inactivity would only be
associated with one of the cursors, not both. Id. at 2-3.
The Examiner finds that Rogalski discloses setting at least one idle
time period criteria associated with a first displayable input feature (cursor
420) and associated with a second displayable input feature (cursor 520).
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Appeal2014-008182
Application 12/543,401
Ans. 13. Specifically, the Examiner finds that, in Rogalski, the period of
time of inactivity associates with cursor 420 (a pointing arrow) when a word
processing application is not in use and associates with cursor 520 (a capital
I shape) when a word processing application is in use. Id. The Examiner
also finds that Emerson teaches that a timer can be associated with a second
displayable input feature (text insertion cursor). Id. at 13-14.
We are not persuaded that the Examiner erred. As the Examiner
found, Rogalski discloses setting a time of inactivity criteria for both a
cursor in the shape of a capital I when a word processing application is being
used, and a pointing arrow when the application is not being used. See
Ans. 13; Rogalski Figs. 4, 5, i-fi-12 ("Typically, manipulation of a cursor
control device, such as a mouse, controls movement of a pointer or cursor on
a display .... "), 18, 24. Rogalski states that Figures 4 and 5 illustrate
different ways of aiding the visibility of the cursor: enlarging the cursor (as
shown in Figure 4) and changing the shape of the cursor (as shown in Figure
5). Rogalski i-fi-f 12, 13. Rogalski does not state that Figures 4 and 5
illustrate distinct embodiments, the teachings of which cannot be combined.
See Rogalski i-fi-f 12, 13, 24. Nor do Appellants cite any such evidence.
Moreover, Appellants' argument that Rogalski's period of inactivity would
be associated with either cursor 420 (pointing arrow) or cursor 520 (capital
I) but not both is not commensurate in scope with the claimed invention
because claim 41 does not require monitoring the first and second
displayable input features at the same time. Appellants fail to cite any
passage in Appellants' specification that requires limiting the claim in the
proposed manner, let alone describes such an embodiment. Furthermore,
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Appeal2014-008182
Application 12/543,401
Appellants attempt to individually distinguish Rogalski, rather than address
the combined teachings of Rogalski and Emerson. See Reply Br. 2-3. Each
reference must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Keller, 642 F.2d 413,
425 (CCP A 1981) ("The test for obviousness is not ... that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art."). The Examiner finds, and
we agree, that Rogalski teaches a pointing arrow and a text insertion cursor,
and Emerson teaches that a timer can be associated with a text insertion
cursor. Ans. 13-14; Rogalski Figs. 4, 5, i1i12, 18, 24; Emerson Figs. 6, 10,
i-fi-f 119, 120. We also agree with the Examiner that an ordinarily skilled
artisan would have been motivated to combine Emerson's teachings with
Rogalski' s teachings to provide additional functionality for locating a text
insertion cursor. See Ans. 14.
We thus sustain the obviousness rejection of claim 41 and claims 42-
63, which are not argued separately.2
2 Claim 61 recites "setting at least one idle time period criteria associated
with a pointer and associated with a cursor." We note that Appellants do not
challenge the Examiner's finding, in connection with the rejection of claim
61, that Emerson teaches this claim limitation by teaching setting a timer for
a mouse text pointer and a text insertion cursor. See Final Act. 10; App.
Br. 10.
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Appeal2014-008182
Application 12/543,401
DECISION
We affirm the Examiner's rejection of claims 41---63.
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
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