Ex Parte Peiro et alDownload PDFPatent Trial and Appeal BoardApr 17, 201411783023 (P.T.A.B. Apr. 17, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOSEP ABAD PEIRO and THIERRY DUPASQUIER __________ Appeal 2012-000608 Application 11/783,023 Technology Center 2100 __________ Before, ERIC GRIMES, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to an electronic device configured to cause, on a display device, a display of a graphical user interface for controlling a printer application. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Hewlett-Packard Development Company, LP (see App. Br. 2). Appeal 2012-000608 Application 11/783,023 2 Statement of the Case Background “In the field of printing, printers are typically controlled using a ‘panel-like’ GUI that includes buttons and ‘drop-down’ menus” (Spec. 1, ll. 27-28). According to the Specification, “GUIs for controlling printers are generally also difficult to use since they can present a user with a confusing array of options which are arranged in a predetermined and/or restrictive manner” (Spec. 2, ll. 3-5). The Claims Claims 1-20 are on appeal. Claim 1 is representative and reads as follows: 1. An electronic device configured to cause, on a display device, a display of a graphical user interface for controlling a printer application, the interface comprising: a first menu having a first set of selectable options arranged around a center point, said selectable options being selectable with a user input device; and at least one corresponding additional menu concentrically-disposed relative to the first menu, each additional menu having a set of selectable options which are hierarchically related to a selectable option in an earlier menu, wherein a selectable option is selected by positioning a pointer controlled with said user input device within a region on said display device associated with the selectable option, and wherein when a selectable option of a said menu is selected, if one of said additional menus corresponds to that selected option, that additional menu is displayed and is layered outside a previous one of said menus that is displayed, said additional menu being concentric with, and outside with respect to said center point, all previous said menus displayed. Appeal 2012-000608 Application 11/783,023 3 The issues A. The Examiner rejected claims 1-18 and 20 under 35 U.S.C. § 103(a) as obvious over Anderson2 and Selker3 (Ans. 4-14). B. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as obvious over Anderson, Selker, and Zhao4 (Ans. 15-16). A. 35 U.S.C. § 103(a) over Anderson and Selker The Examiner finds that Anderson teaches the elements of claim 1, except that Anderson does not teach “layered outside a previous one of said menus that is displayed, said additional menu being concentric with, and outside with respect to said center point all previous said menus displayed” (Ans. 4-5). The Examiner finds that Selker teaches “a graphical user interface which includes a plurality of pie menu levels concentrically arranged [abstract]. Selker also teaches when a selectable option of a said menu is selected, if one of said additional menus corresponds to that selected option, that additional menu is displayed ([0036]) and is layered outside a previous one of said menus that is displayed” (Ans. 5-6). The Examiner finds it obvious to “have modified the menu levels taught by Anderson, to have included the menu hierarchy taught by Selker, to have achieved a convenient and efficient method of allowing users to navigate through successive menus while preserving screen space” (Ans. 6). 2 Anderson et al., US 5,828,360, issued Oct. 27, 1998. 3 Selker, US 2002/0122072 A1, published Sep. 5, 2002. 4 Zhao et al., US 2007/0168890 A1, published Jul. 19, 2007. Appeal 2012-000608 Application 11/783,023 4 The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Anderson and Selker render the claims obvious? Findings of Fact 1. Figure 3 of Anderson is reproduced below: “FIG. 3 a first embodiment of a menu whereby the options are aligned along a curved band” (Anderson, col. 4, ll. 24-25). 2. Anderson teaches a workstation 10 . . . A keyboard 12 is provided for entering text data and various commands into the workstation. Additional input devices are shown, a mouse 13, a stylus 14 with digitizing tablet 15 and a touch sensitive pad 16. A touch sensitive pad and the viewscreen can possibly be integrated to form a touch sensitive screen . . . The Appeal 2012-000608 Application 11/783,023 5 workstation may comprise further devices . . . such as a document scanner, a printer, . . . . (Anderson, col. 4, ll. 40-54). 3. Anderson teaches a menu for display on the viewscreen according to the invention. The menu 30 is displayed as a disc with a number of options. In the menu three types of options can be a distinguished. A first portion, the shaded outer band 31, contains a number of main options 31a, 31b, 31c, . . . , 31h for the present working status. The options are mainly presented by icons. Shown are, as an example, an icon (31c) for drawing lines; for entering text (31d), for sending a document (31g) or for making a phonecall (31h). A second portion 32 of the disc menu shows a number of sub-options, associated with the presently highlighted main option 31c. The presented sub-menu allows the operator to choose a line type and colour. The third portion 33 of the menu, which is adaptable to a certain working status, allows the user to choose a specific operation to be performed on the object that is handled presently. (Anderson, col. 5, ll. 13-28). 4. Anderson teaches that a “menu of commands may be displayed on the screen with options which can be chosen by moving a cursor to the desired option by a corresponding movement of the mouse 13 or stylus 14, or by the movement of a finger or arbitrary object across the touch sensitive pad 16” (Anderson, col. 4, ll. 64 to col. 5, l. 4). 5. Anderson teaches that in “a first mode the menu is displayed when and as long as the first button 61 is activated. Hovering above the desired option will highlight it, and it is actually selected when the first button 61 released” (Anderson, col. 6, ll. 36-39). Appeal 2012-000608 Application 11/783,023 6 6. Anderson teaches that “[s]election of a first option often makes it necessary or desirable to select sub-options. In an embodiment of the invention the sub-menu may already be made visible when the pointer device is positioned at the corresponding area for the first option, but before a selection command is given” (Anderson, col. 3, ll. 49-53). 7. Selker teaches that: A graphical user interface includes a plurality of pie menu levels concentrically arranged. Located within the center most section are menu selections generally of greater importance, highest probability of use, historical favorites, category headings, tabs from a tab menu, as well as other high level menu items. Levels extending from the center decrease in frequency of use while increasing in granularity of menu items. (Selker abstract). 8. Figure 5 of Selker is reproduced below: “FIG. 5 illustrates a hierarchical multiple level menu system with mixed second and third levels of granularity. Level 1 menu item 53 forms a Appeal 2012-000608 Application 11/783,023 7 hierarchical relationship with level 2 menu items 54 and 55. A series of nested level 3 menu items 56, 57, 58, and 59 are formed in a hierarchical relationship with menu item 54” (Selker 2-3 ¶ 0039). 9. The Specification teaches that “such activation may comprise the user performing a predetermined action while the option is selected, e.g. pressing a[ ] ‘confirm’ button on an appropriate input device such as a keyboard, mouse, remote control or stylus” (Spec. 8, l. 33 to 9, l. 3). Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. Analysis We adopt the Examiner’s findings regarding the scope and content of the prior art (Ans. 4-19; FF 1-8) and agree that the graphical user interface of claim 1 would have been obvious in view of Anderson and Selker. We address Appellants’ arguments below. Claim 1 Appellants contend that “Anderson and Selker do not teach or suggest that ‘a selectable option is selected by positioning a pointer controlled with said user input device within a region on said display device associated with the selectable option.’” (App. Br. 10). Appellants contend that “[t]hus, Appeal 2012-000608 Application 11/783,023 8 neither Anderson nor Selker teach or suggest the unique menu flow described above which has been disclosed and claimed by the Appellant” (App. Br. 11). We are not persuaded. While claim 1 requires that a “selectable option is selected by positioning a pointer controlled with said user input device”, this claim language follows the “a first menu” and “at least one corresponding additional menu” language. The Specification expressly teaches that activation of an additional (final) menu may include “pressing a[ ] ‘confirm’ button on an appropriate input device such as a keyboard, mouse, remote control or stylus” (Spec. 9, ll. 1-3; FF 9). Thus, claim 1 as interpreted in light of the Specification is reasonably construed as encompassing activation of a second or later menu by use of a “selection” button. In addition, the reasonable interpretation of the transitional term “comprising” in claim 1 permits the inclusion of additional steps interposed before, after, or between the claimed steps. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”). Therefore, the phrase “a selectable option is selected by positioning a pointer controlled with said user input device within a region on said display device associated with the selectable option” is reasonably interpreted to encompass additional steps, such as the use of a “selection button” with the first menu, since the use of such a button is not excluded or forbidden by the claim. Appeal 2012-000608 Application 11/783,023 9 Applying this claim interpretation to the prior art, Anderson teaches that in “a first mode the menu is displayed when and as long as the first button 61 is activated. Hovering above the desired option will highlight it, and it is actually selected when the first button 61 released” (Anderson, col. 6, ll. 36-39; FF 5). Thus, Anderson teaches that a selectable option is selected, i.e., highlighted, by a pointer controlled using a user input device (FF 5), and then Anderson teaches an additional “confirming” step, consistent with the Specification (FF 9) by releasing the button (FF 5). Appellants contend that Anderson does not teach or suggest “when a selectable option of a said menu is selected, if one of said additional menus corresponds to that selected option, that additional menu is displayed and is layered outside a previous one of said menus that is displayed, said additional menu being concentric with, and outside with respect to said center point, all previous said menus displayed.” (App. Br. 12). Appellants contend that “[t]hus, Anderson teaches a shaded outer band containing a number of main options. Sub-options, related to a main option, are shown inside the circle or arc of main options. (Id.). This is the exact opposite of what Appellant is claiming. Anderson here is entirely teaching away from the claimed subject matter” (App. Br. 13). We are not persuaded. While there is no doubt that Anderson’s concentric menus move inward with respect to the center point, rather than outward, as required by claim 1, the Examiner relies upon Selker, not Anderson, to teach a graphical user interface with an inner area of selection with concentric menus that lay outside the previous menu (FF 7-8). For example, figure 5 of Selker clearly shows a first or “level 1 menu item 53” Appeal 2012-000608 Application 11/783,023 10 which is nested with second “level 2 menu items 54 and 55” and further nested with third “level 3 menu items 56, 57, 58, and 59” concentric with regard to a center point, where the additional menus are displayed outside the earlier menus (FF 8). We also find Appellants’ “teaching away” argument unpersuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). Appellants do not identify, and we do not find, any teaching in Anderson which criticizes or discourages the placement of additional menus outside, rather than inside, the first selection menu. Appellants contend that “Anderson has not been shown to teach or suggest this feature of only displaying additional menus upon the selection of a corresponding option in a current menu” (App. Br. 14). We are not persuaded. Anderson teaches that “[s]election of a first option often makes it necessary or desirable to select sub-options. In an embodiment of the invention the sub-menu may already be made visible when the pointer device is positioned at the corresponding area for the first option, but before a selection command is given” (Anderson, col. 3, ll. 49- 53; FF 6). Thus, Anderson directly teaches making additional menus available upon selection, and Anderson’s teaching of an embodiment where “the sub-menu may already be made visible” reasonably suggests an embodiment where the sub-menu is not visible (i.e., not displayed) to the Appeal 2012-000608 Application 11/783,023 11 person of ordinary skill when no menu options are selected. Anderson, therefore, reasonably suggests displaying additional menus only upon selection of the option in the current menu (FF 6). Claim 9 Appellants contend that Both Anderson and Selker teach menus that are displayed and arranged within the confines of a predetermined circle. (See Anderson, Fig. 3, reproduced above, and the Figures of Selker). Neither reference teaches a method in which any number of successive menus in a hierarchy can be “layered outside a previous one of said menus that is displayed, said additional menu being concentric with, and outside with respect to said center point, all previous said menus displayed.” (Claim 9). (App. Br. 16). We are not persuaded. As we discussed above, figure 5 of Selker clearly shows a first or “level 1 menu item 53” which is nested with additional “level 2 menu items 54 and 55” and further nested with additional “level 3 menu items 56, 57, 58, and 59” concentric with regard to a center point, where the additional menus are displayed outside the earlier menus (FF 8). Claims 2 and 10 Appellants contend that “[t]here is no teaching or suggestion in either cited reference of the claimed ‘first menu [being] arranged in a quarter circle around said center point.’” (App. Br. 18). We are not persuaded. Figure 5 of Selker, shown in FF 8, clearly shows a menu 53 which is an option in a quarter circle arranged around a Appeal 2012-000608 Application 11/783,023 12 center point. There is no requirement in either claim 2 or claim 10 for more than one item in the menu. Claim 7 Appellants contend that “[t]here is no teaching or suggestion here of the claimed subject matter ‘wherein a second menu comprising a second set of selectable options is not visible when none of the selectable options in the first set are selected’” (App. Br. 19). We are not persuaded. As discussed above, Anderson teaches that “[s]election of a first option often makes it necessary or desirable to select sub-options. In an embodiment of the invention the sub-menu may already be made visible when the pointer device is positioned at the corresponding area for the first option, but before a selection command is given” (Anderson, col. 3, ll. 49-53; FF 6). Thus, Anderson directly teaches making additional menus available upon selection, and Anderson’s teaching of an embodiment where “the sub-menu may already be made visible” reasonably suggests an embodiment where the sub-menu is not visible (i.e., not displayed) to the person of ordinary skill when no menu options are selected. Anderson, therefore, reasonably suggests displaying additional menus only upon selection of the option in the current menu (FF 6). Claim 20 Appellants contend that “[n]one of the cited portions of Selker even mention the expansion effect as recited in claim 20” (App. Br. 20). We are not persuaded. As shown in Figure 5 of Selker, submenus 54 and 55 are reasonably interpreted as showing an “expansion effect” relative to the menu 53, since these submenus expand outwardly from menu 53 (FF Appeal 2012-000608 Application 11/783,023 13 8). Similarly, submenus 56-59 are also reasonably interpreted as showing this “expansion effect” (FF 8). Conclusion of Law The evidence of record supports the Examiner’s conclusion that Anderson and Selker render the claims obvious. B. 35 U.S.C. § 103(a) over Anderson, Selker, and Zhao This rejection relies upon the underlying obviousness rejection over Anderson and Selker. Having affirmed the rejection of claim 1, we will also affirm this obviousness rejection further including Zhao for the reasons of the Examiner. Appellants provide no arguments for claim 19. SUMMARY In summary, we affirm claims 1, 2, 7, 9, 10 and 20 under 35 U.S.C. § 103(a) as obvious over Anderson and Selker. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 3-6, 8, and 11-18, as these claims were not argued separately. We affirm the rejection of claim 19 under 35 U.S.C. § 103(a) as obvious over Anderson, Selker, and Zhao. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation