Ex Parte RE41922 et al

Patent Trial and Appeal Board

Sep 16, 2016

90013146 (P.T.A.B. Sep. 16, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,146 02/05/2014 RE41922 429320US91RX 1099
20872 7590 09/19/2016
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/19/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte APPLE INC.
Appellant
____________

Appeal 2016-005175
Reexamination Control 90/013,146
Patent RE41,922 E
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of reissue claims 29, 30, and 33–37. Claims 1–28 have been
cancelled during a previous reissue proceeding. Claims 31 and 32 are not
subject to reexamination. We have jurisdiction under §§ 134(b) and 306.
An oral hearing was held on August 30, 2016. The record will
include a written transcript of the oral hearing.
We reverse and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Reexamination Proceedings
A previous request for ex parte reexamination of U.S. Patent No.
RE41,922 (the “’922 patent”) was filed on December 18, 2012, and assigned
Reexamination Control No. 90/012,744. An Ex Parte Reexamination
Certificate (10,034th) was issued on February 12, 2014, US RE41,922 C1, in
which the patentability of claims 29 and 30 was confirmed, claim 33 was
determined to be patentable, as amended, and new claims 36 and 37 were
added.
A subsequent request for ex parte reexamination of the ’922 patent
was filed on February 5, 2014 and assigned Reexamination Control
No. 90/013,146. The ’922 patent, entitled “Method and Apparatus for
Providing Translucent Images on a Computer Display,” issued November 9,
2010 to Michael L. Gough, Joseph J. MacDougald, Gina D. Venolia,
Thomas S. Gilley, Greg M. Robbins, Daniel J. Hansen, Jr., and
Abhay Oswal, based on Application No. 10/163,748, filed June 5, 2002.
The ’922 patent is a continuation-in-part of Application No. 08/060,572,
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filed on May 10, 1993, now U.S. Patent No. 5,638,501, issued June 10,
1997.
The ’922 patent is said to be assigned to Apple Inc., the real party in
interest. (App. Br. 2.)

Related Litigation
The ’922 patent has been asserted in In the Matter of Certain
Electronic Digital Media Devices and Components Thereof, No. 337-TA-
796 (USITC Mar. 26, 2013). The ITC investigation has been completed.
(App. Br. 3–4.)
The ’922 patent has also been asserted in OpenTV, Inc. v. Apple Inc.,
No. 12-cv-630 (N.D. Ca. April 9, 2014). The case has been dismissed. (Id.
at 4.)

The Claim
Independent claim 29 is exemplary, with disputed limitations in
italics:
29. A method for displaying images on a display
screen of an electronic device, comprising the steps of:
displaying a base image on a display screen of the
electronic device; and
displaying a translucent image on said screen such that
portions of said base image which are covered by said
translucent image are at least partially visible through said
translucent image, wherein said translucent image and said
base image are selectably active to receive user input and the
base image remains at least partially covered by said
translucent image even when selected.
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The Rejections
Claims 29, 33, 34, 36, and 37 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Frank (US 5,651,107; July 22, 1997).
Claims 30 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Frank and Appellant’s admitted prior art.
Appellant relied upon the following in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Scott D. Klemmer, Ph.D.,
dated Dec. 1, 2014.

ANALYSIS
§ 102 Rejection—Frank
We are persuaded by Appellant’s arguments (App. Br. 19–25; see also
Reply Br. 6–12) that Frank does not disclose, in a single embodiment, the
limitations “wherein said translucent image and said base image are
selectably active to receive user input” and “the base image remains at least
partially covered by said translucent image even when selected.”
The Examiner found that window 255 and window 260, as illustrated
in Figure 8 of Frank, and window 255, having buttons 280–283, and
window 260, having buttons 285–288, as illustrated in Figure 10 of Frank,
collectively correspond to the limitations “wherein said translucent image
and said base image are selectably active to receive user input” and “the base
image remains at least partially covered by said translucent image even
when selected.” (Final Act. 7–9; Ans. 5–7, 22–24.) We do not agree.

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Figure 8 of Frank, which illustrates display 250 having windows 255
and 260 (col. 9, ll. 4–5), is reproduced below:

Frank explains that “window 260 is rendered partially transparent, thereby
allowing a user to view the entire clock face 275 displayed in window 255.”
(Col. 9, ll. 36–38.) Frank provides an example in which a user shuts off an
alarm associated with clock 275 (col. 9, ll. 44–45) such that “it is necessary
for the user to render window 255 the top ‘active’ window” (col. 9, ll. 47–
48) by placing cursor 265 within window 255 (col. 9, ll. 49–50) to shut off
alarm box 277 (col. 9, ll. 56–58). Figure 9 of Frank illustrates that
window 255 overlays window 260 as a “top” non-transparent window.
(Col. 3, ll. 27–29.)

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Figure 10 of Frank, which illustrates display 250 with window 255
having buttons 280–283, and window 260 having buttons 285–288 (col. 9,
l. 63 to col. 10, l. 1), is reproduced below:

Frank explains that:
By placing cursor 265 over one of the buttons 280 to 283 in
window 255, or one of buttons 285 to 288 for window 260, and
momentarily depressing switch 34 on mouse 28 . . . either
window 255 or window 260 may be selected without altering the
relative position of the windows on the display 250
(Col. 10, ll. 1–7.) Frank provides an example in which the user places
cursor 265 over one of buttons 280–283 such that “[t]he selection of
window 255 through the use of buttons 280 to 283 permits the user to access
shut off alarm box 277 ‘through’ window 260.” (Col. 10, ll. 11–14.)
Accordingly, because Figure 8 of Frank activates window 255 by
placing cursor 265 within window 255 to bring window 255 to the “top” and
Figure 10 of Frank activates window 255 through the use of buttons 280–
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283, such that window 255 can be accessed “through” window 260, Figure 8
of Frank and Figure 10 of Frank constitute two separate embodiments.
In an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan
might somehow combine to achieve the claimed invention.” Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the
reference must “clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not directly related to
each other by the teachings of the cited reference.” Id. (quoting In re Arkley,
455 F.2d 586, 587 (CCPA 1972)). Thus, while “[s]uch picking and
choosing may be entirely proper in the making of a 103, obviousness
rejection . . . it has no place in the making of a 102, anticipation rejection.”
Arkley, 455 F.2d at 587–88. The Examiner’s rejection of independent
claim 29 under 35 U.S.C. § 102(e) is improper because it is based upon
picking, choosing, and combining the two separate embodiments of
Figures 8 and 10 of Frank.
Accordingly, we are persuaded by Appellant’s argument that “[t]here
is no single embodiment in Frank in which both translucent and base
windows are ‘selectably active to receive user input’ and the base window
‘remains at least partially covered by said translucent [window] even when
selected’” because “[i]n the embodiment of FIGs. 8 and 9, the base window
does not remain at least partially covered by the translucent window even
when selected” and “[i]n the embodiment of FIG. 10, the translucent and
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base windows are always active.” (App. Br. 20 (emphases omitted); see also
Reply Br. 6–12.)
Accordingly, we do not sustain the rejection of independent claim 29
under 35 U.S.C. § 102(e).
Independent claim 33 recites limitations similar to those discussed
with respect to independent claim 29. We do not sustain the rejection of
claim 33, as well as dependent claims 34, 36, and 37, for the same reasons
discussed with respect to claim 29.

§ 103 Rejection—Frank and Appellant’s Admitted Prior Art
Claims 30 and 35 depend from independent claims 29 and 33. We do
not sustain the rejection of dependent claims 30 and 35 under 35 U.S.C.
§ 103(a) because the Examiner has not provided any articulated reasoning
with some rational underpinning as why one of ordinary skill in the art
would have combined the Figure 8 embodiment of Frank with the Figure 10
embodiment of Frank.

Substantial New Question (SNQ) of Patentability
We are unpersuaded by Appellant’s argument (App. Br. 10–14; see
also Reply Br. 3–6) that a substantial new question of patentability has not
been established because Frank was considered in a previous reexamination
proceeding.
The Examiner found that “during the prior reexamination Control No.
90/012,744, the citations of the [references], i.e., Frank, Matsuo and Bartlett,
were not specifically addressed on the record by the Examiner” (Final
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Act. 40) and “the SNQ in the instant reexamination (90/013,146) over Frank
is proper because . . . Frank was not discussed during the previous
reexamination as to the actual claim language and, therefore, it is new and
non-cumulative to the record” (Ans. 21 (emphasis omitted)). We agree with
the Examiner.
Title 35 of the United States Code, Section 302, states that “[a]ny
person at any time may file a request for reexamination by the Office of any
claim of a patent on the basis of any prior art cited under the provisions of
section 301.” The Director determines “whether a substantial new question
of patentability affecting any claim of the patent concerned is raised by the
request, with or without consideration of other patents or printed
publications.” 35 U.S.C. § 303(a). “The existence of a substantial new
question of patentability is not precluded by the fact that a patent or printed
publication was previously cited by or to the Office or considered by the
Office.” Id. “The ‘substantial new question of patentability’ requirement
prevents potential harassment of patentees by ‘act[ing] to bar reconsideration
of any argument already decided by the [PTO], whether during the original
examination or an earlier reexamination.”’ In re Swanson, 540 F.3d 1368,
1375 (Fed. Cir. 2008) (quoting from H.R. Rep. No. 96-1307(I)(1980)).
The previous Order Granting Request for Ex Parte Reexamination
(Application No. 90/012,744), mailed January 16, 2013, stated the
following:
Frank teaches that “several images appear transparently on top
of one another. [This] permits underlying windows to display
data visible to the user through windows which are overlaid
above an underlying window.” Frank further teaches that
“[a]lthough it is traditional to bring all active windows to the top
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in a window based system prior to operating upon them, utilizing
the teachings of the present invention, it is not necessary.”
Figure 10 of Frank further provides an example where the
window (260 in Figure 8) “not having been rendered ‘active’ is
transparent to the actions of the user, thereby permitting the user
to operate on data disposed in an underlying window such as, for
example, accessing the shut off alarm box 277.” Frank discloses
receiving input into the lower window while it remains partially
overlaid by a translucent window, as shown above in the context
of Figures 8 and 10 of Frank.
(Order Granting Request for Ex Parte Reexamination 11–12 (citations
omitted)). Furthermore, the Non-Final Office Action in the previous ex
parte reexamination, mailed April 29, 2013, states the following:
The rejections in this Non Final Office action are confined to
what has been deemed to be the best available art from the
Request. However, prior to conclusion of this reexamination
proceeding, claims must be patentable over all prior art cited in
the order granting reexamination in order to be considered
patentable or confirmed on the reexamination certificate. The
references cited in the request but not utilized in the current
office action appear to be largely cumulative to the teachings in
the reference applied below [Oullette].
(Non-Final Act. 5 (emphasis added).)
The previous Order Granting Request for Ex Parte Reexamination,
merely provides a summary of Frank without any substantive analysis of
how the elements of Frank correspond to the limitations of independent
claims 29 and 33. Similarly, the Non-Final Office Action in the previous ex
parte reexamination proceeding only states that Frank “appear[s] to be
largely cumulative to the teachings [of Oullette]” without any substantive
analysis of Frank and how the elements of Frank corresponds to the
limitations of independent claims 29 and 33. Accordingly, because the
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prosecution history merely summarized Frank, and stated that Frank
“appear[s] to be largely cumulative to the teachings [of Oullette],” rather
than presenting any substantive arguments with analysis of how the elements
of Frank correspond to the limitations of independent claims 29 and 33,
Frank is a new, non-cumulative technological teaching that was not
previously considered.
Appellant argues that “Frank’s teaching that ‘an alarm clock window
can be made active’ (depicted in Frank’s FIG. 8 and discussed in column 9,
lines 48–58) corresponds to a base image that is ‘selectably active to receive
user input’” which “is the exact same disclosure that the Second Request
relied upon to argue that a second reexamination should be granted” and
accordingly, “Frank does not present a substantial new question of
patentability—the teachings of Frank were fully considered in the first
reexamination.” (App. Br. 12 (emphasis omitted); see also Reply Br. 4–5.)
Similarly, Appellant argues that “[t]he Examiner in the first reexamination
made it very clear that the claims would have to be patentable over Frank,
Matsuo, and Bartlett in order to be confirmed as patentable” and “[t]he
record shows that the Examiner considered Frank, Matsuo, and Bartlett and
confirmed the patentability of the claims.” (App. Br. 13.) However,
Appellant’s arguments do not specifically address the Examiner’s position
that in the previous reexamination, no arguments with respect to the
patentability were made by the Office with respect to Frank.
Thus, a substantial new question of patentability has been established
because Frank was not considered in a previous reexamination proceeding.

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NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We enter the following new ground of rejection:
Claims 29 and 33 are rejected under 35 U.S.C. § 102(e) as anticipated
by Frank.
Figure 10 of Frank illustrates display 250 including window 255 as a
word processing document (see col. 9, ll. 13–15) and window 260 as
clock 275 (see col. 9, ll. 42–43; see also col. 10, ll. 7–11). Frank explains
that “[t]he selection of window 255 through the use of buttons 280 to 283
permits the user to access shut off alarm box 277 ‘through’ window 260”
while “the window 260 [containing word processing documents] not having
been rendered ‘active’ is transparent to the actions of the user, thereby
permitting the user to operate on data disposed in an underlying window
such as, for example, accessing the shut off alarm box 277.” (Col. 10,
ll. 11–18.) In other words, while buttons 280 to 283 for window 255 or
buttons 285 to 288 for window 260 may be considered as always “active,”
the underlying application programs for window 260 (i.e., word processing)
and window 255 (i.e., clock with alarm ) are either “active” or “inactive.”
Thus, because window 260 (i.e., word processing), excluding buttons
285 to 288, and window 255 (i.e., clock with alarm), excluding buttons 280
to 283, are either “active” or “inactive,” Frank discloses the limitation
“wherein said translucent image and said base image are selectably active to
receive user input” (emphasis added). Likewise, because Frank explains that
window 255 (i.e., clock with alarm) can be accessed “through” window 260
(i.e., word processing documents), Frank discloses the limitation “the base
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image remains at least partially covered by said translucent image even
when selected.”
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent claims 29 and 33 as anticipated by Frank under 35 U.S.C.
§ 102(e).
Because the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination, we have not reviewed dependent
claims 30 and 34–37 to the extent necessary to determine whether Frank,
alone or in combination with other references renders any of these claims
unpatentable. We leave it to the Examiner to determine the appropriateness
of any further rejections of dependent claims 30 and 34–37 under 35 U.S.C.
§ 102(e) or 35 U.S.C. § 103(a).
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 that 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 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 proceedings (37 C.F.R. § 1.197 (b)) 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 prosecution
will be remanded to the examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

DECISION
The Examiner’s decision rejecting claims 29, 30, and 33–37 is
reversed.
A new ground of rejection has been entered under 37 C.F.R.
§ 41.50(b) for claims 29 and 33, rejected under 35 U.S.C. § 102(e) as
anticipated by Frank.

REVERSED
37 C.F.R. § 41.50(b)

PATENT OWNER:
Morrison & Foerster LLP
425 Market Street
San Francisco, CA 94105-2482

THIRD PARTY REQUESTER:

Oblon, Spivak, McClelland, Maier & Neustadt, LLP
1940 Duke Street
Alexandria, VA 22314