Ex Parte Reasoner et al

Board of Patent Appeals and Interferences

Nov 3, 2010

11259215 (B.P.A.I. Nov. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KELLY J. REASONER, CURTIS C. BALLARD,
and MIKE P. FLEISCHMANN
____________

Appeal 2009-008376
Application 11/259,215
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III,
And THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008376
Application 11/259,215

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We Affirm.
Invention
Appellants’ invention on appeal is directed to a “[s]torage apparatus
and related methods wherein an operator control panel that controls
functions and displays information regarding the storage apparatus and its
storage devices is configured to have or display a selectable thumbtack
function.” (Abst.).
Claim 1 is illustrative:
1. Storage apparatus comprising:
a housing containing storage devices; and
an operator control panel attached to the housing and
including a display configurable to:
show a number of operational screens for managing the
storage apparatus;
show a default screen after a period of inactivity at the
operator control panel;
receive a designation that an operational screen should
replace the default screen; and
if designated, show the designated operational screen
instead of the default screen after a period of inactivity.
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The Examiner relies on the following prior art references as evidence
of unpatentability:
LaStrange US 5,933,142 Aug. 3, 1999
Gregg US 6,353,449 B1 Mar. 5, 2002
Appellants’ Admitted
Prior Art (AAPA)
App. Spec. Pg 1-2

Appellants appeal the following rejections:
1. Claims 1, 2, 6-8, 12-14, and 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Appellants’ Admitted Prior Art (AAPA), and Gregg.
2. Claims 3-5, 9-11, and 15-17 under 35 U.S.C. § 103(a) as unpatentable
over AAPA, Gregg, and LaStrange.

CLAIM GROUPING
Appellants argue the following claim groupings separately: (1) claims
1, 2, 7, 8, 13, and 14 (See App. Br. 7 et seq.); (2) claims 6, 12, and 18 which
recite identical limitations (See App. Br. 10, 12, and 14); and (3) claims 19
and 20 which recite commensurate limitations (See App. Br. 15-17). We
note that Appellants argue commensurate limitations regarding independent
claims 1, 7, and 13. (App. Br. 7, 11, and 13). Therefore, we select claims 1,
6, and 19 as representative of groups (1), (2), and (3) respectively. See 37
C.F.R. § 41.37(c)(1)(vii).

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Application 11/259,215

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Claims 1, 2, 7, 8, 13, and 14
APPELLANTS’ CONTENTIONS
Appellants contend that Gregg is not directed to a system with
operational screens that may be selected in place of a default screen to be
displayed after a period of inactivity. (App. Br. 8).
Appellants also contend that the claims indicate that the operational
screens are for managing the storage apparatus. Appellants aver that a
computer is not managed by a screen displayed by a screensaver. (App. Br.
9).
Appellants further contend that the claimed “operational screensaver”
is distinctive over Gregg’s screensaver because a passive screensaver is not
an operational screen. (Id.).

ISSUE
Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested an operational screen for
managing the storage apparatus that replaces a default screen after a period
of inactivity, within the meaning of independent claims 1, 7 and 13?

PRINCIPLES OF LAW
Claim Construction
“During patent examination, the pending claims must be given their
broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000).

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FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual findings:
1. Appellants’ Specification states that an operational screen “is a
view of the user interface that is selected for the purpose of being displayed
during a period of inactivity so that status can quickly be ascertained without
additional user interaction with the user interface.” (Spec. 6, para. [00027]).
2. Gregg discloses that “[t]he screensaver option screen allows the
user to choose to display certain work oriented windows that were active
when the screensaver was activated. The user can choose to display all the
windows that were active and can also specify a list of windows for special
treatment.” (Col. 5, ll. 5-10).
3. Gregg discloses that the user can choose to group certain
windows for display and to exclude or obscure certain windows. (Col. 5 ll.
12-15).
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Appellants argue that the screensaver of Gregg is not an operational
screen that manages the storage apparatus as claimed. (App. Br.
9)(emphasis added). We note that the Examiner relied upon AAPA to teach
or suggest a number of operational screens that manage a storage apparatus
─ a finding that is not disputed by Appellants. (Ans. 3). Gregg was relied
upon to teach or suggest an operational screen replacing a default screen.
(Ans. 4). Thus, the issue turns on whether the cited combination of
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references would have taught or suggested an operational screen that
replaces a default screen within the meaning of representative claim 1. We
answer this question in the affirmative for the reasons discussed infra.
We begin our analysis by broadly but reasonably construing the
disputed claim term “operational screen” in light of Appellants’
Specification. See Hyatt 211 F.3d at 1372. The Specification describes an
operational screen as “a view of the user interface that is selected for the
purpose of being displayed during a period of inactivity so that status can
quickly be ascertained without additional user interaction with the user
interface.” (FF 1). Given this context, we broadly but reasonably construe
Appellants’ operational screen as any screen that displays any status
regarding the claimed storage apparatus. (See Independent claims 1, 7, 13).
Given our construction, we find the screensaver taught by Gregg is a
view of the user interface (i.e., work oriented windows) that is selected for
the purpose of being displayed during a period of inactivity, so that the
status can be ascertained. (FF 2). We further find Gregg teaches the
screensaver replaces a default screen after some period of time. (Col. 1, ll.
57-60). We note again that Gregg was relied upon to teach or suggest an
operational screen replacing a default screen. (Ans. 4). The Examiner’s
rejection is based on the combination of AAPA and Gregg.
Appellants attempt to read limitations from the Specification into the
claimed “operational screen” to distinguish it from the “passive screensaver”
of Gregg. (App. Br. 9). However, “a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). This reasoning is applicable here.
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On this record, we find the Examiner did not err in determining that
the cited references are a combination of familiar elements that would have
taught or suggested an operational screen for managing the storage apparatus
that replaces a default screen after a period of inactivity, within the meaning
of Appellants’ independent claims. Accordingly, we affirm the Examiner’s
§ 103 rejection of representative claim 1 as well as claims 2, 7, 8, 13, and 14
which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 6, 12, and 18
Appellants contend that Gregg’s “Screensaver Option Create” screen
is not a thumbtack function as defined in Appellants’ Specification. (App.
Br. 10). In particular, Appellants contend that Gregg’s Figure 6 “merely
shows examples of user options in the configuration of a screensaver, and
not selectable text that may be used to implement a thumbtack function that
acts as an on/off switch to identify the selected screen display as a default
screen.” (Id.) (underline added).
The Examiner finds that Gregg would have taught or suggested a
thumbtack function or an on/off switch that allows the user to choose to
display a certain work-oriented window as a work-oriented screen saver.
(Ans. 12).

ISSUE
Under §103, did the Examiner err in determining that the cited
references would have taught or suggested implementing a thumbtack
function that comprises selectable text?

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FACTUAL FINDINGS
4. Gregg discloses a “Create Screen Saver” option screen. (Col. 5,
ll. 5-10 and Fig. 6).

ANALYSIS
We observe that Appellants’ Specification describes a thumbtack
function as “essentially an on/off switch that when selected identifies the
selected screen display 34a as the default screen 35.” (Spec. 7, para. [0032]).
As noted above, Appellants contend that the cited references, notably Gregg,
do not teach or suggest selectable text that may be used to implement a
thumbtack function that acts as an on/off switch to identify the selected
screen display as a default screen, and that Gregg’s “Screensaver Option
Create” screen is not a thumbtack function, as recited in representative claim
6. (App. Br. 10).
We disagree for the reasons discussed infra.
Appellants’ arguments notwithstanding, we find Gregg’s “Create
Screen Saver” option screen (FF 4) includes a menu that shows options in
textual form for selecting windows for display in a screensaver. For
example, the user can select how long a particular window will be displayed.
(Gregg, col. 5, ll. 13-14). The selected items are used to implement the
screensaver option by determining selected screen(s) for view during the
screensaver mode. Therefore, it is our view that the cited combination of
references would have taught or at least suggested the claimed thumbtack
function (i.e., the selection of windows) being implemented by selectable
text, as shown in Fig. 6 of Gregg.

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On this record, we find the Examiner did not err in determining that
the cited combination of references would have taught or suggested
implementing a “thumbtack” function that comprises selectable text.
Therefore, we sustain the Examiner’s rejection of claim 6 as well as claims
12 and 18 which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 19 and 20
Appellants contend that Fig. 6 of Gregg fails to disclose or suggest the
cyclical display of a plurality of operational screens at a predetermined rate
after a period of inactivity. (App. Br. 15).

ISSUE
Under §103, did the Examiner err in determining that the cited
references would have taught or suggested a plurality of screens that are
displayed in cyclical fashion at a predetermined rate after a period of
inactivity, within the meaning of claims 19 and 20?

FACTUAL FINDINGS
5. Gregg discloses that the user can choose to “specify times or
varying time lengths for each window or group of windows to be displayed.”
(Col. 5, ll. 12-15) (emphasis added).

ANALYSIS
Appellants contend that the cited portions of Gregg (Fig. 6 and col. 5
ll. 41-54) fail to disclose or suggest the cyclical display of a plurality of
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operational screens at a predetermined rate after a period of inactivity.
(App. Br. 15).
We find Gregg teaches that “screensaver presentations are selected by
a user and selectively presented on the user’s display device . . . after a
predetermined period of activity.” (Col. 1, ll. 58-60). Because Gregg also
teaches the user can choose to “specify times or varying time lengths for
each window or group of windows to be displayed” (FF 5), we find Gregg at
least strongly suggests that the selected windows can be displayed at a
predetermined rate in a cyclical manner, within the meaning of claims 19
and 20.
Therefore, we find the Examiner did not err in rejecting claims 19 and
20.

Claims 3-5, 9-11, and 15-17 (second stated rejection)
Claims 3-5, 9-11, and 15-17 stand rejected as unpatentable over the
combination of AAPA, Gregg and LaStrange. Appellants state that these
three groups of claims stand or fall with claims 1, 17, and 13, respectively.
(App. Br. 17-18). Note: We assume that Appellants’ statement that “claims
9-11 stand or fall with claim 17” (App. Br. 17) is a typographical error and
that Appellants intended to state that claims 9-11 stand or fall with
independent claim 7, from which claims 9-11 indirectly depend. However,
we note that the alternative reading (claim 17) does not change the result.
Because we did not find Appellants’ arguments persuasive regarding
claims 1, 7, and 13 supra, we sustain the Examiner’s rejection of claims 3-5,
9-11, and 15-17 for the same reasons set forth above regarding claims 1, 7,
and 13.
Appeal 2009-008376
Application 11/259,215

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DECISION
We affirm the Examiner’s § 103 rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED

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