Ex Parte Ricard

Board of Patent Appeals and Interferences

Dec 8, 2006

09843566 (B.P.A.I. Dec. 8, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GARY ROSS RICARD
__________

Appeal No. 2007-0095
Application No. 09/843,566
___________

ON BRIEF
___________

Before THOMAS, KRASS, and SAADAT, Administrative Patent Judges.

KRASS, Administrative Patent Judge.

Decision on Appeal

This is a decision on appeal from the final rejection of
claims 1-44.

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The invention is directed to a browser operating in two
different modes. One mode, a “thumbnail” mode, is presented in
addition to a normal window, or as a small window on the screen
in the case of a small screen device. The page image presented
by the browser is logically divided into segments through use of
the thumbnail. The thumbnail image is divided into cells, one
cell for each page image segment. Together, the cells form a
grid. When a user selects a cell on the thumbnail, the browser
presents the associated segment of the page image to the user via
the user’s window or screen.
Representative independent claim 1 is reproduced as follows:

1. An apparatus, said apparatus comprising:

a processor; and

memory, said memory being connected to said processor; and

a browser stored in said memory, said browser presenting a
first window and a second window to a user, said first window
being divided into a plurality of cells, each of said cells being
associated with different segments of an image, said second
window being used to display one of said different segments to
said user.

The examiner relies on the following references:

Anderson et al. (Anderson) 6,097,431 Aug. 01, 2000

Angiulo et al. (Angiulo) 6,275,829 Aug. 14, 2001
(filed Nov. 25, 1997)

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Claims 1-44 stand rejected under 35 U.S.C. § 103 as
unpatentable over Anderson in view of Angiulo.
Reference is made to the brief and answer for the respective
positions of appellant and the examiner.
OPINION
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v, John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966). The examiner must articulate reasons for the examiner’s
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1433
(Fed. Cir. 2002). In particular, the examiner must show that
there is a teaching, motivation, or suggestion of a motivation to
combine references relied on as evidence of obviousness. Id. at
1343, 61 USPQ2d at 1433-34. The examiner cannot simply reach
conclusions based on the examiner’s own understanding or
experience – or on his or her assessment of what would be basic
knowledge or common sense. Rather, the examiner must point to
some concrete evidence in the record in support of these
findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697
(Fed. Cir. 2001). Thus the examiner must not only assure that
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the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the examiner’s conclusion. However, a suggestion,
teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art,
as the teaching, motivation, or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the
references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the
art, and the nature of the problem to be solved as a whole would
have suggested to those of ordinary skill in the art. In re
Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000). See also In re Thrift, 298 F.3d 1357, 1363, 63
USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
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evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1040, 228 USPQ
685, 687 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 146-147 (CCPA 1976). Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 41.37(c)(1)(vii) (2004)].
With respect to independent claims 1, 17, and 31, it is the
examiner’s position that Anderson discloses a processor and
memory connected thereto (referring to column 5, lines 7-26), a
first screen (referring to Figure 11) being divided into a
plurality of cells with each cell being associated with a
different segment of an image (referring to column 6, lines
25-40), and a second screen used to display one of the different
segments to the user (referring to Figure 9 and column 6, lines
25-40 and 52-65). The examiner acknowledges that Anderson does
not disclose a first and second window. The examiner turns to
Angiulo, specifically Figures 2 and 6-8, and to “lines 10-25” of
some unidentified column (see page 3 of the answer), and
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concludes that it would have been obvious “to combine the first
and second windows of Angiulo with Anderson’s screens” in order
to “help the user easily browse these images” (answer-page 3).
Appellant argues only that Anderson pertains to viewing and
handling multiple images while the instant invention pertains to
segmenting a single image (brief-page 7). Appellant has no
quarrel with the propriety of combining the references and
appellant does not argue that Angiulo does not disclose what the
examiner alleges it to disclose. Thus, the sole argument,
directed at all of the claims, is that Anderson does not view and
handle a single image.
We have carefully reviewed the evidence before us and we
conclude from such a review that the examiner has established a
prima facie case of obviousness with regard to the instant
claimed subject matter that has not been successfully rebutted by
appellant.
Taking instant claim 1 as exemplary, we agree with the
examiner that the various images within group types 90” in Figure
11 of Anderson may be reasonably interpreted as cells making up
an entire single image comprising the 9 different images therein.
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A user viewing this composite sees one large image comprising 9
smaller images. Thus, Figure 11 of Anderson does, indeed, show a
window “divided into a plurality of cells, each of said cells
being associated with different segments of an image,” as
claimed.
Appellant’s citation of various portions of Anderson
reciting a plurality of “images” is not persuasive of an error in
interpreting Figure 11 of Anderson as being a single image
comprised of 9 segments. Neither are we convinced by appellant’s
attempt to distinguish the instant claimed invention over
Anderson by citing the claim language calling for an association
between a window cell and a segment of an image (brief-page 9).
Clearly, the “image” in Anderson is the image shown in Figure 11,
wherein that single image comprises 9 different segments each
segment being shown in each of the cells K08-K16. There is an
association between a window cell (e.g., the airplane shown in
cell K08) and a segment (that segment depicting the airplane part
of the overall image) of the image.
Since appellant has not convinced us of any error in the
examiner’s reasoning, we will sustain the rejection of claims
1-44 under 35 U.S.C. § 103.

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The examiner’s decision is affirmed.

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).

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AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSID D. SAADAT )
Administrative Patent Judge )

EAK/ce
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Application No. 09/843,566

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STEVEN W. ROTH
IBM CORPORATION, DEPT. 917
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829