Ex Parte Seifert

Board of Patent Appeals and Interferences

Dec 8, 2010

10642506 (B.P.A.I. Dec. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTIAN SEBASTIAN SEIFERT
____________________

Appeal 2009-007164
Application 10/642,5061
Technology Center 2100
____________________

Before JAMES D. THOMAS, JAY P. LUCAS, and DEBRA K.
STEPHENS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed August 18, 2003. The real party in interest is Hewlett-
Packard Development Co.
2 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 2009-007164
Application 10/642,506

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1, 3 to 5, and 7 to
24 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claim 2 is
cancelled (Brief 3, middle). The Examiner finds that claim 6 is allowable
(Final Rej. 12, top, mailed March 17, 2008).

We reverse.

Appellant’s invention relates to a graphical user interface that
provides efficiencies for users employing a computer mouse (Spec. 17, ll. 29
to 31). In the words of Appellant:
[T]he user is not forced to move the mouse as far
as with prior solutions. After the item of the menu
14 has been chosen[,] the pointer is located in the
same position as it was in before the menu was
opened. This can be advantageous if context-
sensitive menus are opened, for example. This is
because after the item of the menu has been
selected, the mouse pointer 16 still stays over the
element for which the context menu was opened,
providing the ability to proceed immediately with
further commands. When using the computer
mouse, the hand of the user is less moving because
only the fingers have to be moved, not the whole
hand, as when moving a conventional mouse.
Thus, a general purpose of the embodiment is to
provide an improved graphical user computer
interface [that] is easy to handle and reduces a
user’s loss of time.
(Id. at ll. 20 to 31).

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Application 10/642,506

Independent claim 10 illustrates the claims on appeal:
10. The graphical user computer interface
enabling a user to open at least one menu and to
select an item of the menu by means of a pointing
device, said pointing device controlling a
moveable pointer and a moveable menu item
focus,

wherein the interface is arranged such that,
after the menu has been opened, the pointer stays
at the position it was in when the menu was
opened, while the menu item focus is moveable
within the menu by means of the pointing device
without moving the pointer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rosenberg US 6,128,006 Oct. 03, 2000

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 3 to 5, and 8 to 22 stand rejected under 35 U.S.C. § 102(b)
for being anticipated by Rosenberg.
R2: Claims 7, 23, and 24 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Rosenberg.

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. §§ 102(b) and 103(a). The pivotal issue
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Application 10/642,506

specifically turns on whether the Rosenberg patent teaches Appellant’s
negative limitation “without moving the pointer” of claim 10.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a graphical user computer interface, computer,
medium, and method for a user to open a menu item using a computer
mouse, such that when the menu is opened the menu item focus is moveable
within the menu without moving the pointer. (See claim 1.)
Rosenberg
2. The Rosenberg reference discloses a graphical user computer interface
for a user to open a menu item using a computer mouse, such that when the
menu is opened the menu item focus moves concurrently with the cursor
within the menu. (See col. 17, ll. 30 to 40; Fig. 9.)

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

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Appeal 2009-007164
Application 10/642,506

ANALYSIS
Argument with respect to the rejection
of claims 1, 3 to 5, and 7 to 24
under 35 U.S.C. §§ 102(b) and 103(a) [R1 and R2]

The Examiner has rejected the noted claims for being anticipated or
rendered obvious by Rosenberg, pages 3 to 10 of the Examiner’s Answer.
Appellant reiterate that independent claim 10 recites “the pointer stays
at the position it was in when the menu was opened, while the menu item
focus is moveable within the menu by means of the pointing device without
moving the pointer.” (Brief 8, bottom). However, Appellant says that if the
Rosenberg prior art reference’s wheel 16 is operated by a user to control up-
and-down movements of highlighter 210, then cursor/pointer 204 would also
be moved up and down at the same time, contrary to the claim limitation that
the pointer is not moved (Brief 9, top).
We find Appellant’s above-stated argument persuasive and dispositive
in the case on appeal. We find that Appellant has invented a graphical user
computer interface, computer, medium, and method for a user to open a
menu item using a computer mouse, such that when the menu is opened the
menu item focus is moveable within the menu without moving the pointer
(FF#1). In contrast, we find that the Rosenberg reference discloses a
graphical user computer interface for a user to open a menu item using a
computer mouse, such that when the menu is opened the menu item focus
moves concurrently with the cursor within the menu (FF#2).
[U]nless a reference discloses within the four corners of
the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the
same way as recited in the claim, it cannot be said to
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Appeal 2009-007164
Application 10/642,506

prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102.
Net MoneyIN, Inc. v. VeriSign et al., 545 F.3d 1359, 1371 (Fed. Cir.
2008) (emphasis added).
Contrary to the Examiner’s findings, this Board concludes that the
Examiner has not found a teaching in Rosenberg for the negative claim
limitation “without moving the pointer,” as recited in exemplary
independent claim 10. Whether Rosenberg’s mouse moves or is disabled, as
the Examiner asserts in the “Response to Arguments,” simply is not
pertinent to Appellant’s claim limitation “without moving the pointer,” since
Rosenberg’s cursor alone is being equated to Appellant’s claimed “pointer”
(col. 6, ll. 17 to 22; Ans. 4, top and 13, middle). Since the reference teaches
that the wheel 16 moves the cursor 204 (i.e., the claimed “pointer”) (see
FF#2) as the selection from the drop down menu is performed, we find that
the prior art does not teach a key element recited in Appellant’s claim 10.
We thus agree with Appellant that Rosenberg’s teachings do not meet the
claim limitation “without moving the pointer.” Accordingly, we reverse the
rejections R1 and R2.
Claims 1, 3 to 5, 7 to 9, and 11 to 24 stand with representative claim
10.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 1, 3 to 5,
and 7 to 24.
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Appeal 2009-007164
Application 10/642,506

DECISION
We reverse the Examiner’s rejections R1 and R2 of claims 1, 3 to 5,
and 7 to 24.

REVERSED

peb

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