Ex Parte ShimaDownload PDFPatent Trial and Appeal BoardApr 28, 201512206772 (P.T.A.B. Apr. 28, 2015) Copy Citation 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. 12/206,772 09/09/2008 Kotaro Shima JP920060154US1 9485 58139 7590 04/28/2015 IBM CORP. (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 EXAMINER ELL, MATTHEW ART UNIT PAPER NUMBER 2172 MAIL DATE DELIVERY MODE 04/28/2015 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 KOTARO SHIMA ____________ Appeal 2012-008021 Application 12/206,772 1 Technology Center 2100 ____________ Before ADRIENE LEPIANE HANLON, DONALD E. ADAMS, and ELIZABETH A. LaVIER, Administrative Patent Judges. LaVIER, Administrative Patent Judge. DECISION ON APPEAL On appeal, the Examiner maintains the final rejections of claims 1–3, 6–8, and 10. (Ans. 8–13.) The Examiner withdraws the rejections of claims 4, 5, 9, and 11, but objects to these claims as dependent upon a rejected base claim. (Ans. 7.) Appellant seeks reversal of the Examiner’s rejections, pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM–IN–PART. 1 According to Appellant, the real party in interest is International Business Machines Corporation. (Appeal Br. 1.) Appeal 2012-008021 Application 12/206,772 2 BACKGROUND The Specification describes a method and apparatus for “readily selecting a desired object on a display screen.” (Spec. ¶ 1.) Claim 1 is representative: 1. A method for facilitating selection of an object on a display screen of a computer, comprising the steps of: the computer selecting a specific object on the display screen in response to a user input; the computer extracting any of a plurality of objects displayed on the display screen that overlaps the selected specific object as a selection candidate by following a tree structure of the objects; and the computer displaying a selection switching view including an element representing the selection candidate in the vicinity of the selected specific object. (Appeal Br. 26 (Claims App.) (emphasis added).) REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claims 1–3, 7, 8, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lebovitz 2 in view of Bou. 3 (Ans. 8.) 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lebovitz in view of Bou, further in view of Connolly. 4 (Ans. 12.) 2 U.S. Patent No. 6,124,861, issued Sept. 26, 2000. 3 U.S. Patent No. US 7,000,197 B1, issued Feb. 14, 2006. 4 U.S. Patent Application Pub. No. US 2005/0204029 A1, issued Sept. 15, 2005. Appeal 2012-008021 Application 12/206,772 3 DISCUSSION A. Claims 1, 8, & 10 The Examiner finds Lebovitz discloses each limitation of claim 1, including extracting overlapping objects, except that the Examiner acknowledges that Lebovitz “does not however teach that the computer extracts the plurality of objects by following a tree structure of the objects.” (Ans. 10 (emphasis added).) For this, the Examiner relies on Bou. (Id. (citing Bou col. 5, ll. 16–18, 28-31, 33–35).) Appellant argues that the references fail to teach the “extracting” limitation of claim 1, and similar limitations of claims 8 and 10. (Appeal Br. 4–7.) As Appellant argues these claims together, we treat claim 1 as representative of claims 8 and 10. Specifically, Appellant argues: While Lebovitz teaches providing a selection box 312 providing the option of selecting one of the possible objects for manipulation if more than one object could be selected at the current cursor location, there is no language in Lebovitz or Bou that suggests selecting the objects to be provided in selection box 312 of Lebovitz by following a tree structure of the objects. Instead, Bou simply teaches determining and obtaining relationships between objects, which can be performed in many manners, such as via a table. (Appeal Br. 5.) Appellant asserts that the related objects in Bou may include non-overlapping objects, and thus the combination of Lebovitz and Bou “would clearly not teach extracting objects that overlap a selected object by following a tree structure of the objects.” (Reply Br. 4.) We are unpersuaded. Appellant acknowledges that Bou’s parent-child relationships among objects “may be expressed in a tree data structure,” (Reply Br. 3), and thus admits that Bou teaches the only limitation of claim Appeal 2012-008021 Application 12/206,772 4 1 for which the Examiner relies exclusively on Bou, i.e., following a tree structure to extract objects. (See Ans. 10.) Appellant’s discussion of Bou’s alleged failure to teach extracting objects that overlap the selected specific object (see Reply Br. 3–4) fails to account for the Examiner’s reliance on Lebovitz to teach this aspect of claim 1 (see Ans. 9 (citing Lebovitz col. 4, ll. 46–58 (“[I]f more than one object could be selected at the current cursor location ... [w]hen the user clicks the appropriate mouse button ... the user is provided with a selection box showing all the possible selections.”) (alteration original))). Appellant also argues that the Examiner’s rationale for combining Lebovitz and Bou is insufficient. 5 (See Appeal Br. 11–13.) The Examiner finds that improving efficiency is a sufficient motivation, and that “a software engineer of ordinary skill in the art would clearly be able to combine Lebovitz and Bou to achieve the increased efficiency by searching via tree structure.” (Ans. 18, see also id. at 10.) We agree with the Examiner and find Examiner’s explanation sufficient to establish a prima facie case of obviousness. Accordingly, we affirm the Examiner’s rejection of claim 1. Claims 8 and 10 fall with claim 1. B. Claim 2 Appellant does not specifically address claim 2, which depends on claim 1. Thus, claim 2 falls with claim 1. 5 Appellant presents the combination argument generally as to claims 1–3, 7, 8, and 10. (See Appeal Br. 11–13.) As we are unpersuaded with respect to claim 1, we need not address this argument again with respect to the other claims. Appeal 2012-008021 Application 12/206,772 5 C. Claim 3 Claim 3 recites: 3. The method according to claim 1, wherein in response to the user selecting a specific element included in the selection switching view, said extracting step is repeated with an object corresponding to the specific element as a new specific object, to rewrite the contents of the selection switching view with the element representing the selection candidate newly extracted through the repetition of the step.” (Appeal Br. 26 (Claims App.) (emphases added).) Appellant argues Lebovitz does not teach these elements. (See Appeal Br. 8–11; Reply Br. 5–8.) As a general matter, we agree with the Examiner that Lebovitz teaches a repeatable extraction process in Figure 5. (Ans. 15.) Figure 5 of Lebovitz is reproduced below: Appeal 2012-008021 Application 12/206,772 6 Figure 5 of Lebovitz shows “a flow diagram of a process of a user attempting to select an object on a graphic display.” (Lebovitz, col. 7, ll. 35–36.) Appellant argues that the repetition in Lebovitz is not “in response to the user selecting a specific element” because in Lebovitz, the user must move the mouse to position the cursor over other objects to trigger the repetition. (Appeal Br. 9–10.) The Examiner responds that “the repetition of the process is done immediately after selecting the element in step 512. This can be said to be done ‘in response’ to the selection.” (Ans. 16.) The Examiner’s explanation is not persuasive. Figure 5 of Lebovitz clearly shows that further mouse movement, after the selected element has been clicked, is required to repeat the process. Indeed, Lebovitz explains that “[o]nce the user finds the desired element, the appropriate mouse button is clicked in step 528, and the corresponding element or object is selected in step 512 for further user manipulation.” (Lebovitz, col. 8, ll. 17–20.) Thus, by the time the user might move the mouse to trigger repetition of the process in Lebovitz, the “desired element” has already been selected. We discern no teaching in Lebovitz of repeating the extraction process as part of the method for selecting the same object that was the target of the first extraction process, and the Examiner does not rely on Bou for this element. Accordingly, we conclude the Examiner has not established a prima facie case of obviousness as to claim 3, and reverse the Examiner’s rejection of this claim. Appeal 2012-008021 Application 12/206,772 7 D. Claim 6 Claim 6 depends from claim 1, and additionally recites “wherein the selection switching view includes a plurality of tabs, and each tab has the element displayed thereon.” (Appeal Br. 27 (Claims App.)) Appellant takes no issue with the Examiner’s citation to Connolly as teaching this additional limitation, but rather argues that the Examiner did not provide a sufficient rationale for combining Connolly with Lebovitz. As with claim 1, the Examiner cites efficiency as a motivation: [A] software engineer of ordinary skill in the art would clearly be able to combine Lebovitz-Bou with Connolly to achieve a tab interface that takes up minimal space on the display screen. Such a goal is directed towards efficiency, namely efficient use of limited display screen space to place interface objects. (Ans. 19.) We agree with the Examiner that this rationale is sufficient to support a prima facie case of obviousness. Accordingly, we affirm the Examiner’s rejection of claim 6. E. Claim 7 Appellant presents no arguments for the patentability of claim 7 except that claim 7, which depends from claim 1, is patentable for the same reasons as claim 1. (See Appeal Br. 8.) Accordingly, claim 7 falls with claim 1. CONCLUSION The Examiner’s final rejections of claims 1, 2, 6–8, and 10 are affirmed. The Examiner’s final rejection of claim 3 is reversed. AFFIRMED–IN–PART tc Copy with citationCopy as parenthetical citation