Ex Parte Shima

Patent Trial and Appeal Board

Apr 28, 2015

12206772 (P.T.A.B. Apr. 28, 2015)

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:

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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
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