Ex Parte Sibert

Board of Patent Appeals and Interferences

Jan 12, 2005

09475941 (B.P.A.I. Jan. 12, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK A. SIBERT
____________
Appeal No. 2004-1413
Application No. 09/475,941
____________
ON BRIEF
____________
Before JERRY SMITH, DIXON, and SAADAT, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-11,
which are all of the claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 2004-1413
Application No. 09/475,941
2
Appellant's invention relates to a method and system for selecting a target
window for automatic fill-in. An understanding of the invention can be derived from a
reading of exemplary claims 1 and 7, which are reproduced below.
1. A computer-implemented method of automatically inserting
data into at least one window displayed in a graphical user interface (GUI)
in a desktop configuration, comprising the steps of:
providing a list of selectable elements, each of said selectable
elements in said list associated with a respective window presently
opened in said GUI;
designating one of said opened windows for viewing by highlighting
one of said selectable elements in said list;
automatically moving said designated open window to the top of the
desktop when said one of said selectable elements is highlighted; and
automatically inserting said data into said designated open window
when said one of said selectable elements is selected.
7. In a computing environment, a tool for targeting, for automatic
insertion of data, one of a plurality of windows displayed in a graphical
user interface in a desktop configuration, said tool comprising:
a data storage window for storing data to be inserted into a target
window;
a selection window generating a list of selectable elements
corresponding to said plurality of windows;
a designator for designating one of said selectable elements,
wherein the designation of one of said selectable elements from said list
causes the window corresponding to said selectable element to be
displayed on top of the desktop as the target window.
Appeal No. 2004-1413
Application No. 09/475,941
3
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Douglas et al. (Douglas) 5,491,784 Feb. 13, 1996
Root 5,606,674 Feb. 25, 1997
Crawford 5,754,176 May 19, 1998
Kausik 6,170,058 Jan. 2, 2001
(Filed Dec. 23, 1997)
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Root in view of Crawford. Claims 2-11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Root and Crawford in view of Kausik. Claims 1-11 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Douglas in view of
Crawford.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 11, mailed Oct. 22, 2003) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 10, filed Apr. 29, 2003) and reply brief
(Paper No. 12, filed Dec. 29, 2003) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
Appeal No. 2004-1413
Application No. 09/475,941
4
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellant argues that neither Root nor Crawford teaches or suggests a two-step
process to move an open window to the top to (pre)view the window prior to the
selection of the window for automatic insertion of data. (Brief at pages 6-8 and reply at
pages 2 and 3.) The examiner maintains that Root and Douglas clearly teach
designating a window for viewing, moving the designated window to the top of the
desktop and inserting data into the window when one of the selectable elements is
highlighted/selected. (Answer at page 6.) We disagree with the examiner’s
interpretation of the teachings of Root and Douglas with respect to the claimed
invention. From the examiner’s position, it appears that the examiner is interpreting the
highlighting as the selection, but we find that independent claim 1 requires two separate
steps. The first step is highlighting one of the selectable choices of windows which will
move the corresponding window to the top of the desktop. This is not the selection
step. Next, the user decides if this is the window which is desired to have the data
automatically inserted in the window. If not, then the user may highlight a different one
of the choices of selectable windows and that next choice is moved to the top of the
desktop for determination by the user if this one of the selectable windows is the one
which the user desires to have the automatic fill function performed. While it would
appear that the highlighting and moving of the window to the top of the desktop could be
Appeal No. 2004-1413
Application No. 09/475,941
5
a “selection,” we find that this is a choice of windows to preview rather than the
selection for the automatic fill function.
Additionally, the examiner remarks that appellant merely is arguing the
references individually which is not an adequate showing of nonobviousness. (See
answer at pages 6-7.) We disagree with the examiner. From our review of the
teachings of Root or Douglas in combination with Crawford, we do not find the two-step
process as recited in independent claim 1, and we do not find that the examiner has
established a convincing line of reasoning absent a clear teaching why it would have
been obvious to one of ordinary skill in the art at the time of the invention to have a two-
step process as recited in independent claim 1. Therefore, we find that the examiner
has not established a prima facie case of obviousness of the invention as recited in
independent claim 1, and we cannot sustain the rejection of independent claim 1.
With respect to dependent claims 2-6, the examiner adds the teachings of Kausik
as evidence of the use of a digital wallet. (See answer at page 4.) While we agree with
the examiner that a digital wallet is not new, we do not find that the teachings of Kausik
remedy the deficiency in the base combination noted above. Therefore, we find that the
examiner has not established a prima facie case of obviousness of the invention
recited in dependent claims 2-6, and we cannot sustain the rejection of independent
claims 2-6.
Appeal No. 2004-1413
Application No. 09/475,941
6
With respect to independent claims 7, 9 and 11, the examiner summarily includes
these claims as rejected under the same basis as dependent claim 4. We find that
independent claims 7, 9 and 11 do not recite the same two-step process of how to
manipulate the open windows and bring one to the top to determine if an auto-fill
function is desired to be performed and to perform the auto-fill. Here, the two steps and
apparatus performing these two steps are for generating a list of selectable elements
and designating one of these selectable elements to be moved to the top of the
desktop. While the examiner does not specifically address this difference in these
claims from independent claim 1, we find that Root alone teaches the invention recited
in independent claim 7. Specifically, Figures 6A-D teach that there may be multiple
open windows and the pull down menu 640 for the task list which designates the
application for insertion of data and the user selecting the focus button 635 which
moves the target application window to the top of the desktop. (See Root at columns
6-7.) Therefore, we find that Root teaches and fairly suggests the invention as recited
in independent claim 7. Since independent claim 7 does not recite a step or element
that realizes an auto-fill function, we find that the preamble merely sets forth an
intended field of use limitation which does not limit the claimed apparatus. Similarly, we
find that Douglas teaches the invention of independent claim 7 for the reasons set forth
by the examiner in the discussion of independent claim 1. While we do not find that
Douglas teaches or suggests the invention as recited in independent claim 1, we find
Appeal No. 2004-1413
Application No. 09/475,941
7
independent claim 7 to be broader than independent claim 1 as discussed above.
Since appellants have elected to group all the claims together, we will similarly group
claims 8-11 as falling with independent claim 7.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-6 under 35 U.S.C.
§ 103 is reversed, and the decision of the examiner to reject claims 7-11 under
35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JLD:clm
Appeal No. 2004-1413
Application No. 09/475,941
8
Mark D. Simpson
Synnestvedt & Lechner
2600 Aramark Tower
1101 Market St.
Philadelphia, PA 19107-2950