Ex Parte Smith et al

Board of Patent Appeals and Interferences

Mar 22, 2006

09421580 (B.P.A.I. Mar. 22, 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for publication and is not binding precedent of the Board.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 KIM C. SMITH, THEODORE DAVID,
MICHAEL MOSTYN and THOMAS A. KAYL
___________
Appeal No. 2006-0961
Application No. 09/421,580
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and KRASS, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-7, 10-20, 23-33, 36-46, and 49-76.
The invention is directed to a navigation menu for use in
graphical user interface (GUI). In particular, a three-dimensional
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display of menu options is displayed to a user, maximizing the use
of a display’s real estate by presenting all available options at
once while presenting some options in a more pronounced manner.
Representative independent claim 1 is reproduced as follows:
1. A user interface comprising:
a display;
a cursor capable of being displayed on said display;
a cursor control device capable of controlling said cursor’s
position and movement on said display;
at least two selectable targets displayed on at least a
portion of said display; and all of said at least two selectable
targets displayed on said at least a portion of said display
capable of being simultaneously displayed in a simulated rotation
about an axis while each one of said all of said at least two
selectable targets displayed on said at least a portion of said
display remains continuously selectable during said simulated
rotation.
The examiner relies on the following references:
Goh 5,678,015 Oct. 14, 1997
Nielsen 6,078,935 Jun. 20, 2000
(filed Mar. 15, 1999)
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We refer to this as the “brief.”1
3
Claims 1-3, 5-7, 10-16, 18-20, 23-29, 31-33, 36-42, 44-46, and
49-76 stand rejected under 35 U.S.C. § 102(b) as anticipated by Goh.
Claims 4, 17, 30, and 43 stand rejected under 35 U.S.C. § 103
as unpatentable over Goh in view of Nielsen.
Claims 8, 9, 21, 22, 34, 35, 47, and 48 have been indicated by
the examiner as being directed to allowable subject matter and are
not on appeal before us.
Reference is made to the supplemental brief and answer for1
the respective positions of appellants and the examiner.
OPINION
Turning, first, to the rejection under 35 U.S.C. § 102(b), a
rejection for anticipation under Section 102 requires that the four
corners of a single prior art document describe every element of
the claimed invention, either expressly or inherently, such that a
person of ordinary skill in the art could practice the invention
without undue experimentation. In re Paulsen, 30 F.3d 1475, 1478-
79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
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With regard to the independent claims 1, 14, 27, and 40, the
examiner contends that Goh discloses at least two selectable
targets displayed on at least a portion of the display, the
examiner explaining that each window in Figure 5 represents each
selectable target; that the two selectable targets are capable of
being displayed in a simulated rotation about an axis while
remaining continuously selectable during the simulated rotation
(pointing to column 6, lines 1-10, of Goh); and that a cursor is
capable of being displayed on the display, wherein a cursor
controlled device capable of controlling the cursor’s position and
movement on the display is disclosed by Goh at column 4, lines 15-
16.
Appellants argue that the claims require that each one of the
selectable targets displayed “remains continuously” selectable
during the simulated rotation, thus reducing wait time and
facilitating use of the device because the options are always
selectable.
We have reviewed the evidence before us, including the
disclosure of Goh and the arguments of appellants and the examiner,
and we conclude therefrom that the examiner has not established a
prima facie case of anticipation.
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The examiner makes a valiant effort to broadly interpret the
instant claim language and apply the Goh reference thereagainst, by
determining that Goh’s windows 104 and 106, although only two of
four windows depicted, constitute “at least two selectable targets
displayed on said at least a portion of said display capable of
being simultaneously displayed in a simulated rotation about an
axis.” With this much, we agree. Clearly, the windows in Goh are
rotated about a vertical axis and at a point, as in Goh’s Figure 5,
windows 104 and 106 are simultaneously displayed on a portion of
the display. Also, windows 104 and 106 clearly constitute “at
least two selectable targets.” The problem with the examiner’s
analysis, as we view it, is that the independent claims require
“all of said at least two selectable targets . . . capable of being
simultaneously displayed.” All of Goh’s targets constitute four
windows, not merely windows 104 and 106. Now, the examiner’s
interpretation of windows 104 and 106 being “all of at least two
selectable targets . . . ” is reasonable, as far as it goes.
However, the claims further require that “each one of said all of
said at least two selectable targets displayed on said at least a
portion of said display remains continuously selectable during said
simulated rotation.”
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If we take the examiner’s interpretation and apply it to the
claim language, windows 104 and 106, allegedly comprising “all of
said at least two selectable targets . . . ,” is displayed
simultaneously at some point in the rotation, but when windows 104
and/or 106 are no longer in the forefront, during other points in
the rotation, they are no longer selectable. Therefore, if we
interpret windows 104 and 106 of Goh as the examiner wishes us to
interpret them, these targets do not “remain continuously
selectable during said simulated rotation,” as required by the
claims.
If we interpret all four of Goh’s windows, in Figure 5, as
being the “at least two selectable targets . . . ,” there will
always be at least two of these four targets “continuously
selectable,” as claimed, but they cannot all be “simultaneously
displayed in a simulated rotation,” as also required by the claims.
The examiner’s view is that where the two back windows in Goh
are overlapped, windows 104 and 106 are represented for users to
select, and when the two back windows are in the front and windows
104 and 106 are rotated to the back, then the two erstwhile back
windows are now in the front for users to select. Therefore,
concludes the examiner, the system of Goh always provides at least
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two windows for a user to select continuously during said simulated
rotation (see pages 8-9 of the answer). The problem with this part
of the examiner’s analysis is that, according to the instant claim
language, we must be talking about the same “at least two
selectable targets” that are “simultaneously displayed” and remain
“continuously selectable” during the rotation. The examiner’s
analysis switches the windows constituting the “at least two
selectable targets” depending on which two of Goh’s windows are in
the forefront. This is not reasonable in view of the instant claim
language.
Accordingly, Goh cannot anticipate the instant claimed subject
matter, and we will not sustain the rejection of claims 1-3, 5-7,
10-16, 18-20, 23-29, 31-33, 36-42, 44-46, and 49-76 under 35 U.S.C.
§ 102(b) as anticipated by Goh.
We also will not sustain the rejection of claims 4, 17, 30,
and 43 under 35 U.S.C. § 103 because these claims depend from
independent claims 1, 14, 27, and 40, and Nielsen does not provide
for the deficiencies of Goh, noted supra, the examiner merely
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relying on Nielsen for a teaching of an interface being capable of
displaying additional information associated with a specific target
when the cursor is positioned at least partially within the
specific target’s hotspot boundary.
Accordingly, the examiner’s decision is reversed.
REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERROL A. KRASS )
Administrative Patent Judge )
EAK/dal
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