Ex Parte Tuli

Board of Patent Appeals and Interferences

Jul 7, 2010

10308237 (B.P.A.I. Jul. 7, 2010)

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.
10/308,237 12/03/2002 Raja Tuli 5486
7590 07/08/2010
James C. Scheller, Jr.
Blakely, Sokoloff, Taylor, & Zafman LLP
12400 Wilshire Boulevard
Seventh Floor
Los Angeles, CA 90025
EXAMINER
PESIN, BORIS M
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
07/08/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAJA TULI
____________

Appeal 2009-004832
Application 10/308,237
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY, III, and STEPHEN
C. SIU, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 3-6. Claim 2 has been canceled. Br. 1, 11. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 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.
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STATEMENT OF THE CASE
Appellant invented a computer that sends images to a remote device
(e.g., a Personal Digital Assistant (PDA)). These images can be frozen and
unfrozen at the computer’s browser. See generally Spec. 2-4, 33-34. Claim
1 is reproduced below with the key disputed limitations emphasized:
1. A host computer which receives information from an outside
source, contains
a browser with a window which renders and freezes the
information onto a virtual display in its memory,
wherein a software program reduces the color depth of the virtual
display, compresses the virtual display and sends it to a remote device
capable of receiving, decompressing, storing into memory and
displaying it to a user on a display screen,
wherein if the user clicks on the display screen or enters text on the
remote device, the display is unfrozen at the browser and the virtual
display sent again to the remote device only if the information has
changed. (emphasis added).
The Examiner relies on the following as evidence of unpatentability:
Tuli US 2001/0028470 A1 Oct. 11, 2001
Boaz US 2004/0010464 A1 Jan. 15, 2004
(filed Aug. 9, 2002)

THE REJECTIONS
1. The Examiner rejected claims 1 and 3-6 under 35 U.S.C. § 112,
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second paragraph. Ans. 3.2
2. The Examiner rejected claims 1 and 3-6 under 35 U.S.C. § 103(a)
as unpatentable over Tuli and Boaz. Ans. 3-6.

THE INDEFINITENESS REJECTION
Regarding claim 1, the Examiner finds that the recitation to “the
display” is indefinite because this limitation does not clearly define whether
the recited display is “the virtual display” or “the display screen.” Ans. 3.
Appellant argues that an ordinarily skilled artisan would understand
the entire phrase “the display is unfrozen at the browser” to refer to the
virtual display and not hardware, like the recited display screen. Br. 5-6.
The issue before us, then, is as follows:

ISSUE
Under § 112, has the Examiner erred in rejecting claim 1 by finding
that the recitation “the display” is indefinite when an ordinarily skilled
artisan considers the claim as a whole and in light of the disclosure?

FINDINGS OF FACT (FF)
1. Claim 1 recites “[a] host computer . . . contains a browser with a
window which renders and freezes the information onto a virtual display in
its memory.” Claim 1, ll. 1-3.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed February
13, 2008 and (2) the Examiner’s Answer mailed May 15, 2008.
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2. Claim 1 recites “compress[ing] the virtual display and send[ing] it
to a remote device capable of . . . displaying it to a user on a display
screen[.]”
3. Claim 3 depends from claim 1 and recites “the virtual display is
unfrozen at the browser[.]” Claim 3, ll. 2-3.
4. The Specification describes a server 71 containing a web browser
74 on which a web page 70 is displayed, and the server 71 transmits data 84
to a PDA 72. The disclosure explains that the web page image is frozen
after the web page is fully rendered on the browser and then sent to the
PDA. The image can be unfrozen at the browser so changes in the frozen
image can be sent to the PDA. Spec. 33:11-29, 34:.4-10; Figs. 9, 16.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).

ANALYSIS
Based on the record before us, we find error in the Examiner’s
indefiniteness rejection of independent claim 1 which recites, in pertinent
part, “the display is unfrozen at the browser[.]” Claim 1 recites two different
displays: (1) a “virtual display” located in the host computer (FF 1), and (2)
a “display screen” associated with the remote device (FF 2). However,
claim 1 also describes that the browser freezes information on a virtual
display. FF 1. Thus, the subsequent phrase, “the display is unfrozen at the
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browser” suggests this display is also the previously-recited “virtual
display.” Claim 3 further assists in understanding this phrase and explicitly
recites “the virtual display is unfrozen at the browser” (emphasis added).
When considering claim 1 as a whole, we find that “the display” that is
unfrozen at the browser is the virtual display—not the display screen.
Moreover, we must consider how an ordinarily skilled artisan would
understand the claim in light of the Specification. See Orthokinetics, 806
F.2d at 1576. The Specification explains that the browser is located within
the server or host computer, and that the freezing and unfreezing steps occur
at the browser. See FF 4. Thus, in light of the disclosure, an ordinarily
skilled artisan would understand “the display” being unfrozen at the browser
to mean the recited virtual display.
For the foregoing reasons, Appellant has shown error in the
indefiniteness rejection of independent claim 1. We, therefore, will not
sustain the rejection of claim 1 and claims 3-6 which depend from claim 1.

THE OBVIOUSNESS REJECTION OVER TULI AND BOAZ
Regarding independent claim 1, the Examiner finds that Tuli teaches
all of the limitations, except for a browser that freezes information on a
virtual display in its memory, the display is unfrozen at the browser when
the user clicks on the display screen or enters text on the remote device, and
the virtual display is sent to the remote device again if the information has
changed. Ans. 3-4. To cure these deficiencies, the Examiner cites Boaz’s
teachings related to a user selecting a freeze mode by touching a hotspot and
selecting an unfreeze command to return to motion. Ans. 4.
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Appellant argues that the Boaz does not teach a browser that renders
and freezes information on a virtual display and whether clicking on the
remote device unfreezes the virtual display at the browser located on the
host computer as required by claim 1. Br. 7-8.
The issue before us then is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Tuli and Boaz collectively would have taught or suggested a browser
that renders and freezes information on a virtual display, and unfreezes the
virtual display at the browser if the user clicks or enters text on the remote
device’s display screen?

FINDINGS OF FACT
5. Tuli discloses a host computer 1 running a browser program 2 that
receives information required to generate a web page from the outside and
renders the information onto a virtual display in its memory. Host computer
1 includes software 4 that reduces the information’s color depth. The
reduced portion is compressed and sent to the remote user 3 for viewing on a
display screen 20. Tuli, ¶¶ 0018, 0022; Figs. 1, 4.
6. Boaz teaches a networked video phone system 100 where a user
(e.g., client 140) can view the remote participant’s image as real-time
motion image 876 on a display screen 862. Boaz, ¶¶ 0028, 0030, 0071;
Figs. 1, 8B.
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7. Boaz discusses freezing and unfreezing a real-time motion image
by touching a display screen’s hotspot. Boaz, ¶¶ 0051, 0075, 0079-80; Fig.
8B.
8. Boaz teaches a server is located on LAN 106. Boaz, ¶ 0031.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 1. Tuli discloses a host
computer that includes a browser to render information on to a virtual
display in its memory and sends information to a user for display on a
display screen. FF 5. However, as the Examiner admits (Ans. 4), Tuli does
not teach the additional feature of a browser that freezes the information on
the virtual display or unfreezes the browser if the user clicks on the display
screen or enters text on the remote device. Boaz must, therefore, cure this
deficiency.
Boaz teaches a video phone system where the user can communicate
through a network and view the remote participant’s image as real-time
motion image on a display screen. FF 6. Boaz thus also teaches a host
computer sending information to a remote device’s display screen. See FF
6, 8. Boaz further explains the real-time motion image can be frozen and
unfrozen by touching a display screen’s hotspot. FF 7. However, Boaz fails
to provide any details regarding where the freezing and unfreezing function
of the image occurs. See id. Boaz has simply no discussion whether this
feature happens at the remote device or a server, such as one located in LAN
106. See FF 7-8. Moreover, the absence of this teaching in Boaz provides
no suggestion that the freezing and unfreezing of the virtual display would
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be performed at the server or a host computer. We, therefore, cannot
conclude that Boaz’s teaching when combined with Tuli would have taught
or suggested the host computer having a browser that freezes information on
to a virtual display and unfreezes the virtual display at the browser as
required by claim 1.
Lastly, we recognize that the recited phrase, “the display is unfrozen”
is a conditional phrase performed only “if the user clicks on the display
screen or enters test on the remote device.” But the prior art must
nevertheless teach or suggest a host computer with the ability to perform this
conditional limitation to render claim 1 obvious—which it does not.
For the foregoing reasons, Appellant has shown error in the
obviousness rejection of independent claim 1 based on Tuli and Boaz. We
therefore will sustain the rejection of claim 1, and claims 3-6 which depend
from claim 1.

CONCLUSION
The Examiner erred in rejecting claims 1 and 3-6 under §§ 112 and
103.

ORDER
The Examiner’s decision rejecting claims 1 and 3-6 is reversed.

REVERSED

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erc

James C. Scheller, Jr.
Blakely, Sokoloff, Taylor, & Zafman LLP
12400 Wilshire Boulevard
Seventh Floor
Los Angeles CA 90025