11124651 (B.P.A.I. Jul. 25, 2011)

Ex Parte Uotila et al

Board of Patent Appeals and InterferencesJul 25, 2011

11124651 (B.P.A.I. Jul. 25, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/124,651 05/09/2005 Aleksi Uotila 896.0002.U1(US) 2152 29683 7590 07/25/2011 HARRINGTON & SMITH 4 RESEARCH DRIVE, Suite 202 SHELTON, CT 06484-6212 EXAMINER TRAN, TUYETLIEN T ART UNIT PAPER NUMBER 2179 MAIL DATE DELIVERY MODE 07/25/2011 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 ALEKSI UOTILA, TUIJA LINDFORS and AULI JOKI ____________ Appeal 2009-014219 Application 11/124,651 Technology Center 2100 ____________ Before GREGORY J. GONSALVES, JASON V. MORGAN and ERIC B. CHEN, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014219 Application 11/124,651 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-7, 10, 11, and 13-25. (App. Br. 2.) Claims 8, 9, and 12 were cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Disclosed Invention1 The disclosed invention includes a user interface “(UI) property hint 10 that an underlying UI development environment 12 may employ to determine whether a Button 14 should be drawn, as it is defined by an application 16 for its graphical user interface (GUI) 18, if the available device UI screen 18A is a touch screen (or otherwise suitable for use with the Button 14), or whether the Button 14 should instead be place under a device softkey 20 as a command if the available device UI screen 18A is not a touch screen ….” (Spec. 3:20-26; Fig. 1.) Exemplary claim 1 follows: 1. A method comprising: entering a data structure that specifies a button for a graphical user interface to appear on a display screen; and defining, based on the data structure, at least one of a displayable button placement on a display screen for the case where the display screen comprises a touch-sensitive display screen, or another user input mechanism in place of the displayable button for the case where the display screen does not comprise a touch-sensitive display screen. 1 The ensuing description constitutes findings of fact designated as FF 0. Appeal 2009-014219 Application 11/124,651 3 The Examiner rejected claims 1-4, 6, 7, 11, 13, 14, and 16-21 as anticipated under 35 U.S.C. § 102(b) by Okada (Patent Abstracts of Japan publication 2000298545). (Ans. 3-5.) The Examiner rejected claims 5, 10, 15, and 22 under 35 U.S.C. § 103(a) based on Okada. (Ans. 5-6.) The Examiner rejected claims 23-25 under 35 U.S.C. § 103(a) based on Okada and Anderson (U.S. Patent 6,154,210). (Ans. 6-7.) ISSUE Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner establish that Okada discloses “defining, based on the data structure, at least one of a displayable button placement on a display screen for the case where the display screen comprises a touch-sensitive display screen, or another user input mechanism in place of the displayable button for the case where the display screen does not comprise a touch- sensitive display screen,” as recited in claim 1, and as similarly recited in claims 6, 11, and 18? FINDINGS OF FACT (FF) Okada 1. Okada discloses a switching means on an input device “for switching a mode in which the selection of a display pattern is performed by a display part and a mode in which the selection of the display pattern is performed by a soft key.” (Abstract.) Appeal 2009-014219 Application 11/124,651 4 2. Okada’s input device includes: A display part 2 is constituted with a touch panel comprising of a liquid crystal display part (LCD) and a touch key which is provided on the LCD and performs setting and the like. An operation part 3 is constituted with an abbreviated key for calling, a one touch key, hard keys such as a ten key for dialing or inputting a telephone number and a soft key 24 which selects one out of three functions displayed on the LCD, and inputs information on a user or the like other than function setting. Also a switching means (a switching key) 25 is provided for switching a touch panel operation mode for setting an item from the touch panel, a soft key operation mode for setting the item by the soft key 24 or a shared mode for setting the item from both the touch panel and the soft key. (Abstract.) PRINCIPLES OF LAW The Examiner bears an initial burden of factually supporting an articulated rejection. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). ANALYSIS Issue - Claims 1-7, 10, 11, and 13-25 Appellants assert that Okada does not “disclose or suggest ‘defining, based on the data structure, at least one of a displayable button placement on a display screen for the case where the display screen comprises a touch- sensitive display screen, or another user input mechanism in place of the displayable button for the case where the display screen does not comprise a Appeal 2009-014219 Application 11/124,651 5 touch-sensitive display screen,’…. ” (App. Br. 7.) In particular, Appellants argue that “Okada does not disclose or suggest that the use of any item (e.g., selection of the touch key and/or the soft key) be dependent on whether or not the display screen is touch-sensitive.” (Id.) The Examiner found that “Okada discloses the feature allowing a user to enter a preferred from/option of menu based on the characteristic of the device (e.g., using switching means 25).” (Ans. 9.) But independent claims 1, 6, 11, and 18 require more; they require defining a different user input mechanism based on whether a display screen comprises a touch-sensitive display screen. And the reference cited by the Examiner as anticipating these claims (i.e., Okada), does not disclose this claim limitation. (See FF 1 and 2.) Indeed, Okada discloses only one input device, which has a touch-sensitive display screen. (FF 1 and 2.) Therefore, we will not sustain the Examiner’s anticipation rejections of independent claims 1, 6, 11, and 18, or the anticipation rejections of the claims dependent therefrom (i.e., claims 2-4, 7, 13, 14, 16, 17, and 19-21.) We will also not sustain the obviousness rejections of the remaining dependent claims (i.e., claims 5, 10, 15, 22-25) because the Examiner did not find that the claim limitations of the independent claims are obvious. (See Ans. 5-7; 13-15.) DECISION We reverse the Examiner’s decision rejecting claims 1-7, 10, 11, and 13-25. REVERSED Appeal 2009-014219 Application 11/124,651 6 tj