INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jan 6, 2021

2019005656 (P.T.A.B. Jan. 6, 2021)

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.
13/742,406 01/16/2013 Jing Xue Shen TW920120020US1 1084
103765 7590 01/06/2021
IBM Corp-Rochester Drafting Center
1701 North Street Building 256-3
Department SHCB
Endicott, NY 13760
EXAMINER
KLICOS, NICHOLAS GEORGE
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
01/06/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rocdrctr@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JING XUE SHEN
____________________

Appeal 2019-005656
Application 13/742,406
Technology Center 2100
____________________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1–25. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed January 16, 2013; “Final Act.” for the Final Office
Action, mailed October 29, 2018; “Appeal Br.” for Appellant’s Appeal
Brief, filed April 2, 2019; “Ans.” for Examiner’s Answer, mailed May 14,
2019; and “Reply Br.” for Appellant’s Reply Brief, filed July 11, 2019.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
International Business Machines Corp. Appeal Br. 3.
Appeal 2019-005656
Application 13/742,406
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
“techniques for bringing attention to critical popup messages in a multi-
window environment.” Spec. ¶ 1. The Specification explains that
“[w]indows are typically displayed with equal priority and urgency,” and “a
critical window may be obscured, or hidden, by one or more other
windows.” Id. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
detecting a first popup message associated with a default
desktop displayed on a computing system:
determining that the first popup message conforms with user
specified criteria, comprising:
generating a first signature based upon the first popup
message, wherein the first signature uniquely identifies
the first popup message and any popup messages
identical to the first popup message; and
matching the first signature to a second signature, based
upon a second popup message, that uniquely identifies
the second popup message and any popup messages
identical to the second popup message stored on a
computer readable storage medium;
and in response to the determining:
generating a first emergency desktop;
populating the first emergency desktop with the first
popup message; and
enabling a display of the first emergency desktop on the
computing system in place of the default desktop.
Appeal Br. 14 (Claims App.) (emphases added).
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REJECTIONS
R1. Claims 1, 3, 4, 8, 10, 11, 14, 16, 17, 20, 22, and 23 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Baer
(US 2012/0258691 A1; published October 11, 2012), Kumar (US 9,235,641
B1; issued January 12, 2016), Buchanan (US 2008/0189721 A1; published
August 7, 2008). Final Act. 5–9.
R2. Claims 2, 5–7, 9, 12, 13, 15, 18, 19, 21, 24, and 25 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Baer, Kumar,
Buchanan, and Prykäri (US 2012/0112908 A1; published May 10, 2012).
Final Act. 9–14.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection of Claims 1, 3, 4, 8, 10, 11, 14, 16, 17, 20, 22, and 23
Claim 1 recites: “generating a first emergency desktop” and “enabling
a display of the first emergency desktop on the computing system in place of
the default desktop.” Appeal Br. 14 (Claims App.) (referred to herein as the
“disputed limitations”).
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Application 13/742,406
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The Examiner found Buchanan discloses the disputed limitations.
Final Act. 7 (citing Buchanan, Fig. 1, ¶¶ 46–48, 52); see id. at 2–4; see also
Ans. 3–6. In Buchanan, a client device receives an emergency notification,
which “causes an interruption” at the device. Buchanan ¶¶ 47–48. This
interruption “causes the viewable desktop of the client device [] to be
overshadowed” and “only the emergency notification [to be] presented on
the viewable desktop.” Id. ¶¶ 48, 50; see id. ¶ 42 (explaining that the
“overshadow” covers “the whole viewable desktop area of the client
device”). Buchanan explains that programs on the device “continue to run
unaffected in the background” (such that “no unsaved data is lost”), but the
desktop is “render[ed] inoperable.” Id. ¶¶ 48, 52.
Appellant argues that Buchanan does not teach or suggest the disputed
limitation. Appeal Br. 8–10. According to Appellant, “Buchanan is directed
to the transmission and display of ‘emergency notifications,’” and “an
emergency notification is merely a message rather than a ‘desktop.’” Id. at
8. Appellant contends that “overshadowing” and “rendering a desktop
inoperable” fails to meet the claim’s requirement of “displaying a second, or
emergency, desktop in place of the default desktop” because these concepts
are “not synonymous” and “the default desktop continues to exist and is
therefore not ‘replaced.’” Id. at 9. Moreover, Appellant contends that the
term “desktop” has a particular meaning to a person of ordinary skill in the
art and “cannot be simply dismissed as a ‘display area.’” Id. at 10 (quoting
definitions provided in two online dictionaries); see id. at 8 (arguing that a
“‘desktop’ . . . is not ‘transmitted’ between devices”), 10 (arguing that a
desktop is “something on which windows may be displayed rather than a
window itself”).
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Application 13/742,406
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In the Answer, the Examiner responds to each of Appellant’s
arguments. Ans. 3–6. In particular, the Examiner notes that Appellant’s
proposed meaning of the claim term “desktop” is belied by the Specification,
which describes a “desktop” more generally as a “display area of a computer
screen.” Ans. 6 (citing Spec. ¶ 20); see id. at 4 (citing Spec. ¶ 40). The
Examiner also finds that, even under the narrower meaning of the term
“desktop” that is advocated by Appellant, Buchanan teaches the disputed
limitations. Ans. 5–6 (citing Buchanan ¶¶ 47, 50). Specifically, the
Examiner finds that “Buchannan discloses replacing its default desktop with
an inoperable image of a desktop together with a pop-up window providing
an emergency notification.” Id. at 6. The Examiner explains:
Buchanan discloses that when an emergency message is
received by a device . . . , the current (default) desktop display
is interrupted, a new desktop is created and populated for the
emergency message, [and] the new desktop is displayed in
place of the default desktop . . . . In other words, the
emergency notification is not merely added to the default
desktop, but rather, the default desktop is suspended
(inoperable), a new and different structure is created with the
emergency notification populated, and is displayed on the
screen area where the current (default) desktop is displayed.
Id. at 5 (citing Buchanan ¶¶ 47, 50). In addition, the Examiner states that,
although the new desktop contains an image of the default desktop, it is not
the default desktop itself:
The [default] desktop is not still displayed. Rather, what is
displayed is an inoperable image of the [default] desktop,
together with an emergency notification. An inoperable image
of a desktop is not a desktop per se. We can confirm this by
looking at Appellants’ own definitions of “desktop” enumerated
on page 10 of the Appeal Brief. All of Appellant’s definitions
of “desktop” involve something that is interactive, e.g., in
which various icons “can be moved, accessed, added to, put
Appeal 2019-005656
Application 13/742,406
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away,” and “from which windows may be opened and
programs run.”
Id. at 5–6 (quoting Appeal Br. 10; citing Buchanan ¶ 50).
In its Reply Brief, Appellant quotes an additional dictionary to
support its understanding of the term “desktop” and argues that the term
“typically covers an entire computer display.” Reply Br. 2. Appellant also
asserts that “the cited elements of Buchanan are described as ‘presented on
the viewable desktop’ rather than the desktop itself.” Id. at 3. But Appellant
does not otherwise respond to the findings and explanation provided in the
Answer.
Appellant’s arguments do not persuade us of error. In the Answer, the
Examiner directly and persuasively responds to Appellant’s arguments, and
the Examiner clearly articulates and explains the relevant findings and
conclusions. As a result, we adopt as our own the findings and conclusions
provided by the Examiner. Ans. 3–6; see also Final Act. 2–4, 7.
In particular, as the Examiner explained, the Specification indicates
that the broadest reasonable construction3 of the term “desktop” in the
context of claim 1 is a “display area.” Final Act. 2–3 (citing Spec. ¶ 20); see
also Spec. ¶¶ 2 (referencing “a user’s display, or ‘desktop’”), 20 (“Provided
is a ‘highlighting’ display area, or desktop, that is displayed only in

3 During prosecution, claims must be given their broadest reasonable
interpretation in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2019-005656
Application 13/742,406
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conjunction with urgent messages.”); 28 (“A ‘default’ desktop is a typical
desktop used to display processes, applications and non-critical popups,”
where “highlighting desktops” are “employed to display critical popups.”),
40 (explaining that the emergency desktop is created when an emergency
pop-up is detected). Appellant neither disputes the Examiner’s citations to
the Specification nor identifies an alternative passage suggesting a narrower
meaning for this term. See Appeal Br. 8, 10; Reply Br. 2–3. Instead
Appellant relies exclusively on dictionary definitions, which cannot
contradict the meaning revealed by the Specification. See Phillips v. AWH
Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (explaining that a
dictionary cannot be used to “contradict any definition found in or
ascertained by a reading of the patent documents” (quoting Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)); see also
Vitronics, 90 F.3d at 1582 (“The specification acts as a dictionary when it
expressly defines terms used in the claims or when it defines terms by
implication.”). Consequently, we conclude that Appellant’s arguments
seeking to distinguish Buchanan are premised on an overly narrow
construction of the term “desktop.”
Moreover, even if we had been persuaded that the term “desktop”
requires more than simply “a display area,” we would still not have been
persuaded of error. As the Examiner clearly and persuasively explained,
Buchanan teaches the disputed limitation even under Appellant’s
interpretation of the term “desktop.”4 See Ans. 5–6. In particular, the

4 Although Appellant does not identify a specific construction of the term,
Appellant argues that a desktop is the “primary display screen” that
“typically covers an entire computer display” and “is not ‘transmitted’
between devices.” Appeal Br. 8, 10; Reply Br. 2.
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Application 13/742,406
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Examiner finds that Buchanan creates an “new desktop . . . for the
emergency message,” which includes an image of the default desktop, and
displays this new desktop in place of the default desktop. Id. Appellant
does not address these findings or the Examiner’s supporting rationale (see
generally Reply Br.) and, consequently, fails to show error in them. As a
result, we would have affirmed the Examiner’s rejection even if we had
agreed with Appellant’s narrower interpretation of the claim term “desktop.”
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Accordingly, we
sustain the Examiner’s obviousness rejection of independent claim 1.
Because Appellant argues independent claims 1, 8, 14, and 20 as a
group (see Appeal Br. 8–10), claims 8, 14, and 20 fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv). Claims 3, 4, 10, 11, 16, 17, 22, and 23 depend,
directly or indirectly, from independent claim 1, 8, 14, or 20, and Appellant
relies on the arguments made with respect to independent claim 1 for these
claims. See Appeal Br. 11. Accordingly, we also sustain the Examiner’s
obviousness rejection independent claims 8, 14, and 20 and dependent
claims 3, 4, 10, 11, 16, 17, 22, and 23.
Obviousness Rejection of Claims 2, 5–7, 9, 12, 13, 15, 18, 19, 21, 24, and 25
The Examiner rejects dependent claims 2, 5–7, 9, 12, 13, 15, 18, 19,
21, 24, and 25 over a combination of Baer, Kumar, Buchanan, and Prykäri.
Final Act. 9–14. Each of these claims depends, directly or indirectly, from
independent claim 1, 8, 14, or 20.
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For these claims, Appellant relies on the arguments made with respect
to independent claim 1. Appeal Br. 12. These arguments, however, are not
persuasive for the reasons discussed above. Consequently, Appellant’s
arguments do not show error in the Examiner’s factual findings and the
conclusion of obviousness of these dependent claims. Accordingly, we
sustain the rejection of claims 2, 5–7, 9, 12, 13, 15, 18, 19, 21, 24, and 25.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 8, 10,
11, 14, 16,
17, 20, 22, 23
103 Baer, Kumar,
Buchanan
1, 3, 4, 8, 10,
11, 14, 16,
17, 20, 22, 23

2, 5–7, 9, 12,
13, 15, 18,
19, 21, 24, 25
103 Baer, Kumar,
Buchanan, Prykäri
2, 5–7, 9, 12,
13, 15, 18,
19, 21, 24, 25

Overall
Outcome
1–25
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED