Ex Parte Horentrup et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10552025 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOBST HORENTRUP, RALF OSTERMANN,
HARALD SCHILLER, and DIRK GANDOLPH
____________________

Appeal 2010-003762
Application 10/552,025
Technology Center 2100
____________________

Before JAMESON LEE, ERIC B. CHEN, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003762
Application 10/552,025

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).1
We reverse.
The claims are directed to a method and apparatus for decoding a
menu data segment on, for example, a Blu-ray Disc or DVD. Claim 1 is
exemplary:
1. A method for decoding a menu data segment, the
method comprising the steps of
detecting, within the menu data segment, data
corresponding to a plurality of menu items belonging to a menu
page;
extracting from the menu data segment for each menu
item of the plurality of menu items at least first data defining
whether the menu item is selectable and second data defining
whether the menu item has graphic representation data
associated;
decoding data corresponding to first menu items to
selectable display data, wherein the first menu items are menu
buttons and have graphic representation data associated;
decoding data corresponding to second menu items to
non-selectable and visible display data, wherein the second
menu items have graphic representation data associated; and
decoding data corresponding to third menu items to
selectable and invisible menu elements, wherein the third menu
items have no associated graphic representation data, and
wherein the third menu items are menu buttons that are

1 Our decision will make reference to Appellants’ Appeal Brief (“Br.,” filed
July 13, 2009), and the Examiner’s Answer (“Ans.,” mailed October 27,
2009) and Final Rejection (“Final Rej.,” mailed February 19, 2009).
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automatically activated upon selection.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Piroumian Vartan Piroumian, Java GUI Development: The
Authoritative Solution (1999).
jlGui jlGui – Java Music Player, April 1, 2002, available at
http://web.archive.org/web/20021012174158/http://www.
javazoom.net/jlgui/sources.html.

REJECTIONS
Claims 1-4, 7-11, 13, and 14 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Piroumian. Ans. 3-5.
Claims 5, 6, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Piroumian in view of jlGui. Ans. 6-8.2

2 In the Final Rejection, the Examiner objected to the amendment of claim 8
to include “comprising a horizontal address and a vertical address” because
the amendment had already been made in a previous response. Final Rej. 2.
Appellants also request “[w]ithdrawal of the rejections and/or suspension of
the proceedings in this prosecution” because the Examiner allegedly
provided incomplete copies of the Piroumian and jlGui references. Br. 14-
15. We do not address in this decision the Examiner’s informality objection
or the adequacy of the provided copies, both of which relate to petitionable
subject matter under 37 C.F.R § 1.181. See MPEP § 706.01 (“the Board will
not hear or decide issues pertaining to objections and formal matters which
are not properly before the Board”).
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ISSUE
Appellants argue on pages 6-11 of the Appeal Brief that the
Examiner’s rejection of independent claims 1 and 2 is in error. These
arguments present us with the issue: did the Examiner err in finding that
Piroumian discloses “decoding data corresponding to third menu items to
selectable and invisible menu elements, wherein the third menu items have
no associated graphic representation data, and wherein the third menu items
are menu buttons that are automatically activated upon selection,” as recited
in claim 1 and similarly recited in claim 2?
We note that Appellants also raise a number of other issues with the
rejections. Br. 6-7, 10-15. Because we find the above issue dispositive of
the appeal, we need not reach the other arguments raised by Appellants.

ANALYSIS
Anticipation Rejection of Claims 1-4, 7-11, 13, and 14 (Piroumian)
Appellants argue that Piroumian does not disclose “decoding data
corresponding to third menu items to selectable and invisible menu elements,
wherein the third menu items have no associated graphic representation data,
and wherein the third menu items are menu buttons that are automatically
activated upon selection,” as required by claim 1. Br. 7-10. Specifically,
Appellants contend that there is “nothing in the description of [the
setAccelerator method in Piroumian] to indicate that it pertains to invisible
buttons,” and “[i]t is believed that the button (menu item) to which this
method/constructor is applied always has associated graphic representation
data so that the menu item can be selected via some visually assisted
technique.” Br. 9-10. We agree with Appellants.
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The Examiner found that the third menu item feature of claim 1 is
taught by the following two methods in Piroumian:
JMenuItem() No-arg constructor. It creates a menu
item with no defined text or icon.
. . .
void setAccelerator Set the KeyStroke object that represents
(KeyStroke keyStroke) the key combination which selects the
menu item. This is equivalent to the user
selecting the menu item.
Piroumian, pg. 232; see Ans. 4, 10-11. The Examiner further found that the
setAccelerator method “applies equally to all menu items” on page 232 of
Piroumian, including JMenuItem(). Ans. 10. Thus, according to the
Examiner, the two methods in combination disclose menu buttons that are
“invisible” and “automatically activated upon selection.” Ans. 4.
Even assuming, however, that the combination of methods would
result in an invisible and automatically activated menu button (which
Appellants dispute), we see no indication in the portions of Piroumian cited
by the Examiner that the two methods actually are used together. Piroumian
describes various methods, such as JMenuItem() and setAccelerator, that are
available in the Java Swing toolkit to create user interface components (e.g.,
menus, menu items, check boxes) in Java programs, leaving it to the reader
to actually write a program with those methods. See Piroumian, pp. 223-33.
Piroumian further provides examples of Java source code implementing
some of the methods along with images of their corresponding user
interfaces. See, e.g., Piroumian, pg. 225 (“Listing 7.8 shows the source code
for Figure 7.14.”). None of the examples, however, create a menu item
using both JMenuItem() and setAccelerator. The mere fact that both
methods are available in the toolkit is insufficient for anticipation purposes,
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as the reference does not expressly or inherently disclose a menu item that
uses them together. See Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989) (“Anticipation requires that
every limitation of the claim in issue be disclosed, either expressly or under
principles of inherency, in a single prior art reference.”). We therefore are
persuaded that the Examiner erred in rejecting claim 1 as anticipated by
Piroumian.
The remaining independent claim 2 similarly requires “means for
decoding data corresponding to third menu items to selectable and invisible
menu elements, wherein the third menu items have no associated graphic
representation data, and wherein the third menu items are menu buttons that
are automatically activated upon selection.” For the reasons discussed
above, we find that the “decoding data corresponding to third menu items”
function is not disclosed in Piroumian. Accordingly, we do not sustain the
Examiner’s rejection of claims 1 and 2, as well as dependent claims 3, 4, 7-
11, 13, and 14.

Obviousness Rejection of Claims 5, 6, and 12 (Piroumian/jlGui)
For the reasons discussed above, we agree with Appellants that
Piroumian does not disclose “decoding data corresponding to third menu
items to selectable and invisible menu elements, wherein the third menu
items have no associated graphic representation data, and wherein the third
menu items are menu buttons that are automatically activated upon
selection.” Further, the Examiner has not provided any basis or reason why
the limitation would be obvious based on Piroumian or the other cited
reference (jlGui). See Ans. 4, 6-8. Indeed, as described in Piroumian,
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calling both the JMenuItem() and setAccelerator methods in a Java program
apparently would result in a menu item that has “no defined text or icon”
and is selected when the user presses a particular combination of keys on the
keyboard. Piroumian, pg. 232. Because the resulting menu item has no text,
however, a user would not know what key combination to press to select the
menu item or what the menu item is designed to do. By contrast,
Appellants’ Specification indicates that invisible buttons may be used for
“interactive games” to guess among multiple choices or to input a numerical
guess, such as “where the user is asked to guess the age of the actress, or to
guess the year when the automobile was invented.” Spec., pg. 5, ll. 21-27.
Accordingly, based on the record before us, we do not sustain the
obviousness rejection of dependent claims 5, 6, and 12.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1-4, 7-11, 13, and 14 under 35 U.S.C. § 102(b) and claims 5, 6,
and 12 under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the rejections of claims 1-4, 7-11, 13, and 14
under 35 U.S.C. § 102(b) and claims 5, 6, and 12 under 35 U.S.C. § 103(a)
are reversed.

REVERSED
rwk