Ex Parte KAMIYAMA et al

Patent Trial and Appeal Board

Mar 1, 2016

13565325 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/565,325 08/02/2012 YOSHIROH KAMIY AMA
52021 7590 03/03/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JP920090015US2_8132-0044 8531
EXAMINER
PRINGLE-PARKER, JASON A
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
03/03/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIROH KAMIYAMA and KOTARO SHIMA
Appeal2014-003985
Application 13/565,325
Technology Center 2600
Before ROBERT E. NAPPI, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 14, 16, and 18-25, which constitute all of the claims pending in this
application. Claims 1-13, 15, and 17 have been cancelled. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify IBM Corporation as the real party in interest. App. Br.
1.
Appeal2014-003985
Application 13/565,325
THE INVENTION
The claimed invention is directed to an editing apparatus for
displaying a plurality of components and a plurality of nodes corresponding
to the components. Spec. i-f7.
Claim 14, reproduced below with the disputed language italicized, is
illustrative of the claimed subject matter:
14. An editing method comprising:
outputting, using a central processing unit, a display
screen on which a plurality of components are displayed;
outputting a plurality of nodes respectively corresponding
to the plurality of components on the display screen so that the
plurality of nodes are displayed along with the plurality of
components so as to overlap the display of the plurality of
components;
setting, in response to a user's instruction of association
between two or more of the nodes, an association between two
or more of the components corresponding to the two or more of
the nodes; and
outputting the plurality of nodes on the display screen so
that the plurality nodes appear closer to a user side than the
plurality of components on the display screen.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
"Beyond the One Way Web: From Publishing to Participation" (2008),
http://beyondtheonewayweb.wordpress.com/category/cs292 (last visited
Dec. 3, 2012) (hereinafter "BOWW")
Emanuele Feronato, Create a Lightbox effect only with CSS - no
javascript needed (August 22, 2007),
http://www. emanueleferonato. com/2007 /08/22/ create-a-lightbox-effect-
only-with-css-no-j avascript-needed/ (last visited Dec. 4, 2012) (hereinafter
"F eronato ")
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Application 13/565,325
IBM Software Demos, Lotusphere 2008 Comes to You - Lotus Mashups
(hereinafter "Lotusphere")
REJECTIONS
Claims 14, 16, and 23 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by BOWW. Final Act. 2-5, 9-12.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over BOWW. Final Act. 6-9, 12-15.
Claims 20-22 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over BOWW in light ofFeronato. Final Act. 15-18.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over BOWW in view ofLotusphere. Final Act. 18-19.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. In reaching this decision, vve consider
all evidence presented and all arguments made by Appellants. We disagree
with Appellants' arguments regarding the pending claims.
Claims 14, 16, 20-22, 24, and 25
Appellants argue BOWW does not disclose "outputting the plurality
of nodes on the display screen so that the plurality nodes appear closer to a
user side than the plurality of components on the display screen" as recited
in claim 14.
First, Appellants argue the Examiner's finding that the limitation is
disclosed is conclusory, speculation, and not based on facts. Br. 11, 12.
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Application 13/565,325
We do not find the Examiner's findings to be conclusory or based on
speculation. Instead, they are based on the Examiner's perceptions of the
prior art. See Final Act. 3--4, 11; Adv. Act. 2; Ans. 17-18. BOWW shows
the circles/nodes covering a portion of the components/windows. See
BOWW 2, 13. Accordingly, we agree with the Examiner that BOWW
discloses "outputting the plurality of nodes on the display screen so that the
plurality nodes appear closer to a user side than the plurality of components
on the display screen" as required by claim 14.
Second, Appellants further argue that the limitation is not inherently
disclosed because the nodes could be on the same z-plane as the plurality of
components. App. Br. 11. However, the Examiner relies on what the
reference discloses in the figures and not on some inherent teaching. See
Final Act. 3--4, 11; Adv. Act. 2; see also Ans. 14 ("No inherency was argued
by Examiner, nor is it required as the images all depict an embodiment in
which the node appears closer to the user."). As the argument does not
accurately reflect the Examiner's finding, we do not find it persuasive.
Third, Appellants argue because the nodes are connected to pipes and
the pipes are below the individual components/windows, the nodes cannot
"appear closer to a user side than the plurality of components" as recited in
claim 14. App. Br. 13. More specifically, Appellants argue "the most
reasonable inference is that the nodes are below the window (i.e., at the
same level of the pipe), and the least reasonable inference is that the nodes
are above the window, which would place the nodes at least two levels
above the level of the pipes to which the Examiner is alleging that the nodes
are connected." Reply Br. 3.
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Application 13/565,325
Although BOW-W shows the pipes below the components/windows,
the figures also show the nodes/circles displayed above the
window/components. See Ans. 15. Consistent with the Examiner's findings
(Ans. 15), the only reasonable inference is the pipes pass below the
window/components and then rise up---like a pipe through flooring-to
connect to the nodes located above the component/window. We further
agree with the Examiner's finding that Appellants' argument "is
contradictory to the visual evidence of the screenshots." App. Br. 18.
Accordingly, we sustain the Examiner's rejection of claim 14, along
with the rejection of claim 16, which is not separately argued. We similarly
sustain the obviousness rejections of claims 20-22, 24, and 25, which
Appellants state "stand or fall together with independent claim 14." App.
Br. 21.
Claim 23
Appellants argue BOWW does not disclose "highlighting, in response
to the user's designation of one of the nodes, the component corresponding
to the one node" as recited in claim 23. More specifically, Appellants argue
the Examiner's finding describes clicking on the block and not the node.
App. Br. 14. Appellants also argue that the Examiner's statement in the
Advisory Action that "it would have been obvious to one of ordinary skill in
the art to select either the component, or the associated node to enable
highlighting since the objects are associated" is irrelevant because the
Examiner's rejection is based on anticipation. App. Br. 14--15.
The Examiner concludes that the claims as written do not require
clicking on a node. Ans. 20. Instead, the Examiner concludes that claim 23
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Application 13/565,325
only recites "user's designation of one of the nodes" and, under the broadest
reasonable interpretation of the undefined term designation, this includes
"clicking on a component, selecting an item from a list, clicking on the node
directly, etc." Id. Therefore, the Examiner finds that "since the node does
change color (highlighting" through the user's actions it [satisfies] the claim
as written." Id.
We are not persuaded by Appellants' arguments that the Examiner
erred. Because claim 23 recites that the highlighting is "in response to the
user's designation of one of the nodes" without limiting how the designation
is made, we agree with the Examiner that the broadest reasonable
interpretation of the claim includes designating a node by clicking on
component connected to the node.
Because we agree with the Examiner's finding that BOWW discloses
the claim limitation, we need not address Appellants' obviousness argument
as moot.
Accordingly, we sustain the Examiner's rejection of claim 23.
Claims 18 and 19
First, Appellants argue the Examiner's findings are conclusory and are
insufficient under KSR to support finding the claim obvious. App. Br. 17.
Second, Appellants argue that nothing in BOWW is "remotely similar: to the
3D shape shown in Figure 4 of the instant application. App. Br. 18. Third,
Appellants argue that the Examiner's reliance on common sense is improper
because the Examiner did not provide a reasoned explanation. App. Br. 19-
20. Finally, Appellants argue the Examiner erred in finding Microsoft
Popfly and Yahoo! Pipes to be the same software. Reply Br. 7-8.
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Application 13/565,325
The Examiner finds the a person of ordinary skill in the art would
have been motivated to combine the 3D shape taught by Microsoft Popfly in
BOWW and use it with Yahoo! Pipes:
At the time of the invention, it would have been obvious to a
person of ordinary skill in the art to use a 3d shape as taught by
BOWW Microsoft Popfly. The rational for doing so would have
been that it combines known prior art elements of a 3d image and
two layers to make the two layers faces of the 3d image. The
results of the combination art predictable since there is only a
minor change in appearance and no change in function.
Therefore it would have been obvious to combine BOWW
Microsoft Popfly with BOWW Yahoo! Pipes to obtain the
invention.
Final Act. 13. The Examiner further concluded that no explicit motivation is
required to combine prior art; instead, the motivation to be combine may be
based on common sense. Adv. Act. 2.
We are not persuaded by Appellants arguments that the Examiner
erred. First; rejections based on obviousness must be supported by "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Contrary to Appellants' arguments, the Examiner provides
articulated reasoning to support the rejection. See Final Act. 6-8, 13; Adv.
Act. 2-3; Ans. 20-32. We agree with and hereby adopt the Examiner's
detailed findings.
Second, we will not read limitations from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Regardless
of the general contentions and imputed intended meanings articulated by
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Appellants in the Appeal Brief~ "[i]t is the claims that measure the
invention." See SRI Int'! v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en bane) (citations omitted).
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994) ). "[A ]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments .... [C]laims may embrace
'different subject matter than is illustrated in the specific embodiments in the
specification."' Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en bane) (citations omitted). Accordingly, we will not read Figure 4
into the claims and, instead, apply the broadest reasonable interpretation.
Third, Appellants rely on an incorrect statement of law. In KSR, the
Supreme Court rejected the teaching, suggestion, or motivation (TSM) test.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Instead, "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id. at 418. Thus, to the extent Appellants' argument is premised on applying
the TSM test, it is not persuasive of Examiner error.
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To the contrary, the Supreme Court held that "if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill."
KSR, 550 U.S. at 417. "[W]hen a patent 'simply arranges old elements with
each performing the same function it had been known to perform' and yields
no more than one would expect from such an arrangement, the combination
is obvious." KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976)).
As our reviewing Court has held, under KSR an obviousness analysis
may "include market forces; design incentives; the 'interrelated teachings of
multiple patents'; 'any need or problem known in the field of endeavor at the
time of invention and addressed by the patent'; and the background
knowledge, creativity, and common sense of the person of ordinary skill."
Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329(Fed. Cir.
2009). Such common sense "does not require a 'specific hint or suggestion
in a particular reference,' only a reasoned explanation that avoids conclusory
generalizations." Id. (citing DyStar Textilfarben GmbH v. CH Patrick Co.,
464 F.3d 1356, 1366 (Fed.Cir.2006)); see also Leapfrog Enters. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed.Cir.2007) ("[C]ommon sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not."). As discussed above, we conclude the
Examiner articulated reasoning to support the rejection, including the use of
common sense.
Fourth, we are not persuaded by Appellants' argument that the
Examiner finds Microsoft Popfly and Yahoo! Pipes to be the same software.
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In the Advisory Action, the Examiner finds "both references refer to mash-
up software, a very specific type of software." Adv. Act. 3. Similarly, in the
Answer the Examiner finds "Micrsoft [sic] Popfly teaches the same mashup
software as Yahoo Pipes, but with a different visual representation." Ans.
21. In finding the two programs used "different visual representation," (Id.),
the Examiner recognized that the two programs are not the same. We agree
with the Examiner that both Microsoft Popfly and Yahoo! Pipes are the
same type of software.
Accordingly, we sustain the Examiner's rejection of claim 18, along
with the rejection of claim 19, which was not separately argued.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
14, 16, and 18-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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