Ex Parte Martinez et alDownload PDFBoard of Patent Appeals and InterferencesFeb 17, 201209981877 (B.P.A.I. Feb. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ANTHONY E. MARTINEZ and MICHAEL D. RAHN ____________________ Appeal 2010-001332 Application 09/981,877 Technology Center 2100 ____________________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and CAROLYN D. THOMAS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-3, 9-11, and 17. Claims 4-8 and 12-16 have been withdrawn from consideration. (App. Br. 4). We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Appeal 2010-001332 Application 09/981,877 2 STATEMENT OF THE CASE Invention The invention on appeal “relates to previewing a graphical image corresponding to an icon in a clipboard.” (Spec. 1). Independent claim 17, reproduced below, is illustrative of the claimed subject matter: 17. A method of displaying a clipboard comprising: receiving a paste command; determining whether a plurality of objects are stored within the clipboard in response to the paste command; displaying the clipboard adjacent a display position indicator, if it is determined a plurality of objects are within the clipboard; and removing the clipboard from a display in response to movement of the display position indicator not adjacent to the clipboard. (disputed limitation emphasis added). Examiner’s Rejections 1. Claim 17 stands rejected under 35 U.S.C §102(a) over Microsoft Word 2000, 1999, Microsoft Corporation, as represented by screenshot figures 1-10 (“hereinafter MSword.”). 2. Claims 1-3 and 9-11 stand rejected under 35 U.S.C. 103(a) as being unpatentable over the combination of MSword and Foster (U.S. Pat. No. 5,404,442, filed Nov. 30, 1992)). Appeal 2010-001332 Application 09/981,877 3 PRIOR DECISION Appeal No. 2007-003276, (Application No. 09/981,877) mailed January 4, 2008. (Examiner Affirmed-In-Part)(hereinafter “Prior Decision”). ISSUE (1) Did the Examiner err in finding that MSword evidences that “removing the clipboard from a display in response to movement of the display position indicator not adjacent to the clipboard,” (claim 17) 1 was known or used by others in this country under §102(a), before the invention thereof by the applicant for patent? ANALYSIS Claim 17 (rejected under §102) Appellants contend that Figures 6 and 7 of MSword “show removal of a clipboard for reasons other than, as recited in claim 17, ‘in response to movement of the display position indicator not adjacent to the clipboard.’” (App. Br. 9-10). In reviewing the record, we observe that Appellants ground their arguments urging the patentability of claim 17 on what actually causes or triggers a change in clipboard visibility. (App. Br. 10 et seq.). In particular, Appellants contend that “MSword teaches to remove the clipboard in response to moving a cursor laterally outside an ‘Items’ menu 101.” (Id. at 12). 1 See Prior Decision (6-7) regarding the Examiner’s use of Microsoft Word screenshots as evidence under 35 U.S.C. § 102(a). Appeal 2010-001332 Application 09/981,877 4 Appellants further explain: In short, MSword teaches to remove the clipboard when the cursor moves from Items menu 101 to the menu item “Paste All”. At that time, the cursor was already not adjacent to the clipboard. The MSword clipboard, as shown in the Champion Affidavit, was not adjacent before crossing to “Paste All” as well as after crossing to “Paste All”. Consequently, the fact that the cursor is not adjacent during each of these two stages indicates that non-adjacency does not trigger the effect recited in claim 17. (App. Br. 12; see also App. Br. 11, EXHIBIT A). However, after reviewing the entire record, including the Rule 1.132 Affidavit, we agree with the Examiner that any instance (in MSword) where the clipboard is removed from the display in response to movement of the display position indicator falls within the scope of the claim 17, so long as the movement occurs when the display position indicator is not adjacent to the clipboard. (See Ans. 11-13). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (citation omitted) (“In other words, if granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art.”) Id. (citations omitted). This reasoning is applicable here. On this record, we agree with the Examiner that the aforementioned disputed claim limitation reads on MSword under a broad but reasonable interpretation. (See Ans. 12). We also observe that the argued terms “trigger” or “causes” are not recited Appeal 2010-001332 Application 09/981,877 5 within claim 17. (App. Br. 11, Claim 17).2 Thus, it is immaterial whether MSword teaches removing the clipboard “in response to moving a cursor laterally outside an ‘Items’ menu 101.” (App. Br. 12). In particular, we agree with the Examiner’s broader reading of the claim on MSword: Accordingly, it is apparent that the cause of the removal is the event of the cursor 103 leaving the “Items] menu 101.” This clearly meets the claim language of “movement... not adjacent to the clipboard”, as the cursor is over the “Items” menu (not over the clipboard) and moves to the area immediately to the left of the “Items” men (not over the clipboard). Therefor[e] there was a movement, not adjacent to the clipboard, that caused the removal of the clipboard. (Ans. 12). On this record, we do not agree with Appellants’ contention that the Examiner has expanded the claim scope beyond a broadest reasonable interpretation. (Reply Br. 2). See n.2 infra. Therefore, we sustain the Examiner’s anticipation rejection of independent claim 17 for essentially the same reasons argued by the Examiner in the Answer (Ans. 11-13), as discussed above. 2 “It is the claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Appeal 2010-001332 Application 09/981,877 6 Claims 1-3 and 9-11 (rejected under §103) Appellants argue the obviousness rejection of claims 1-3 and 9-11 as a single group. Based on Appellants’ arguments, we select independent claim 1 as the representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii). For convenience, we reproduce claim 1 here: 1. A method of previewing a graphical image corresponding to an icon in a clipboard, comprising: receiving an icon preview instruction from a user; and displaying the graphical image associated with the icon in response to the icon preview instruction. (disputed limitation emphasis added). Appellants contend that the cited Foster reference fails to teach “displaying the graphical image associated with the icon in response to the icon preview instruction.” (App. Br. 14) (emphasis added). Appellants additionally contend that “one of ordinary skill in the art would not be motivated to combine MSword and Foster to reach the claimed invention.” (Id. at 15). The Examiner finds that MSword teaches “an icon in a clipboard comprising: receiving an icon preview instruction from a user” (Claim 1; Ans. 5, see also MSword Figure 2, where the user accesses a preview of a clipboard item through a mouse over event.). The Examiner acknowledges that MSword does not specifically teach displaying a graphical image associated with the icon in response to the icon preview instruction. (Ans. 5, 15). The Examiner points to the secondary Foster reference (columns 7-8, and 12) as teaching or suggesting clip-based storage that includes both textual elements and graphical elements: Appeal 2010-001332 Application 09/981,877 7 Foster teaches a process for copying items to a display space (clipboard) for later use in insertion into a document (see column 7, line 56 through column 8, line 15 and in figures 4e- 4f), similar to that of MSword, but further teaches, in the second process, that upon a user selection of an item from the group of clipped items the user is provided with a visual depiction of the actual object the pointer is positioned over (see column 9, lines 44-65 and figure 5c) where elements available for clip based storage include both text elements and graphic elements (see column 7, line 56 through column 8, line 15 and in figures 4e-4f). Foster further teaches the ability for clipboard icons to indicate the actual content of the clipboard object, showing a miniature version of the actual graphical object (see column 12, lines 18-23). (Ans. 15, underline added). In reviewing the evidence, we observe that column 7, lines 56-58 of Foster expressly teaches that “visible clipboard 82 includes indicia 84 indicating that the clipboard includes a graphic object,” as pointed to by the Examiner. (Ans. 15). Moreover, Foster, at column 12, lines 21-23, expressly teaches that “[i]n Fig. 9a, a visible clipboard icon 150a includes indicia 152a which is a miniature version of the actual graphical object carried by the icon 150a” (emphasis added), as also pointed to by the Examiner (Ans. 15). In light of this compelling evidence which supports the Examiner’s position, we are not persuaded by Appellants’ arguments in the Briefs. Appellants’ contentions essentially focus on the textual elements taught by Foster while ignoring the graphical elements relied on by the Examiner. (See App. Br. 14-16; Reply Br. 3). Nor do we find Appellants’ arguments persuasive that “one of ordinary skill in the art would not [have been] motivated to combine MSword and Foster to reach the claimed invention.” (App. Br. 15). Appeal 2010-001332 Application 09/981,877 8 Regarding the Examiner’s proffered motivation to combine the respective teachings of MSword and Foster (Ans. 6), it is our view that the respective teachings of the references (as relied on by the Examiner) are merely familiar elements that, when combined, would have yielded predictable results. The Supreme Court guides that to be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007). This reasoning is applicable here. Therefore, on this record, we are not persuaded of error regarding the Examiner’s proffered reason for combining MSword and Foster. (Ans. 6). Accordingly, for essentially the same reasons articulated by the Examiner in the Answer, as discussed above, we sustain the obviousness rejection of representative claim 1 over the combination of MSword and Foster. Dependent claims 2, 3, and 9-11 as (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the Examiner’s rejection of claim 17 under 35 U.S.C. §102(a). We affirm the Examiner’s rejection of claim 1-3 and 9-11 under 35 U.S.C. §103(a). Appeal 2010-001332 Application 09/981,877 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). ORDER AFFIRMED llw Copy with citationCopy as parenthetical citation