Ex Parte Martinez et al

Board of Patent Appeals and Interferences

Feb 17, 2012

09981877 (B.P.A.I. Feb. 17, 2012)

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withdrawn from consideration.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.

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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)).

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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).
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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
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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).

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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:
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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).
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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).

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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

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