11168601 (B.P.A.I. Jul. 16, 2012)

Ex Parte Muller et al

Board of Patent Appeals and InterferencesJul 16, 2012

11168601 (B.P.A.I. Jul. 16, 2012)

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. 11/168,601 06/28/2005 Michael Muller LOT920050038US1 (7321-98U 9341 46321 7590 07/16/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER QUELER, ADAM M ART UNIT PAPER NUMBER 2177 MAIL DATE DELIVERY MODE 07/16/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MICHAEL MULLER and CORINNE M. RYAN ____________ Appeal 2010-001305 Application 11/168,6011 Technology Center 2100 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and JAMES R. HUGHES, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is International Business Machines Corporation. Appeal 2010-001305 Application 11/168,601 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 8 and 9, which are all the claims remaining in the application. Claims 1-7, 10, and 11 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. The present invention relates generally to “accessible user interface elements in a computer program.” Spec., 1: ¶[0001]. Claim 8 is illustrative: 8. A method for accessible list navigation, the method comprising the steps of: navigating from a list item in a list to a corresponding obscured marker in said list; and, responsive to an activation of said obscured marker, jumping to another list item in said list specified by jump logic disposed within said obscured marker. Appellants appeal the following rejection: Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over JAWS (JAWS for Window 5.0 Features and Enhancements, June 11, 2004, available at http://www.freedomscientific.com/fs_products/software_jaws5fea.asp (last visited April 11, 2008)) and Cohen (U.S. Patent No. 6,507,352 B1, issued Jan 14, 2003). Appeal 2010-001305 Application 11/168,601 3 ANALYSIS The only independent claim, claim 8, recites, inter alia, “navigating . . . to a corresponding obscured marker” (emphasis added). Thus, the scope of all claims includes an obscured marker. Issue: Did the Examiner err in finding that the combination of JAWS and Cohen teaches and/or suggests an obscured marker, as claimed? Appellants contend that the “Examiner’s improper claim construction of both ‘obscured marker’ and ‘jump logic’ as merely a visible button and the label for a visible button, respectively[,] exceeds the legal standard for claim construction during examination.” (App. Br. 8.) The Examiner found that “[w]hen a term is defined in the S]pecification in more than one way, the E]xaminer is required to examine the term when it is claimed in the broadest reasonable way possible, which leads the E]xaminer to interpret the term in all of the ways it is defined, not limiting the examination to just one of those possible interpretations.” (Ans. 5.) The Examiner further found that Appellants’ Specification “allows for the definition of an ‘obscured marker’ to consist of text such as a character or set of characters.” (Id.) While we agree with the Examiner that examination is not limited to a particular example in the Specification, “d]uring examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the S]pecification, and . . . claim language should be read in light of the S]pecification as it would be interpreted by one of ordinary skill in the art.’” Appeal 2010-001305 Application 11/168,601 4 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The Office “must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the S]pecification.” Id. (citations omitted). Here, Appellants’ Specification states that “[t]he obscured marker 290, itself, can be a miniscule graphic image or limited text unlikely to draw notice by interacting end users so as to maintain the appearance that the list 230 includes nothing but list items 280.” (Spec., 10: ¶[0023] (emphasis added).) Appellants’ Specification also states that “[t]he obscured marker can remain obscured from view of a sighted end user.” (See Spec., 5: ¶[0010].) We point out that Appellants’ Specification uses the term “can” and “can be” in describing the “obscured marker.” We find that such a description merely denotes exemplary types of “obscured markers” as oppose to giving a definitive description. Although giving claims their broadest reasonable interpretation must take into account any definitions given in the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), it is improper to read into the claims any limitations from examples given in the Specification. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). In other words, we are not to read limitations from examples in the Specification into the claims. See In re Am. Acad. Of Sci Tech. Ctr., 367 F.3d at 1369. As such, there is no requirement that the “obscured marker” can remain obscured from view or is a miniscule image or is limited text unlikely to draw attention, as these are mere examples. Here, we find that it is best to look at the usual and ordinary meaning of the term “obscure” as it is consistent with the examples set forth in the Specification. Specifically, the term “obscure” denotes something that is not Appeal 2010-001305 Application 11/168,601 5 clearly seen nor easily distinguished. Webster’s Ninth New Collegiate Dictionary, p.815 (1990). As such, we conclude that the claimed “obscured marker” can be anything not clearly seen. The Examiner concluded that Appellants’ Specification defined the term “obscured marker” in more than one way (see Ans. 5). However, as noted supra, we find that Appellants’ Specification merely states examples, not definitions. Furthermore, the Examiner found that Appellants’ Specification “allows for the definition of an ‘obscured marker’ to consist of text such as a character or set of characters.” (Id.) However, we find that the Examiner has mischaracterized what is stated in the specification, as the Specification does not state – “limited to text” – but rather “limited text.” (Id.)(emphasis added) For instance, Appellants’ Specification states “the obscured marker can be limited text such as a character . . .” (Spec., 5:¶[0010].) In other words, Appellants’ define “limited text” as being unlikely to draw notice (see Spec., 10:¶[0023].) As a result, as noted supra, we find that the claimed “obscured marker” includes anything that is not easily seen. Contrary to our claim construction noted supra, the Examiner found that Cohen’s Figure 41, item number 632 is equivalent to the claimed “obscured marker.” (See Ans. 5.) In other words, the Examiner found that Cohen’s scroll touch buttons 632 (e.g., previous, top, bottom, next) are equivalent to the claimed “obscured markers.” We disagree with the Examiner. Contrary to an obscured marker, Cohen’s scroll touch buttons are easily identified so as to allow a user to move forward and backward through the screens, for example. (See Cohen, col. 31, ll. 52-56.) Appeal 2010-001305 Application 11/168,601 6 Since we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants’ other arguments. It follows that Appellants have shown that the Examiner erred in finding that the combination of Cohen and JAWS renders claims 8 and 9 unpatentable. Accordingly, we reverse the rejection of claims 8 and 9. DECISION We reverse the Examiner’s § 103 rejection. REVERSED llw