Ex Parte Padgett et al

Patent Trial and Appeal Board

Nov 13, 2013

10839965 (P.T.A.B. Nov. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALLAN P. PADGETT and JOHNNIE B. MANZARI
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Appeal 2011-002614
Application 10/839,965
Technology Center 2100
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Before KRISTEN L. DROESCH, JASON V. MORGAN and
KERRY BEGLEY, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2011-002614
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STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
BACKGROUND
The Appellants’ disclosed invention relates to methods and apparatus,
including computer program products, for providing content previews. One
apparatus operates to display one or more user interface controls as a
foreground against a background on a display device; receive user input
resulting in a user interface state that has an associated action; and display as
the background a preview of the associated action. In another aspect, the
user input gives focus to a user interface control that has associated content;
and a preview of the associated content is displayed without further action
on the part of the user. In another aspect, user interface controls are
displayed; and giving input focus to a particular user interface control that
has associated content causes an apparatus to play a preview of the
associated content without further action on the part of a user. Abs.; see also
Spec. 1-3.
Claim 1 is illustrative and is reproduced below (disputed limitations in
italics):
1. A computer program product, tangibly embodied
in a memory of a data processing apparatus, comprising
instructions operable to cause the data processing apparatus to:
display one or more user interface controls, the user
interface controls being displayed to appear as a foreground
layered over a background on a display device, the user
interface controls being displayed for user interaction;
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receive user input at the user interface controls, the user
input resulting in an associated action, the associated action
having corresponding visual content; and
display as the background a preview of the associated
action by displaying the visual content in the background with
the user interface controls being displayed to appear as the
foreground layered over the background.

Rejections
Claims 1-3, 5-10, 14, 15, 17-20, 22 and 27-291 stand rejected under
U.S.C. § 103(a) as being unpatentable over Kaplan (US 5,963,916, Oct. 5,
1999) and Clanton (US 5,524,195, Jun. 4, 1996).
Claims 4 and 16 stand rejected under U.S.C. § 103(a) as being
unpatentable over Kaplan, Clanton and Huapaya (US 7,096,432 B2, Aug.
22, 2006).
Claims 11-13 and 21 stand rejected under U.S.C. § 103(a) as being
unpatentable over Kaplan, Clanton and Footman (US 2005/0034338 A1).
Claims 23-26, 30 and 31 stand rejected under U.S.C. § 103(a) as being
unpatentable over Kaplan, Clanton and Reitmeier (US 4,746,919, May 24,
1988).
ISSUE
Did the Examiner err in finding that Kaplan and Clanton as combined
teach or suggest “receive user input at the user interface controls . . .
resulting in an associated action . . . having corresponding visual content;
and display as the background a preview of the associated action by
displaying the visual content in the background with the user interface

1 Claims 22 and 27-29 were omitted from the statement of rejection but were
substantively addressed with claims 1-3, 5-10, 14, 15 and 17-20. Ans. 3-12.
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controls being displayed to appear as the foreground layered over the
background,” as recited in claim 1, and similarly recited in independent
claims 14 and 22?
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ arguments in the Appeal Brief presented in response to the Final
Office Action (“FOA”) and the Reply Brief presented in response to the
Answer. We highlight and address specific findings and arguments as
follows.
The Examiner relies on Clanton for teaching the disputed claim
limitations. Ans. 4-5, 8, 10-11; FOA 3 (citing col. 2, l. 62-col. 3, l. 28); see
also Ans. 18-19 (citing col. 9, ll. 1-44; col. 10, ll. 7-21, 64-67; col. 11, ll. 1-
15; Figs. 10-12). At the outset, we point out that we construe each of the
recitations of “the user interface controls” in claim 1 as referring to the
previously recited “one or more user interface controls.”
We agree with the Appellants’ argument that neither of the user
selections in Clanton (selecting poster 98 in the foreground to see a
programming preview in the video viewing space 120, or selecting the
background to cause poster 98 in the foreground to return to the poster wall
80) results in the user interface controls being displayed as a foreground
layered over the preview. App. Br. 5-6 (citing Clanton col. 3, ll. 8-15, 43-46;
col. 10, ll. 1-6, 26-31; Figs. 7, 8, 10). In particular, we agree with the
Appellants that: 1) the programming preview in the video viewing space 120
(Fig. 10) has not been shown to include any user interface control from the
poster 98 (Fig. 8) layered over the programming preview; and 2) the poster
wall display 80 (Fig. 7) (after the poster 98 has returned to the poster wall
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80) has not been shown to include any user interface controls from the
foreground poster 98 (Fig. 8) layered over the poster wall 80. App. Br. 5-6.
For at least these reasons, we cannot sustain the Examiner’s rejection
of claims 1-3, 5-10, 14, 15, 17-20, 22 and 27-29 as being unpatentable over
Kaplan and Clanton.
Dependent claims 4, 11-13, 16, 21, 23-26, 30 and 31 depend from
independent claims 1, 14 and 22. As applied by the Examiner, the additional
prior art does not remedy the deficiencies of Kaplan and Clanton. Ans. 12-
18. Accordingly, for the same reasons as claims 1-3, 5-10, 14, 15, 17-20, 22
and 27-29, we cannot sustain the Examiner’s rejections of: 1) claims 4 and
16 as being unpatentable over Kaplan, Clanton and Huapaya; 2) claims 11-
13 and 21 as being unpatentable over Kaplan, Clanton and Footman; and 3)
claims 23-26, 30 and 31 as being unpatentable over Kaplan, Clanton and
Reitmeier.
DECISION
We REVERSE the Examiner’s rejections of claims 1-31.
REVERSED

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