Ex Parte RE41922 et al

Patent Trial and Appeal Board

Dec 11, 2017

90013146 (P.T.A.B. Dec. 11, 2017)

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.
90/013,146 02/05/2014 RE41922 429320US91RX 1099
20872 7590 12/12/2017
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/12/2017 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte APPLE INC.
Appellant
____________

Appeal 2016-005175
Reexamination Control 90/013,146
Patent RE41,922 E
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
on Appeal entered September 19, 2016 (“Decision”), in which we affirmed
the Examiner’s final rejection of claims 29, 30, and 33–37.
The Request for Rehearing is denied.

ANALYSIS
First, Appellant argue that “[t]he Board erroneously rejected Patent
Owner’s argument that a substantial new question of patentability has not
been established . . . by holding that the prior ex parte reexamination—based
on the same prior art, the same claims, and the same issues—failed to
include any ‘substantive analysis of how the elements of Frank correspond
to the limitations of independent claims 29 and 33.’” (Req. for Reh’g. 3
(alterations in original).) In particular, Appellant argues that “[d]uring that
first reexamination, the third party requester argued that Frank’s Figures 8
and 10 disclosed the ‘selectably active’ limitation in claim 29 . . . putting the
issue squarely before the examiner” (id. at 5), and “the Examiner made
arguments about one reference—Oullette—and then concluded that those
same arguments applied to Frank and the additional references (id. at 6).
Accordingly, Appellant argues “[b]ecause the issue here was considered and
resolved in the first reexamination, there was simply nothing new in the
second request that warranted further reexamination of the ’922 patent. (Id.
at 7.)
In the Final Action for the previous ex parte reexamination
(Application No. 90/012,744), mailed September 17, 2013, the previous
Examiner stated that “[t]he following cited prior art, deemed cumulative, has
not been applied in a rejection: . . . USPN 5,651,107 to Frank et al.” (Final
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Act. 26.) In light of the Final Action in the previous ex parte reexamination
and Appellant’s arguments, we note that the Figure 8 embodiment and the
Figure 10 embodiment of Frank, along with the corresponding text at
columns 9–10 of Frank, were considered by the previous Examiner and
determined to be cumulative to Ouellette.
However, in the previous Order Granting Request for Ex Parte
Reexamination (Application No. 90/012,744), mailed January 16, 2013, in
determining that a substantial new question of patentability arises with
respect to claims 29, 30, and 33–35, the previous Examiner presented the
following summary of Frank:
Frank describes a computer display system in which “[m]ultiple
applications may be executed concurrently by the CPU such that
each application is associated with one or more windows.”
(Exh. I at Abstract). Frank teaches that “several images appear
transparently on top of one another. [This] permits underlying
windows to display data visible to the user through windows
which are overlaid above an underlying window.” (Exh. I at
Abstract). See Frank, FIGs. 8 & 10;9: 4–6; 9:40–41; 9:48–58
(window 260 overlapping window 255; an alarm clock window
can be made active). Frank further teaches that “[a]lthough it is
traditional to bring all active windows to the top in a window
based system prior to operating upon them, utilizing the
teachings of the present invention, it is not necessary.” (Exh. I
at 9:59–62; Figure 8). Figure 10 of Frank further provides an
example where the window (260 in Figure 8) “not having been
rendered ‘active’ is transparent to the actions of the user, thereby
permitting the user to operate on data disposed in an underlying
window such as, for example, accessing the shut off alarm
box 277.” (Exh. I at 9:58–10:23; FIG. 10). Frank discloses
receiving input into the lower window while it remains partially
overlaid by a translucent window, as shown above in the context
of Figures 8 and 10 of Frank.
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(Order Granting Request for Ex Parte Reexamination 11–12 (alterations in
original).) Thus, in determining that Frank was cumulative to Oullette, the
previous Examiner relied upon the Figure 8 embodiment and the Figure 10
embodiment of Frank, along with the corresponding text at columns 9–10 of
Frank.
Moreover, in the current ex parte reexamination proceeding, the
Examiner’s Answer states the following:
The [previous reexamination] request states that the
missing limitations “selectably active” that were found
patentable in the previous reexamination (90/012,744) are taught
by Frank and provides a further citation as shown above, i.e.,
Frank, col. 3, ll. 2–4. . . . Thus, the SNQ in the instant
reexamination (90/013,146) over Frank is proper because at
least the above citation of Frank [column 3, lines 2–4] was not
discussed during the previous reexamination as to the actual
claim language and, therefore, it is new and noncumulative to
the record. The SNQ is based in a new light or a different way
that escaped review during earlier examination as shown above,
as discussed in the Order granting reexamination.
(Ans. 21 (emphasis added).) Column 3, lines 2–3 of Frank discloses the
following:
In addition, a window selection method is disclosed to permit a
user to render a window “active” and operate on its contents
without disturbing the current window order on the display.
(Col. 3, ll. 2–3 (emphasis added.)
Thus, although the Figure 8 embodiment and the Figure 10
embodiment of Frank, along with the corresponding text at columns 9–10 of
Frank, were previously considered, the newly cited passages of Frank, which
provides for displaying “contents without disturbing the current window
order on the display,” presents Frank in a new light and constitutes a new,
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non-cumulative technical teaching. In particular, the Figure 8 embodiment
and the Figure 10 embodiment of Frank are silent with respect to content
display that does not “disturb[] the current window order.” Accordingly,
because Frank is presented in a new light, the Examiner properly determined
that a substantial new question of patentability has been raised. In re
Swanson, 540 F.3d 1368, 1380 (Fed. Cir. 2008) (“The appropriate test to
determine whether a ‘substantial new question of patentability’ exists should
not merely look at the number of references or whether they were previously
considered or cited but their combination in the appropriate context of a new
light as it bears on the question of the validity of the patent” (quoting H.R.
Rep. No. 107-120, at 3)).
Second, Appellant argues that “[i]n its decision, the Board agreed
with Appellants that ‘[t]here is no single embodiment in Frank in which both
translucent and base windows are selectably active to receive user input and
the base window remains at least partially covered by said translucent
[window] even when selected’ and that ‘[i]n the embodiment of FIG. 10, the
translucent and base windows are always active’” however, “in the Board’s
new ground of rejection, it found that the embodiment found in Figure 10
did anticipate the ‘selectably active to receive user input’ limitation.” (Req.
for Reh’g. 9 (alterations in original).) Accordingly, Appellant argues, “[t]he
Board’s decision is internally contradictory.” (Id.)
Our Decision states the following:
Accordingly, because Figure 8 of Frank activates window
255 by placing cursor 265 within window 255 to bring window
255 to the “top” and Figure 10 of Frank activates window 255
through the use of buttons 280–283, such that window 255 can
be accessed “through” window 260, Figure 8 of Frank and
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Figure 10 of Frank constitute two separate embodiments. . . . The
Examiner’s rejection of independent claim 29 under 35 U.S.C.
§ 102(e) is improper because it is based upon picking, choosing,
and combining the two separate embodiments of Figures 8
and 10 of Frank.
(Dec. 6–7 (emphases added).)
Accordingly, we are persuaded by Appellant’s argument
that “[t]here is no single embodiment in Frank in which both
translucent and base windows are ‘selectably active to receive
user input’ and the base window ‘remains at least partially
covered by said translucent [window] even when selected’”
because “[i]n the embodiment of FIGs. 8 and 9, the base window
does not remain at least partially covered by the translucent
window even when selected” and “[i]n the embodiment of
FIG. 10, the translucent and base windows are always active.”
(Dec. 7–8 (alterations in original).) Thus, when the statement in our
Decision, “we are persuaded by Appellant’s argument that ‘[t]here is no
single embodiment in Frank in which both translucent and base windows’”
is read in the context of the surrounding paragraphs, rather than as an
isolated sentence fragment, our agreement with Appellant’s argument that
“[t]here is no single embodiment in Frank in which both translucent and
base windows” is in reference to the Examiner’s improper fact finding with
respect to Frank, in which two embodiments were combined in an
anticipation rejection. In other words, our agreement with Appellant’s
arguments was not an acknowledgement that the Figure 10 embodiment of
Frank does not disclose the disputed limitation.
Third, Appellant argues “the Board’s statement that ‘the underlying
application programs for window 260 (i.e., word processing) and window
255 (i.e., clock with alarm) are either “active” or “inactive”’ is a non
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sequitur” because “[a]n ‘application program’ is not an ‘image.’” (Req. for
Reh’g. 11 (alteration in original)(citations omitted).)
The Specification of the ’922 patent discloses that following:
To indicate the implementation of the invention in greater detail,
FIG. 3a illustrates an Apple Computer Macintosh display
screen 60 with a single non-translucent window 62 shown on one
portion of screen 60, and a gadget bar 64 including a wand
icon 66 for transforming selected image windows between
opaque and translucent states. Window 62 encloses an image, in
this case a circle 68, for example. This circle 68 is considered to
represent an arbitrary image of interest to the user. Window 62
can be considered to be an image produced by a first application
or “APP#1” program selected by the user.
(Col. 9, ll. 1–11 (emphasis added).)
FIG. 3b illustrates an Apple Computer Macintosh display
screen 62 with a pair of overlapping non-translucent, i.e., opaque
windows, respectively, 62 and 70, shown on one portion of
screen 60. Window 60 is produced by a first application program
“APP#1,” and window 70 is produced by a second application
program “APP#2.”
(Col. 9, ll. 17–22 (emphasis added).) Thus, under the broadest reasonable
interpretation consistent with the Specification of the ’922 patent, we
construe the claim limitation “image” as broad enough to encompass a
window (e.g., window 62 or window 70) produced by an application (e.g.,
APP#1 or APP#2).
Furthermore, our Decision states that:
Figure 10 of Frank illustrates display 250 including window 255
as a word processing document and window 260 as clock 275.
Frank explains that “[t]he selection of window 255 through the
use of buttons 280 to 283 permits the user to access shut off alarm
box 277 ‘through’ window 260” while “the window 260
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[containing word processing documents] not having been
rendered ‘active’ is transparent to the actions of the user, thereby
permitting the user to operate on data disposed in an underlying
window such as, for example, accessing the shut off alarm box
277.” In other words, while buttons 280 to 283 for window 255
or buttons 285 to 288 for window 260 may be considered as
always “active,” the underlying application programs for
window 260 (i.e., word processing) and window 255 (i.e., clock
with alarm ) are either “active” or “inactive.”
(Dec. 12 (alterations in original)(citations omitted).) When the “application
programs” of Frank is read in the context of the entire paragraph, our
Decision indicates that examples of such “application programs” of Frank
includes window 255 and window 260. Thus, under the broadest reasonable
interpretation consistent with the Specification of the ’922 patent, the claim
limitation “image” as broad enough to encompass window 255 and window
260 of Frank.
Fourth, Appellant argues “[t]he Board’s artificial removal of the
buttons from the windows in Frank finds no support in the record.” (Req.
for Reh’g. 12.) In particular, Appellant argues “Frank explains that the
buttons ‘have been added to the four comers of [the] window[s]’ and
accordingly, “they are ‘in’ the window.” (Id. (alteration in original).)
Frank discloses the following:
The CPU is further coupled to one or more input devices which
permits a user to selectively position a cursor and input and
manipulate data within each of the windows on the display. The
windows include defined areas having window features such as
text, icons and buttons corresponding to functions to be executed
by the CPU.
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(Abstract (emphases added).) Thus, Frank provides an explanation that the
buttons in each window is a separately “defined area” based on CPU
function (see id.), rather than an “artificial removal” of buttons from the
window, as argued by Appellant (Req. for Reh’g. 12).
In addition, Frank discloses that “[r]eferring now to FIG. 3, a
conceptual illustration of a prior art window based display system is shown”
and “[a]s illustrated, a top active window 100 overlays a window 102, which
in turn overlays a window 103.” (Col. 5, ll. 30–33 (emphasis added).)
Frank further discloses the following:
In traditional window based display systems, a user operating on
data disposed in window 100 would have to select a window to
operate upon. In many current generation window display
systems, the user places the cursor 36 in the area comprising
window 103, and momentarily depresses (“clicks”) switch 34 on
mouse 28, to bring that window to the top and operate on data
within window 103.
(Col. 5, ll. 49–55.) Figure 3 of Frank, which illustrate a “prior art window
based system requiring window clipping for overlapping windows” (col. 3,
ll. 12–13), including top active window 100 overlaying window 200 and
window 300, is reproduced below.
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Thus, Frank explains that window 100 is an “active” window (col. 5, ll. 30–
33), such that “a user operating on data disposed in window 100 would have
to select a window to operate upon” (col. 5, ll. 49–50). Moreover, because
Frank further explains that “the user places the cursor 36 in the area
comprising window 103, and momentarily depresses . . . switch 34 on
mouse 28, to bring that window to the top and operate on data within
window 103” (col. 5, ll. 52–55) when window 103 is underlying window
100, window 103 is not “active.”
Frank further discloses the following:
Although it is traditional to bring all active windows to the top in
a window based system prior to operating upon them [as
illustrated in Figure 3], utilizing the teachings of the present
invention, it is not necessary.
Referring now to FIG. 10, windows 255 and 260 are once again
illustrated as being displayed in display 250. However, it will be
noted that active window selection buttons 280, 281,282 and 283
have been added to the four corners of window 255. Similarly,
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buttons 285, 286, 287 and 288 have been added to the four
corners of window 260, as shown. By placing cursor 265 over
one of the buttons 280 to 283 in window 255, or one of buttons
285 to 288 for window 260, and momentarily depressing switch
34 on mouse 28 as previously described, either window 255 or
window 260 may be selected without altering the relative
position of the windows on the display 250.
(Col. 9, l. 59 to col. 10, l. 7 (emphases added).) Accordingly, because Frank
explains that buttons 280–283 to activate window 255 have been “added to
the four corners of window 255” (or buttons 285–288 have been “added to
the four corners of window 260”), such buttons are separate from window
255 (see id.), rather than an “artificial removal” of buttons from the window,
as argued by Appellant (Req. for Reh’g. 12).
Last, Appellant argues that “[i]n explaining its new ground for
rejection, the Board disregarded entirely Dr. Klemmer’s testimony, and it
cited no evidence at all in support of its contrary conclusion.” (Req. for
Reh’g. 14–15.) In particular, Appellants argues that “Dr. Klemmer thus
demonstrated that, because Frank discloses that Figure 10’s comer buttons
are always capable of being selected, Figure 10’s windows must likewise
always remain active to receive user input” and accordingly, “because the
windows of Figure 10 are always active to receive user input, they are not
images that are selectably active to receive user input, and this embodiment
cannot anticipate the claims.” (Id. at 14 (alterations in original).)
Paragraph 19 of a Declaration under 37 C.F.R. § 1.132 of Scott
Klemmer, Ph.D., dated December 1, 2014, states the following:
In contrast to the windows in FIG. 8 of Frank, persons of ordinary
skill in the art would not consider either of the windows in
FIG. 10 to be “selectably active to receive user input”. Each
window is always active to receive user input via the comer
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buttons. For the buttons to provide the described function, they
must necessarily be active to receive user input, even if the
remainder of the window is not.
(Klemmer Decl. ¶ 19 (emphasis added).) Accordingly, Dr. Klemmer admits
that in Figure 10 of Frank, while buttons 280 to 283 for window 255 (or
buttons 285 to 288 for window 260) may be considered as always “active,”
the underlying window 260 (i.e., word processing) and window 255 (i.e.,
clock with alarm ) are either “active” or “inactive.” (See id.) Thus,
Appellant’s argument that “Figure 10’s windows must likewise always
remain active to receive user input” (Req. for Reh’g. 14 (emphasis added))
is directly contradicted by Dr. Klemmer’s own admission that “[f]or the
buttons to provide the described function, they must necessarily be active to
receive user input, even if the remainder of the window is not” (Klemmer
Decl. ¶ 19) (emphasis added)).

CONCLUSION
The Request for Rehearing has been considered and denied.

REHEARING DENIED

cu
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PATENT OWNER:
Morrison & Foerster LLP
425 Market Street
San Francisco, CA 94105-2482

THIRD PARTY REQUESTER:

Oblon, Spivak, McClelland, Maier & Neustadt, LLP
1940 Duke Street
Alexandria, VA 22314