Ex Parte Arvin

Board of Patent Appeals and Interferences

Jan 30, 2012

10657427 (B.P.A.I. Jan. 30, 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.
10/657,427 09/08/2003 Scott Anthony Arvin G&C 30566.307-US-U1 9022
55895 7590 01/31/2012
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
01/31/2012 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 SCOTT ANTHONY ARVIN
____________________

Appeal 2009-012169
Application 10/657,427
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012169
Application 10/657,427

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-17, 19-33, and 35-48. Claims 2, 18, and 34 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added to
the disputed portion at issue, reads as follows:

1. A method for temporarily displaying information relating to an
object manipulator:

displaying a graphic object in a computer graphics program;

displaying an object manipulator on the graphic object, wherein the
object manipulator comprises a glyph or symbol that is used to modify a
property of the graphic object;

receiving cursor input wherein a cursor is placed over the object
manipulator; and

temporarily displaying information relating to the object manipulator
without activating the object manipulator.
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Application 10/657,427

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Examiner’s Rejection
The Examiner rejected claims 1, 3-17, 19-33, and 35-48 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Arora (US
5,845,299; Dec. 1, 1998), Malamud (US 6,948,126 B2; Sep. 20, 2005), and
Kreegar (US 5,396,590; Mar. 7, 1995).
Examiner’s Findings
The Examiner determines that Arora’s Figure 5 teaches displaying an
object manipulator on a graphic object in a computer graphics program
(Ans. 3). Specifically, the Examiner refers to the properties window shown
in Figure 5, and its relationship to items 502 and 504 (Ans. 3). In addition,
the Examiner states in the Advisory Action that Arora’s Figure 40 showing
items 394 and 4004 teaches that a “property window is displayed on the
graphic object window.” (Advisory Action mailed March 17, 2008 at 2).
Appellant’s Contentions
Appellant presents numerous arguments as to why the Examiner has
erred (see App. Br. 6-21; Reply Br. 11-21). We will focus our discussion
below on the dispositive issue.
Appellant contends that the Examiner erred in rejecting claims 1, 17,
33 (all of the independent claims on appeal) under § 103(a) because Arora
and Malamud fail to teach displaying an object manipulator on a graphic
object, as set forth in independent claims 1, 17, and 33 (App. Br. 7-8 and 13-
14; Reply Br. 12, 14, and 17-20). Appellant contends that the property
window in Arora’s Figure 5 is displayed to the side of items 502 and 504
(App. Br. 7-8). Appellant also contends that Arora’s Figure 40 shows a tool
window that is not displayed over any objects, and that column 9, lines 40-
Appeal 2009-012169
Application 10/657,427

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50 similarly fail to describe such a feature (App. Br. 13-14; Reply Br. 17-
20).

ISSUE
Based on Appellant’s arguments specifically listed above (see App.
Br. 7-8 and 13-14; Reply Br. 12, 14, and 17-20), the issue presented is: Did
the Examiner err in rejecting claims 1, 3-17, 19-33, and 35-48 under 35
U.S.C. § 103(a) because Arora fails to teach or suggest displaying an object
manipulator on a graphic object in a computer graphics program, as recited
in each of independent claims 1, 17, and 33?1

1 We recognize that Appellant’s arguments present additional issues. Many
of the arguments presented by the additional issues are not persuasive;
nonetheless we were persuaded of error by this issue and as such we do not
reach the additional issues as this issue is dispositive of the appeal.
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Application 10/657,427

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ANALYSIS2
We have reviewed Appellant’s arguments in the briefs and we concur
with Appellant’s conclusion that the Examiner erred in finding that Arora
teaches displaying an object manipulator on a graphic object in a computer
graphics program, as recited in each of independent claims 1, 17, and 33.
We agree with Appellant’s above specifically cited contentions regarding
Arora. We similarly agree with Appellant’s arguments (App. Br. 8; Reply
Br. 12) that Malamud’s Figures 2D-2H fails to teach displaying an object
manipulator on a graphic object. Notably, the Examiner fails to address
Appellant’s arguments in the Appeal Brief concerning the claim language
“displaying an object manipulator on the graphic object . . .” (claim 1), or
otherwise rebut Appellant’s contentions regarding this limitation found in
each of claims 1, 17, and 33. See Ans. 10-13.
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
17, 33 which each recite displaying an object manipulator on a graphic

2 We have decided the appeal before us. However, we request that the
Examiner review the claims and the prior art to determine whether the
limitation requiring “displaying an object manipulator on a graphic object in
a computer graphics program” is nothing more than a mere design choice
and therefore obvious in light of the cited prior art. Arora teaches objects
502 and 504 and a “Properties” window that is an object manipulator. Arora
Fig. 5. We specifically request the Examiner to consider whether the
re-arrangement of these known elements such that the object manipulator is
on the graphic object provides any novel or unpexected results. A design
choice may be an acceptable rationale for an obviousness rejection when a
claimed product merely arranges known elements in a configuration that
provides no novel or unexpected results. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (“the particular placement of the contact provides no novel or
unexpected results. The manner in which electrical contact is made for
Smith's battery would be an obvious matter of design choice within the skill
of the art.”).
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object in a computer graphics program. For the same reason, and by way of
dependency on respective ones of claims 1, 17, and 33, we do not sustain the
rejection of the remaining dependent claims.

CONCLUSION
The Examiner erred in rejecting claims 1, 3-17, 19-33, and 35-48 as
being unpatentable under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1, 3-17, 19-33, and 35-48 is
reversed.

REVERSED

dw