Ex Parte Bailey et al

Patent Trial and Appeal Board

Mar 17, 2017

13606846 (P.T.A.B. Mar. 17, 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.
13/606,846 09/07/2012 MATTHEW C. BAILEY GB920120091US1
8152-0199
5304
73109 7590 03/21/2017
rWnnt Fnrsvfiie& Kim T T C EXAMINER
20283 State Road 7
Ste. 300
BLAUFELD, JUSTIN R
Boca Raton, EL 33498 ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
03/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW C. BAILEY, ANDREW J. DANIEL,
RICHARD W. PILOT, and CHRISTOPHER M. WEBSTER
Appeal 2016-007388
Application 13/606,846
Technology Center 2100
Before DEBRA K. STEPHENS, IRVIN E. BRANCH, and
SHARON FENICK, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-007388
Application 13/606,846
CLAIMED SUBJECT MATTER
The claims are directed to annotating user interface documents.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of helping a user to use a first application, the
method comprising:
presenting to the user a help document, the help document
describing at least one step for using the first application and
including metadata, the metadata indicating at least a first user
interface element of the first application corresponding to the
step; and
highlighting, in the first application, the first user interface
element to indicate to the user to select the first user interface
element to perform the step, wherein the first application is
external to the help document, and the highlighting is responsive
to a processor processing the metadata and without user
interaction with the help document.
REFERENCES AND REJECTIONS
Claim 20 stands rejected under 35 U.S.C. § 101 because it is directed
to non-statutory subject matter. Final Act. 7—9.
Claims 1, 3, 10-12, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) over the combination of Li (US 2012/0110444 Al; published May
3, 2012) and Livingston (US 6,452,607 Bl; Sept. 17, 2002). Final Act. 9—
13.
Claims 2, 8, 9, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
over the combination of Li, Livingston, and Cohen (US 7,024,658 Bl; Apr.
4, 2006. Final Act. 13—16.
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Application 13/606,846
Claims 4, 5, 14, and 15 stand rejected under 35 U.S.C. § 103(a) over
the combination of Li, Livingston, and Hintermeister (US 2007/0226650 Al;
published Sept. 27, 2007). Final Act. 16—18.
Claims 6, 7, and 16 stand rejected under 35 U.S.C. § 103(a) over the
combination of Li, Livingston, and Bala (US 2006/0184880 Al; published
August 17, 2006). Final Act. 18—20.
APPELLANTS’ CONTENTIONS
Appellants contend the Examiner erred in rejecting claim 20 under
35 U.S.C. § 101 because the claimed invention excludes patent ineligible,
“transitory, propagating signals.” App. Br. 5—19.
Appellants contend the Examiner erred in rejecting claim 1 because
the combination of Li and Livingston does not teach or suggest a help
document including metadata and highlighting “to indicate to the user to
select the first user interface element to perform the step.” Id. 20—24.
Appellants contend the Examiner erred in rejecting claim 3 because
the combination of Li and Livingston does not teach or suggest highlighting
“performed without selecting the first user interface element.” Id. 24—26.
OPINION1
35 U.S.C. § 101 Rejection
Appellants’ arguments (App. Br. 5—19) do not persuade us of error in
the Examiner’s findings and conclusion that claim 20 recites patent
1 Only those arguments actually made by Appellants have been considered
in this Decision. Arguments that Appellants did not make in the Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014).
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Appeal 2016-007388
Application 13/606,846
ineligible subject matter (Final Act. 2—\\ Ans. 3—7). We sustain the
rejection, adopting the Examiner’s findings and conclusion. Id.
35 U.S.C. § 103 Rejection of Claim 1
Appellants’ arguments do not persuade us of error in the Examiner’s
rejection of claim 1. App. Br. 20—24; Reply Br. 2—3. We adopt the
Examiner’s findings and conclusion that claim 1 is obvious. Final Act. 10—
11. We highlight the following for emphasis.
Appellants argue Li does not teach or suggest a metadata inclusive
help document because the “operation records,” cited by the Examiner as the
claimed metadata (Final Act. 10), are “separate from the modified help
document 134.” App. Br. 20 (citing Li Fig. 1).
The Examiner finds Li discloses “an enhanced help document 134 for
an application 114 and a set of operation records that correspond to the
enhanced help document 134 may be distributed as a single package with the
application 114.” Ans. 9 (citing Li 134).
Appellants’ do not persuade us the Examiner’s finding are in error,
arguing “the application to which a help document relates is not properly
considered as ‘metadata’ of the help document.” Reply Br. 3. Appellants’
arguments are unpersuasive because the Examiner cites the “operation
records,” rather than the application, as the claimed metadata. Final Act. 10.
Accordingly, Appellants’ argument is unavailing.
Appellants also argue Li does not teach or suggest claim 1 ’s
“highlighting ... to indicate to the user to select the first user interface
element to perform the step.” App. Br. 22—24. We find Appellants’
arguments unpersuasive of error for the reasons stated by the Examiner
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Appeal 2016-007388
Application 13/606,846
(Ans. 10-12), which Appellants do not persuasively rebut (see generally
Reply Br.).
In view of the foregoing, we are unpersuaded of error in the
Examiner’s rejection of claim 1 and of the rejections of claims 2 and 4—20,
which Appellants state stand or fall therewith. See App. Br. 26—28.
35 U.S.C. § 103 Rejection of Claim 3
Claim 3 depends from claim 1 and recites “wherein the highlighting is
performed without selecting the first user interface element.” The Examiner
finds “Li does not appear to explicitly disclose a method where the
highlighting does not include selecting the user interface element.” The
Examiner cites Livingston for dynamically displaying help control adjacent
to a control option. Final Act. 12 (citing Livingston Fig. 2 and 4:10—15, 28—
30). The Examiner finds an ordinarily skilled artisan would have been
motivated to combine Li and Livingston “because ‘[a]s not uncommon with
computer programs and interfaces, it is not obvious to a user why [an] option
[] is disabled and not selectable’.” Final Act. 12 (quoting Livingston 4:5—9).
Appellants argue that, because Livingston discloses the control option
is actually disabled, there is no reason for “highlighting ... to indicate to the
user to select the first user interface element.” App. Br. 25—26 (citing
Livingston 4:10—15)). We understand Appellants to argue that the
Examiner’s rejection is erroneous because the intended use of the
highlighting (“to indicate to the user to select the first user interface element
to perform the step” in claim 1) is at odds with the Examiner’s stated
motivation for combining the references.
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Application 13/606,846
We first note that “the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Accordingly, whether the highlighting “indicate[s] to the user to select the
first user interface element to perform the step” is immaterial. Further,
Livingston is not limited to displaying help control only when the control
option is disabled. Rather, Livingston discloses displaying help control in
“noteworthy” situations. Livingston 5:4—6. See Am,. 15.
Moreover, the Examiner’s stated motivation for combining the
references need not conform to Appellants’. See e.g., In re Lintner, 458 F.2d
1013, 1016 (CCPA 1972) (noting “[t]he fact that appellant uses [a chemical]
for a different purpose does not alter the conclusion that its use in a prior art
composition [would have been] prima facie obvious from the purpose
disclosed in the references”).
Ultimately, Appellants’ arguments are unavailing because the
Examiner correctly finds (Final Act. 12) that Livingston explicitly discloses
dynamically displaying help control (i.e., highlighting) adjacent to a control
option (Livingston 4:10-15, 28—30) and displaying help control (without
selecting the option as recited in claim 3) is useful for informing users why a
control option is disabled {id. 4—6). As such, the Examiner has articulated
reasoning with a rationale underpinning and Appellants have not persuaded
us the stated motivation is in error.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20.
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Application 13/606,846
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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