Ex Parte Balasubramanian

Board of Patent Appeals and Interferences

Jul 25, 2012

11505131 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/505,131 08/15/2006 Swaminathan Balasubramanian END920060125US1 4568
30449 7590 07/26/2012
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
UM, DANIEL H
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
07/26/2012 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 SWAMINATHAN BALASUBRAMANIAN
____________

Appeal 2010-002374
Application 11/505,131
Technology Center 2100
____________

Before KARL D. EASTHOM, CAROLYN D. THOMAS, and
ROBERT A. CLARKE, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-24. (App. Br. 1.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
The claimed invention includes an icon which notifies a user that a
computer application has changed state. (See Spec. 1-2.) Claim 1 is
illustrative:
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1. A method, comprising:
monitoring the state of a software application, said application having
multiple possible states, said application running in out-of-focus mode;
displaying an icon in a task button in a taskbar region or on a desktop
region of a computer screen indicating a current state of said application;
and
in response to a change of state of said application from said current
state to a new state, changing said displayed icon representing said current
state to a different displayed icon representing said new state, said
application continuing to run in out-of-focus mode.
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Oran, U.S. 5,617,526 (Apr. 1, 1997).

OPINION
Independent claims 1, 11, and 16 include the claim phrase in dispute,
“displaying an icon in a task button in a taskbar region or on a desktop
region of a computer screen indicating a current state of said application.”
Claim 1 is selected as representative of most of the claims on appeal.
The Examiner finds that Oran satisfies claim 1 except for explicitly
showing the step of “displaying an icon in a task button in a taskbar region
or on a desktop region of a computer screen.” (Ans. 4.) The Examiner
reasons that such a step would have been obvious because “it is old and well
known in the art of graphical user interface design to place interactive image
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over images of ‘buttons’ for the purpose of indicating to the user that there is
an associated interactivity to the image.” (Ans. 4.)
Appellant challenges the latter statement. (App. Br. 8, Reply Br. 6.)
But the Specification indicates that “windows-like operating system[s] . . .
utilize[] a task bar” and refers to “the task button icons” therein. (See Spec.
6.) Similarly, Oran discloses a “WINDOWS’ 95” system task bar (col. 3, ll.
21-22), an “an icon 30 within the taskbar notification area,” and “double
click[ing]” a “mouse button” and the icon. (Oran, col. 4, ll. 22-25.)
In other words, Oran describes the same or similar windows system as
the Specification and refers to icons and mouse buttons, and the
Specification describes similar buttons which have icons therein as known
windows-type buttons. Appellant notes that Oran discloses a “Windows 95”
system but contends that “Oran does not place his icons in buttons.” (App.
Br. 7.) But since Oran’s system is a windows system, and Oran essentially
refers to buttons and icons interchangeably, the record indicates that Oran’s
icons and buttons are buttons with icons. Therefore, despite Appellant’s
arguments to the contrary (see App. Br. 5-10), the record supports the
Examiner’s obviousness rationale.
Appellant hedges to a certain extent and alternatively argues that
“Windows 95” systems, such as Oran’s, have a shrinking task bar system so
that “any icons present in those buttons will be obscured as the buttons
shrink in size” (App. Br. 7) - thereby destroying the purpose of Oran’s
system (or teaching away from the claimed invention). To the contrary,
Oran discloses expanding the notification area “to accommodate the display
of the printer icon 30.” (Col. 3, ll. 58-60.) As such, accommodating the
display of a notifying icon would have been obvious. Also, claim 1 only
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requires one notifying icon so that Appellant’s teaching away and related
arguments based on obscuring multiple icons are not commensurate with the
claim scope.
Shifting to the alternative recited in the claim, according to the
Specification, “a desktop 100 (displayed on a computer screen) includes a
workspace region 105 and a taskbar region 110.” (Spec. 8.) As indicated
supra, there does not appear to be any dispute that Oran discloses a notifying
icon, such as a printer icon, in the taskbar region. (See also Ans. 4 (citing
Oran col. 3, ll. 48-63; Fig. 4.); App. Br. 6-7 (citing Oran at col. 2, ll. 46-51).)
Therefore, since the desktop region includes the taskbar region according to
the Specification, it follows that Oran discloses the (notifying) printer icon
“on a desktop region” as claims 1, 11, and 16 require. For this additional
reason, Oran at least renders obvious the disputed limitation in claim 1.
The Examiner relies on Oran’s tool tip 34 to satisfy the icon overlay
limitations in claim 4. (Ans. 6, 11, see Oran Fig. 4.) The Examiner
contends that Oran’s tool tip indicates a changing state such as, for example,
the number of documents pending for a printer. (See Ans. 11 (citing Oran
Fig. 4).) Appellant counters, in a first argument, that Oran’s “tool tip 34 is
not displayed ‘in response to said change of state of said application’ as . . .
claim 5 [sic: 4] requires.” (App. Br. 11.)
Claim 1 recites “in response to a change of state . . . changing said
displayed icon.” Claim 4 depends from claim 1 and further requires
“wherein said changing said displayed icon in response to said change of
state includes (1) . . . adding an overlay icon . . . or (2) . . . changing said
overlay icon . . . or (3) . . . removing said overlay icon.” Dependent claims 9
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and 19 recite similar limitations. Hence, claim 4 is selected to represent this
group for purposes of appeal.
Appellant points to an isolated statement in Oran that “‘[t]he tool tip
34 is displayed solely in response to the mouse cursor’.” (App. Br. 11
(quoting Oran at col. 4, ll. 6-7) (emphasis added).) However, a fair reading
of Oran shows that the tool tip overlay icon ultimately changes in response
to both the change in the application state (e.g, the number of documents
pending for a printer) and the mouse cursor position, as the Examiner
reasons. (See Oran, col. 4, ll. 3-18; Ans. 11.) The Examiner further explains
that claim 4 does not preclude using Oran’s mouse cursor to display the tool
icon. (See Ans, 6, 11.) In other words, as the Examiner reasons, claim 4
does not require a response “solely” due to an application state change.
(Ans. 11.)
In other words, Oran satisfies the disputed limitation in claim 4. For
example, when Oran’s mouse cursor 32 is already pointing to the printer
icon 30, a displayed tool tip overlay icon 34 (over the printer icon) changes
in response to the application changing state. (See Oran Fig. 4.) That is, the
displayed tool tip overlay icon information changes by counting down as the
number of documents currently pending on the printer changes. (See Oran
Fig. 4, col. 4, ll. 3-18.) As such, Oran satisfies option “(2)” in claim 4 – i.e.,
changing said overlay icon.1 Alternatively, since claim 1 “includes” adding
an overlay icon under option “(1),” it does not preclude using Oran’s mouse
to add the overlay tool tip icon 34 – i.e., Oran’s overlay icon 34 changes in

1 Moving the mouse cursor away from the printer icon satisfies option “(3)”
in claim 4 since it “includes” changing the displayed icon by removing the
overlay icon.
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response to a change in the printer status and in response to the mouse
cursor.
Appellant’s second argument, that Oran’s “tool tip 34 . . . is a separate
entity from the icon 30 and does not represent a changed icon” (App. Br.
12), fails to demarcate a claim distinction. As indicated supra, claim 4
includes, as part of “changing said displayed icon,” adding, changing or
deleting an overlay icon “over said standard icon.” As such, the claimed
overlay icon reasonably constitutes, or does not preclude, a separate entity
(i.e., the overlay icon) from the underlying “standard icon.”
Appellant’s new Reply Brief arguments 1) that Oran’s tool tip is not
an overlay icon because it does not obscure part of the underlying icon and
2) that “the Examiner is ignoring common usage of Windows terms”
because “[a] text box is not an overlay icon” (Reply Br. 10), are untimely
and not in response to a new point which was raised for the first time in the
Examiner’s Answer. (See Fin. Rej. 6 (finding, before the Answer, that
Oran’s “tool tip is the overlay icon”).) As such, Appellant’s untimely
arguments are deemed waived. See Ex parte Borden, 93 USPQ2d 1473
(informative) (BPAI 2010).
Also, with respect to the merits of the untimely arguments,
Appellant’s disclosed “Windows” examples amount to preferred
embodiments and do not demonstrate that a reasonably broad reading of the
term “icon” precludes Oran’s text boxes where claim 4 does not call for
“Windows” icons (See Reply Br. 10.) And, though difficult to see, Oran’s
tooltip 34 appears to partially obscure, or at least touch the edge of, the top
paper portion of the underlying printer icon 30 in Oran’s Figure 4.
Applicant’s disclosed examples similarly only partially obscure the
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underlying icons. (See, e.g., overlay icon 140A in Spec. Fig. 2.) Based on
Oran’s disclosure, partially obscuring an underlying printer icon with
updated tool tip printer icon information would have been obvious since the
updated information would be more important than, and associated with, the
underlying printer notification icon; i.e., the updated tool tip information
icon supercedes the underlying notifying icon in importance. Such
overlaying would help to accommodate the viewing of other icons while
visually linking with the related notifying icon. (See App. Br. 7 (Appellant
essentially arguing that Oran teaches not obscuring other icons).)
The Examiner’s rationale and findings with respect to claim 5 also are
more persuasive than Appellant’s counter arguments. (Compare Ans. 6-7
and 12 with App. Br. 12-13.) Even if the Oran’s application only “‘passes
the handle to the new icon,’” as Appellant contends (App. Br. 13 (quoting
Oran)), such passing of the handle constitutes “providing icon image
resources” as clam 5 requires. Similarly, while Appellant’s Reply Brief
characterizes Oran as disclosing “that the application program provides a
handle to icon resources” (Reply Br. 12), providing that handle satisfies
claim 5.
Claim 21 recites “the method of claim 1, wherein said task bar button
includes a title.” Appellant’s arguments reduce to the assertion that the title
must be displayed. (App. Br. 13-15.) As the Examiner contends, the claim
does not require displaying any title. (Ans. 12.) Moreover, any displayed
title in a displayed icon would constitute non-functional descriptive printed
matter since any displayed title would not alter the function of the icon.
“‘Where the printed matter is not functionally related to the substrate, the
printed matter will not distinguish the invention from the prior art in terms of
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patentability.’” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d
1267, 1279 (quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) and
extending the rationale behind Gulack and In re Ngai, 367 F.3d 1336 (Fed.
Cir. 2004) to method claims citing informational instructions).
Alternatively, the Specification admits that titles were known aspects of
“MicrosoftTM Windows” task bar buttons. (See Spec. 6.) Labeling Oran’s
printer icon with a title such as “printer” would have been obvious for the
purpose of explicitly displaying implicit information to avoid any confusion.
Based on the foregoing discussion, Appellant has not shown that the
Examiner erred in rejecting clams 1-24.
DECISION
The Examiner’s decision to reject claims 1-24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

CU