Ex Parte Ban et al

Patent Trial and Appeal Board

Oct 16, 2013

11289106 (P.T.A.B. Oct. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte OLIVER K. BAN, GLENN D. JOHNSON,
SHU-CHEN LIM, and JOHN S. MARESCA
__________

Appeal 2011-009199
Application 11/289,106
Technology Center 2100
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
to return a display on a screen of a device to a pre-selected language. The
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as International
Business Machines Corporation (see App. Br. 3).
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Statement of the Case
Background
“[T]he present invention relates to methods, systems, and media for
changing language characters displayed in graphical user interfaces and
application programming interfaces” (Spec. 1 ¶ 0001).
The Claims
Claims 1, 13, 18, and 21 are on appeal (see App. Br. 3)2. Claim 1 is
representative and reads as follows:
1. A method to return a display on a screen of a device to a pre-
selected language, the method comprising:
enabling access for a user of the device to an element in more
than one navigable displays for the screen, wherein the element is
adapted to be activated without selection of a plurality of menu
elements by the user;
displaying, continuously, the element in the more than one
navigable displays, wherein language characters of the element are
consistently displayed in the pre-selected language regardless of a
currently configured language of the device; and
linking activation of a language function with activation of the
element of the user interface, wherein the language function is
adapted to switch from the currently configured language associated
with a current display of the more than one navigable displays on the
screen to the pre-selected language.

The issues
A. The Examiner rejected claims 1-5, 7-10, 12-14, 16, 18, 19, and 21-26
under 35 U.S.C. § 103(a) as obvious over Morgan,3 Scanlan,4 and Seitz5
(Ans. 4-10).

2 Appellants do not identify claims 4-6, 8-12, 15, 17, 20, or 22-26
as subject to the instant appeal (see App. Br. 3; Claims Appendix).
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B. The Examiner rejected claims 6, 11, 13, 17, and 20 under 35 U.S.C.
§ 103(a) as obvious over Morgan, Scanlan, Seitz, and Tognazzini6 (Ans. 11-
12).
A. 35 U.S.C. § 103(a) over Morgan, Scanlan, and Seitz
The Examiner finds that Morgan teaches a “method to return a display
on a screen of a device to a pre-selected language, the method comprising:
enabling access for a user of the device to an element in more than one
navigable displays for the screen” (Ans. 4). The Examiner acknowledges
that Morgan doesn’t teach “wherein the element is adapted to be activated
without selection of a plurality of menu elements by the user; displaying
continuously, the element in the more than one navigable display” (id. at 5).
The Examiner finds that Scanlan teaches “displaying translation options with
the screen and therefore user does not have to scroll through to activate
selection and the explorer can always be present” (id.). The Examiner finds
that Seitz teaches “an English web page that has been translated to a foreign
language but maintains elements in the original language (Figure 4 (yahoo
search elements)). The elements which are provided in a consistent
language pertain to language functionality within the display” (id.).
The Examiner finds it obvious to “provide translation options that are
always present within the instructions of Morgan as taught by Scanlan. One
would have been motivated to provide the selection screen as an improved
design choice for immediate selection” (id.).

3 Morgan et al., US 7,257,440 B2, issued Aug. 14, 2007.
4 Scanlan, P., US 6,857,022 B1, issued Feb. 15, 2005.
5 Seitz et al., US 2006/0265652 A1, published Nov. 23, 2006.
6 Tognazzini, B., US 6,473,728 B1, issued Oct. 29, 2002.
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The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Morgan, Scanlan, and Seitz render
claims 1, 13, 18, and 21 obvious?
Findings of Fact
1. The Specification teaches that “the element displayed on the
GUI or API screen to select a display language may be a continually visible
menu bar item” (Spec. 7, ll. 4-5 ¶ 0019).
2. The Specification teaches an embodiment where
GUI screen 200 depicted in both FIG 2 and FIG 3 contains
an “English” selection box 245. . . . Worth emphasizing, for
the embodiment depicted in FIG 2 and FIG 2 [sic 3], note
that “English” selection box 245 has English language
characters when English is selected as the desired language,
as in FIG 2, and also English language characters when
Chinese is selected as the desired language, as in FIG 3.

(Spec. 10, ll. 7-13 ¶ 0029.)
3. The Specification teaches that “GUI window 500 may have a
row of option buttons for selecting a different display language, such as
English option button 520, German option button 530, Spanish option button
540, Chinese option button 550, and Russian option button 560” (Spec. 13,
ll. 21-23 ¶ 0038).
4. Morgan teaches that:
display 410 could list one or more languages, and the user
could use the contrast button 408 to scroll through the list
until the desired language is highlighted. Thereafter, the
user could use, for example, the up contrast button 406 to
actually select the language. The instructions would then be
visible on the display 410 or audible through the speaker
412, or a combination thereof. Additionally, if the
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defibrillator was relying on voice instructions from the user
(as discussed below), the phenomes would be received
through the microphone . . .

(Morgan, col. 8, ll. 14-23).
5. Figure 2 of Scanlan is reproduced below:

“FIG. 2 shows an example of a one-click explorer bar embodiment of a
translation ordering component” (Scanlan, col. 2, ll. 46-47).
6. Scanlan teaches
[A] one-click translation component displayed
simultaneously with at least part of an electronic
communication, said translation component comprising an
object identified as effecting a translation of said electronic
communication; a translation manager in communication
with said one-click translation component via a
communication network, said translation manager obtaining
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a translation of said electronic communication in response to
a user clicking said one-click translation component, and
directing transmission of said translation of said electronic
communication to the user.

(Scanlan, col. 2, ll. 32-41.)
7. Scanlan teaches that
FIG. 2 shows a screen shot of a web page 10 in English. At
the bottom of the screen is an explorer bar 11 that
implements a one-click translation component. . . .
The explorer bar may always be present in the
browser window but may also be invisible until the user
activates the translator plug-in button 12 on the tool bar

(Scanlan, col. 3, ll. 48-60).
8. Figures 3 and 4 of Seitz are reproduced below:

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“FIG. 4 is a screen capture illustrating an exemplary embodiment of the
invention wherein the page at the URL of FIG. 3 has been translated” (Seitz
2 ¶ 0018).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
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Analysis
Morgan teaches a device with a screen which enables user access to
an element for selecting a language display and which links the user
selection with the activation of the language function, permitting a switch
from the currently displayed language to another language (FF 4). Scanlan
teaches a display (FF 5) which includes “an explorer bar 11 that implements
a one-click translation component. . . . The explorer bar may always be
present in the browser window” (Scanlan, col. 3, ll. 48-59; FF 7). That is,
the explorer bar of Scanlan displays, continuously in different windows, an
element which permits the user to translate the displayed page from a first
language to a second language (FF 6-7). Figure 4 of Seitz demonstrates a
page translated into Japanese where the start bar and other features remain in
a default, English language mode (FF 8).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that it would have been obvious to an ordinary artisan to combine
the separate teachings of Morgan, Scanlan, and Seitz to create a language
element continuously displayed on a device screen where activation of the
language element permits translation of the screen contents to a selected
different language, while maintaining the text of the element itself in a pre-
selected language (FF 4-8). Such a combination is merely a “predictable use
of prior art elements according to their established functions.” KSR, 550
U.S. at 417.
Appellants contend that “the combination of Morgan, Scanlan, and
Seitz still does not teach or suggest enabling access to an element in more
than one navigable displays for the screen, wherein the element is
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continuously displayed in the pre-selected language regardless of the
currently configured language” (App. Br. 6). Appellants contend that
“displaying one element in one display in a language that is different from
the current configured language does not amount to displaying the element
in both displays in the pre-selected language” (id. at 6-7).
We are not persuaded. Scanlan teaches a display (FF 5) which
includes “an explorer bar 11 that implements a one-click translation
component. . . . The explorer bar may always be present in the browser
window” (Scanlan, col. 3, ll. 48-59; FF 7). This is an express suggestion
that the explorer bar, here the “element,” should be present in multiple
displays (FF 7). While Scanlan does not expressly teach that the explorer
bar remains in a pre-selected language after translation, Seitz provides a
figure showing that this concept was known to the ordinary artisan (FF 8).
Consequently, the person of ordinary skill and creativity would reasonably
have recognized that maintaining Scanlan’s explorer bar in a pre-selected
language, such as English, would “allow user ability return to original views
in the case of a mistake” (Ans. 6).
Appellants contend that “Seitz employs two different elements for
two displays when translating text of a web page” (App. Br. 7). Appellants
contend “that the ‘View Original’ element in Fig. 4 is a completely different
element than the ‘menu’ element of Fig. 3” (id.). Appellants contend that
“neither of the two elements in the first and second displays of Seitz (Fig.
3, element 27; Fig. 4, ‘View Original’ element) is shown with the pre-
selected language characters in both displays, regardless of the currently
displayed language” (id. at 8).
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While we agree with Appellants that Seitz does not use a single
element, Seitz is not relied upon by the Examiner for this teaching. The
Examiner expressly finds that “the element of Seitz is not meant to provide
the direct functionality of the selection element, this is previously covered in
Scanlan” (Ans. 13). We agree with the Examiner that Scanlan teaches a
single element, which may be present on multiple pages (FF 7), and which
performs the translation function. Seitz is simply used to show evidence that
the ordinary artisan would have had reason and a reasonable expectation of
success in retaining text in a preselected language as well as the translated
language (FF 8).
Appellants rely upon essentially the same arguments for claims 13,
18, and 21, which we do not find persuasive for the reasons given above.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Morgan, Scanlan, and Seitz render claims 1, 13, 18, and 21 obvious.
B. 35 U.S.C. § 103(a) over Morgan, Scanlan, Seitz, and Tognazzini
The Examiner relies upon Morgan, Scanlan, and Seitz as discussed
above, further finding that Tognazzini “discloses a touch screen for selecting
a target” (Ans. 11). The Examiner finds it obvious to combine the prior art
“to include the touch screen to improve the selection functionality of the
system” (id.).
The Examiner provides sound fact-based reasoning for combining
Tognazzini with Morgan, Scanlan, and Seitz. We adopt the fact finding and
analysis of the Examiner. Appellants provide no arguments relating to this
rejection, so we affirm this rejection for the reasons given above.
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SUMMARY
In summary, we affirm the rejection of claims 1, 13, 18, and 21 under
35 U.S.C. § 103(a) as obvious over Morgan, Scanlan, and Seitz. Pursuant to
37 C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2- 5, 7-10, 12,
14, 16, 19, and 22-26, as these claims were not argued separately.
We affirm the rejection of claims 6, 11, 13, 17, and 20 under 35
U.S.C. § 103(a) as obvious over Morgan, Scanlan, Seitz, and Tognazzini.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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