10326689 (B.P.A.I. Sep. 29, 2010)

Ex Parte Bangalore et al

Board of Patent Appeals and InterferencesSep 29, 2010

10326689 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SRINIVAS BANGALORE and MICHAEL JOHNSTON ____________ Appeal 2009-004535 Application 10/326,689 Technology Center 2100 ____________ Before, JOHN A. JEFFERY, ST. JOHN COURTENAY III, and STEPHEN C. SIU, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We Affirm. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004535 Application 10/326,689 2 BACKGROUND Appellants’ invention relates generally to multi-modal computer interfaces. More particularly, the invention on appeal uses graphical widgets to increase the efficiency of multi-modal computer interaction. (Spec. 1, para. [0002]). Claim 1 is illustrative: 1. In a multi-modal dialog system, a method of providing widgets to a user, comprising after first user input and where further user input will clarify the first user input during a multi- modal dialog: maintaining a current display screen context; and presenting a confirmation widget on a display screen to elicit the further user input. The Examiner relies on the following prior art references as evidence of unpatentability: DeLorme US 6,321,158 B1 Nov. 20, 2001 Yakota US 6,640,185 B2 Oct. 28, 2003 Appellants appeal the following rejections: 1. Claims 1-8, 10-13, 15, 16, 18, and 19 under 35 U.S.C. § 102(b) as anticipated by DeLorme. 2. Claims 9, 14, and 17 under 35 U.S.C. § 103(a) as unpatentable over DeLorme and Yokota. Appeal 2009-004535 Application 10/326,689 3 ISSUES We decide the issues raised by Appellants seriatim in the Analysis below. FACTUAL FINDINGS We adopt the Examiner’s findings in the Answer and Final Office Action as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. We add the following factual findings: 1. DeLorme discloses a modal dialog box in which “holds text and pictures on screen while asking the user ‘Are you done?’ in effect.” (Col. 73, ll. 29-31). 2. DeLorme discloses that when the user is in the Map mode, the user can access other dialog boxes by clicking the appropriate tools or through the use of keyboard shortcuts, such as the arrow keys to pan the map in a corresponding direction. (Col. 25, ll. 15-17). We find the pan tool (widget) is removed after exiting the “Map” mode because DeLorme discloses that the map mode is accessed by pressing ALT+M. (Col. 25, ll. 34-35). 3. DeLorme discloses default (“Normal”) routing settings or parameters that may be altered or “reset” to the “favor” or “avoid” settings using the “Default” widget shown in Fig. 1H which sets the default parameters according to user input, wherein on subsequent presentations of the widget, the global preferences (reset default parameters) are applied. (Fig. 1H, see also Col. 53, ll. 20-41 and Fig. 4A). Appeal 2009-004535 Application 10/326,689 4 4. DeLorme discloses menus and dialog boxes (button widgets) which enable users to choose various routing computation options as illustrated in Fig. 1H and 1I, (Col. 53, ll. 17-21) and arrow widgets (Fig. 8E.) which are used to refine i.e., “adjust”) POI. (Col. 69, ll. 4-7). 5. DeLorme discloses alternative embodiments that include other input devices such as voice recognition, joystick, touchscreen, and simplified keypads. (Col. 8, ll. 53-56). Additional findings of fact may appear in the Analysis that follows. ANALYSIS Claims 1-7 Issue 1: Under §102, did the Examiner err in determining that DeLorme discloses maintaining a current display screen context after a first user input and where the further user input will clarify the first user input, within the meaning of claim 1? We find unconvincing Appellants’ argument that the “Are you done?” question displayed in DeLorme (Fig. 8C, element 857) does not disclose a confirmation widget for receiving further user input that clarifies the first user input during a multi-modal dialog. (See App. Br. 9; Reply Br. 4). We find the claim limitation of “maintaining a current display screen context” is clearly met by DeLorme’s express disclosure of a modal dialog box which “holds text and pictures on screen while asking the user ‘Are you done?’” (FF 1). Appeal 2009-004535 Application 10/326,689 5 Thus, we agree with the Examiner’s findings with respect to the aforementioned limitation. (Ans. 10). As acknowledged by Appellants, the question “Are you done?” elicits the user to select or delete the pertinent point of interest (POI), or select the OK button. (Reply Br. 4). Therefore, we find that selection of the confirmation widget (”Are you done”) clarifies completion of the route to the destination, or in other words clarifies the first user input (i.e., entering the destination or address). (FF 1). While Appellants additionally aver that DeLorme’s dialogs are not multi-modal (App. Br. 10), we agree with the Examiner findings (Ans. 9) that DeLorme discloses a multi-modal system that includes multiple input devices such as voice recognition, joystick, touchscreen, and simplified keypads. (FF 5). Regarding dependent claims 2-3, we note that Appellants have not traversed the Examiner’s findings regarding DeLorme’s Fig. 1A4e. (Ans. 3). Therefore, we do not find persuasive Appellants’ argument that the Examiner’s findings regarding the claimed “confirmation widget” are inconsistent. In particular, we note that in the rejection of claim 1 (from which claims 2-3 depend) the Examiner relies on DeLorme’s Fig. 1A4e as one of several figures that show widgets (icons) on the PDA to provide the user (i.e., elicit further input) with further instructions. (Ans. 3). Regarding independent claim 4, Appellants focus their arguments on Figures 5A-5C while failing to address the Examiner’s findings regarding Figures 1A4a-g and 1M-N. (Ans. 4). Moreover, Appellants do not argue a particular definition for the claim term “vague-parameter widget” that would distinguish over the Examiner’s findings regarding DeLorme. See n.2 infra. Appeal 2009-004535 Application 10/326,689 6 Regarding dependent claim 5, we do not agree with Appellants that the Examiner’s findings are inconsistent (App. Br. 14), because the Examiner does rely on Fig. 1M in the rejection of claim 4, from which claim 5 depends. (Ans. 4). Regarding dependent claims 6 and 7, we note that Appellants have essentially relied on the same arguments previously presented for claims 2-5 which we did not find persuasive. (App. Br. 14-15). Moreover, Appellants do not argue particular definitions for the recited terms “user-choice widgets, confirmation widgets, and vague-parameter widgets” (Claim 6) and “near-to widgets, zoom widgets, and pan widgets” (Claim 7) that would distinguish over the Examiner’s findings regarding DeLorme. We decline to speculate regarding how Appellants’ claims define the subject matter Appellants regard to be their invention. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). We particularly note that the burden of defining the invention lies with Appellants, not the PTO. 2 2 It is the Appellants’ burden to precisely define the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a patent applicant is entitled to be his or her own lexicographer of patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such definitions in the Specification with sufficient clarity to provide a person of ordinary skill in the art with clear and precise notice of the meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the specific terms used to describe the invention, this must be done with reasonable clarity, deliberateness, and precision; where an inventor chooses to give terms uncommon meanings, the inventor must set out any uncommon definition in some manner within the patent disclosure so as to give one of ordinary skill in the art notice of the change). Appeal 2009-004535 Application 10/326,689 7 For the aforementioned reasons, we do not find Appellants’ arguments persuasive of error regarding the Examiner’s anticipation rejection of claims 1-7 over DeLorme. Claim 8 Issue 2: Under § 102, did the Examiner err in determining that DeLorme discloses a near-to widget? Appellants contend that the Examiner ignores the requirement that the user input that will clarify the first user input during a multi-modal dialog and the first user input in claim 8 must be related to a distance. (App. Br. 15). Based upon our review of the record, we agree with the Examiner’s findings regarding claim 8. (Ans. 4-5). In particular, we find that DeLorme teaches the ability to pan a displayed map in order to show greater detail (i.e., related to distance on the map). (Col. 16, ll. 55-61). We further find that this portion of DeLorme is in accord with Appellants’ broad description of the “near-to widget” in the Specification: “the system . . . can also present a slider widget that helps the user to clarify the term ‘near.’” (Spec. [0050]) (emphasis added). For these reasons, we do not find Appellants’ argument persuasive of error regarding the Examiner’s anticipation rejection of independent claim 8. Independent Claim 10 Issue 3: Under § 102, did the Examiner err in determining that DeLorme discloses selecting a pan widget from a plurality of widgets and Appeal 2009-004535 Application 10/326,689 8 presenting and removing a pan widget after responding to pan refining input from the user? Appellants contend that DeLorme does not disclose that a pan widget is selected from a plurality of widgets and presented on a display screen for receiving pan refinement input from the user. (App. Br. 17) DeLorme discloses that when the user is in the Map mode the user can access other dialog boxes (i.e., plurality of widgets) by clicking the appropriate tools or through the use of keyboard shortcuts, such as the arrow keys to pan the map in a corresponding direction (i.e., pan refinement activity). (FF 2). We find the pan tool or widget is removed after exiting the “Map” mode as DeLorme discloses that the map mode is accessed by pressing ALT+M, which enables the plurality of dialog boxes (i.e., plurality of widgets). (Id.). Thus, the map mode is disabled otherwise. Moreover, under a broad but reasonable construction of claim 10, we find that removal of the widget pan occurs after receiving pan refinement input. Therefore, we conclude the breadth of the claim language does not preclude removal of the pan widget at the same time the map is removed, as long as pan refinement input has occurred. We find that DeLorme discloses that the pan widget is removed when exiting from the “Map” mode, this occurring after the user pans the map in a particular direction (i.e., pan refinement activity). (FF 2). Therefore, we agree with the Examiner’s findings with respect to claim 10. (Ans. 5, 11). Accordingly, we do not find Appellants’ arguments persuasive of error regarding the Examiner’s anticipation rejection of independent claim 10. Appeal 2009-004535 Application 10/326,689 9 Independent Claim 11 Appellants additionally note that independent claim 11 is similar to claim 10 and therefore contend that claim 11 “is patentable for the same reasons as set forth above for claim 10.” (App. Br. 18, ¶1). Because we did not find Appellants’ arguments persuasive regarding claim 10 (see discussion above), claim 11 falls with claim 10. Independent Claim 12 Issue 4: Under § 102, did the Examiner err in determining that DeLorme discloses applying a default parameter to a widget, presenting an adjustment widget to enable the user to adjust the default parameter, and resetting the default parameter which is used on subsequent presentations of the widget? Appellants contend that the cited portion of DeLorme does not disclose presenting a widget for the first time and applying a default parameter. (App. Br. 18). Appellants further contend that there is no discussion in DeLorme regarding the timing of presenting the widget to the user and presenting various widgets. (See Reply Br. 7). However, we note that DeLorme discloses default (“Normal”) routing settings or parameters that may be altered or “reset” to the “favor” or “avoid” settings using the “Default” widget shown in Fig. 1H which sets the default parameters according to user input, wherein on subsequent presentations of the widget, the global preferences (reset default parameters) are applied. (FF 3). Therefore, we do not find Appellants’ arguments persuasive of error regarding the Examiner’s anticipation rejection of independent claim 12. Appeal 2009-004535 Application 10/326,689 10 Dependent Claim 13 While Appellants assert that the Examiner’s rejection of claim 13 is inconsistent with the rejection of claim 12, we find that DeLorme discloses “arrows or pointers to particular geographic locations which fall within a predetermined distance from a displayed route.” (Col. 11, ll. 8-10). Regarding Figure 1H and col. 53, line 20 relied on above in the rejection of claim 12 (see also Ans. 11), we find each of the “Normal” routes pertaining to different types of roads, routes, and connectors “relates to a distance” within the meaning of claim 13. Moreover, Appellants do not argue a particular definition for the claim term “near-to widget” that would distinguish over the Examiner’s findings regarding DeLorme. See n.2 supra. Therefore, we do not find Appellants’ arguments persuasive of error regarding the Examiner’s anticipation rejection of dependent claim 13. Dependent Claim 15 Issue 5: Under § 102, did the Examiner err in determining that DeLorme discloses a pan widget and pan amount? Appellants contend that the Examiner’s findings are inconsistent. (App. Br. 19). However, Appellants do not argue a particular definition for the claim term “pan widget” and how it “relates to a pan amount” that would distinguish over the Examiner’s findings regarding DeLorme. As discussed above, we decline to speculate regarding how Appellants’ claims define the subject matter Appellants regard to be their invention, as the burden of defining the invention lies with Appellants, not Appeal 2009-004535 Application 10/326,689 11 the PTO. See n.2 supra. Therefore, we do not find Appellants’ argument persuasive of error regarding the Examiner’s anticipation rejection of dependent claim 15. Dependent Claim 16 Issue 6: Under § 102, did the Examiner err in determining that DeLorme discloses monitoring user adjustments of subsequent presentations of the widget to re-present the adjustment widget to enable the user to further adjust the default parameter? Appellants contend that in DeLorme there is no monitoring of user adjustments related to the text default display of the current POI. (App. Br. 20). We find that DeLorme discloses that the optimal routing computations (e.g., quickest time 437, shortest distance 438) are monitored in Fig. 1I where the Global Speed Setting dialog box enables users to adjust the estimated or expected speed of travel in response to user preferences or expectations. (FF 4; see also Figs. 4C and IH). Thus, we find DeLorme discloses that user adjustments are monitored during subsequent input of the user according to the user preferences. Moreover, Appellants do not argue a particular definition for the claim term “adjustment widget” that would distinguish over the Examiner’s findings regarding DeLorme. See n.2 supra. For these reasons, we do not find Appellants’ argument persuasive of error regarding the Examiner’s anticipation rejection of dependent claim 16. Appeal 2009-004535 Application 10/326,689 12 Dependent Claims 18 and 19 Issue 7: Under § 102, did the Examiner err in determining that DeLorme discloses that the adjustment widget is a button widget (claim 18) or an arrow widget (claim 19)? Again, we note that Appellants do not argue particular definitions for the claim terms “adjustment widget,” “button widget,” and “arrow widget” that would distinguish over the Examiner’s findings regarding DeLorme. See n.2. supra. As noted by the Examiner, Delorme discloses various widgets (Ans. 7). (FF 5). Therefore, Appellants’ arguments are not persuasive of error in the Examiner’s finding of anticipation regarding dependent claims 18-19. § 103 Rejection of Claims 9, 14, and 17 At the outset, we do not find persuasive Appellants’ arguments regarding the particular types of widgets recited in dependent claims 9, 14, and 17 because Appellants do not argue particular definitions for the claim terms “slider widget,” “zoom widget,” and “adjustment widget” that would distinguish over the Examiner’s findings regarding DeLorme or Yokota. See n.2. supra. Issue 8: Under §103, did the Examiner err by improperly combining the teachings of Yokota with DeLorme? Appellants contend that the references cannot be properly combined under a KSR analysis. (App. Br. 25). Appeal 2009-004535 Application 10/326,689 13 We disagree. We find the thrust of Appellants’ arguments attacking the proffered combination of DeLorme and Yokota are grounded on an erroneous premise, i.e., the incorrect premise that the Examiner’s rejection is based upon a physical or bodily incorporation of Yokota into the invention of DeLorme. “What appellants overlook is that it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1972) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). The test for obviousness is not whether the features of a reference may be bodily incorporated into the structure of another reference but what the combined teachings of those references would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). This reasoning is applicable here. Therefore, we agree with the Examiner that an artisan would have found it obvious to apply the slider associated with Yokota to Delorme’s PDA navigation system. (Ans. 13). Moreover, we are of the view that Appellants’ purported improvement over the prior art represents no more than the predictable use of prior art elements according to their established functions, and thus would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements Appeal 2009-004535 Application 10/326,689 14 with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”) (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). Therefore, we find the Examiner’s proffered combination of familiar prior art elements according to their established functions would have conveyed a reasonable expectation of success to a person of ordinary skill having common sense at the time of the invention. Lastly, we note that Appellants have not rebutted the Examiner’s legal conclusion of obviousness by showing that the claimed combination of familiar elements produces any new function. Nor have Appellants provided any factual evidence of secondary considerations, such as unexpected or unpredictable results, commercial success, or long felt but unmet need to rebut the Examiner’s obviousness conclusion. Appellants have not shown that the Examiner’s combination is more than the predictable use of prior art elements according to their established functions. Accordingly, we find that the Examiner did not err in combining DeLorme and Yokota to arrive at the claimed invention. Appellants’ arguments notwithstanding, we are not persuaded of error regarding the Examiner’s obviousness rejection of dependent claims 9, 14, and 17. DECISION We affirm the Examiner’s rejection of claims 1-8, 10-13, 15, 16, 18 and 19 under § 102(b). Appeal 2009-004535 Application 10/326,689 15 We affirm the Examiner’s rejection of claims 9, 14, and 17 under § 103(a). 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)(1) (2009). ORDER AFFIRMED pgc AT & T LEGAL DEPARTMENT - NDQ ATTN: PATENT DOCKETING ONE AT & T WAY, ROOM 2A-207 BEDMINSTER, NJ 07921