Ex parte BERRY et al.

Board of Patent Appeals and Interferences

Jun 24, 1998

08133821 (B.P.A.I. Jun. 24, 1998)

Application for patent filed October 7, 1993. 1
According to appellants, this application is a continuation of
Application 07/888,223, filed May 26, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD E. BERRY,
SUSAN F. HENSHAW, and
DAVID J. ROBERTS
__________
Appeal No. 95-4356
Application 08/133,8211
__________
ON BRIEF
__________
Before JERRY SMITH, FLEMING, and TORCZON, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4356
Application 08/133,821
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 16-27, which
constitute all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for enabling a computer user to make input
selections more easily on the display menu of a graphical user
interface. Specifically, the invention is directed to the
manner in which a selected icon interacts with objects which
are assigned to the icon.
Representative claim 16 is reproduced as follows:
16. A method for object oriented menu selection, the
method comprising the steps of:
assigning an icon to each of a plurality of objects, each
of said objects having a type designation;
displaying each of said assigned icons in a window menu
bar;
accepting user selection of one of said icons;
testing said selection to determine an assigned object as
the one of said plurality of objects assigned said icon; and
sending a message to the assigned object.
The examiner relies on the following references:
Berry et al. (Berry) 4,789,962 Dec. 06, 1988
Appeal No. 95-4356
Application 08/133,821
3
Fleming et al. (Fleming) 5,140,677 Aug. 18, 1992
(filed May 11,
1990)
"Interactive Information Retrieval System: Sub-Icon
Selection," IBM Technical Disclosure Bulletin, Vol. 28, No.
12, May 1986, pages 5395-5396 (IBM).
Systems Application Architecture, Common User Access Advanced
Interface Design Guide, Copyright IBM Corporation, June 1989,
pages 103-115 (IBM Guide).
Claim 16 stands rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the invention. Claims 16-27 stand rejected
under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers Fleming in view of IBM and the IBM Guide with
respect to claim 16 and adds Berry with respect to claims 17-
27.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
Appeal No. 95-4356
Application 08/133,821
4
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner's
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record
before us, that claim 16 particularly points out the invention
in a manner which complies with 35 U.S.C. § 112. We are also
of the view that the collective evidence relied upon and the
level of skill in the particular art would have suggested to
one of ordinary skill in the art the obviousness of the
invention as set forth in claim 16. We reach the opposite
conclusion with respect to claims 17-27. Accordingly, we
affirm-in-part.
We consider first the rejection of claim 16 under the
second paragraph of 35 U.S.C. § 112. The examiner’s rejection
states the following:
In claim 16, at lines 8-9, the applicant
has claimed "testing said selection to
Appeal No. 95-4356
Application 08/133,821
5
determine an assigned object as the one of
said plurality of objects assigned said
icon." However, it is unclear to the
examiner what the applicant means by "to
determine an assigned object as the one of
the plurality of objects assigned said
icon." Should the claim be read as
"testing said selection to determine an
assigned object from the one of the
plurality of objects assigned said icon?"
Clarification is required. [answer, page
5].
Appellants argue that "one skilled in the art would understand
the claimed step as requiring a determination of which object
was assigned the icon selected by the user" [brief, pages 8-
9].
The general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
Appeal No. 95-4356
Application 08/133,821
6
We agree with appellants that the artisan having
considered the specification of this application would have no
difficulty ascertaining the scope of the invention recited in
claim 16. The objected to step appears to reasonably recite
that an assigned object is determined based on an icon
selected by the user. Therefore, the rejection of claim 16
under the second paragraph of 35 U.S.C. § 112 is not
sustained.
We now consider the rejection of claims 16-27 under
35 U.S.C. § 103. Appellants have indicated that for purposes
of this appeal the claims will stand or fall together in four
groups, each headed by one of the four independent claims.
Consistent with this indication appellants have made no
separate arguments with respect to any of the claims within
each group. Accordingly, all the claims within each group
will stand or fall together. Note In re King, 801 F.2d 1324,
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702
F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly,
we will only consider the rejections against independent
Appeal No. 95-4356
Application 08/133,821
7
claims 16, 17, 20 and 24 as representative of all the claims
on appeal.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden then shifts to the applicant to overcome
the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as
a whole. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
With respect to independent claim 16, the examiner has
pointed out the teachings of Fleming, has indicated the
perceived differences between Fleming and the claimed
invention, and has provided reasons as to how and why Fleming
would have been modified and/or combined with IBM and the IBM
Guide to arrive at the claimed invention [answer, pages 3-5].
In our view, regardless of the ultimate accuracy of the
Appeal No. 95-4356
Application 08/133,821
8
examiner’s position, the examiner has, therefore, at least
satisfied the burden of presenting a prima facie case of
obviousness. That is, the rejection would be sustained if
appellants chose not to respond to the rejection on the
merits. The burden is, therefore, upon appellants to come
forward with evidence or arguments which persuasively rebut
the examiner's prima facie case of obviousness. Appellants
have presented several arguments in response to the examiner’s
rejection. Therefore, we consider obviousness based upon the
totality of the evidence and the relative persuasiveness of
the arguments.
With respect to independent claim 16, the examiner’s
initial rejection seemed to suggest that the various action
titles of Fleming, such as File, View and Help, could be
replaced by an icon bar such as taught by IBM. Appellants
responded that the substitution of icons for the action titles
in Fleming does not result in the present invention because
the "claimed invention includes icons for a 'plurality of
objects' not as a replacement for textual labels as taught by
[IBM]" [brief, page 12]. The examiner’s response to this
Appeal No. 95-4356
Application 08/133,821
9
argument is to point to the up and down arrow icons and icon
45 of Fleming as teaching the multiple icons representing
different objects [answer, page 6]. Appellants have not
responded to this interpretation of the prior art in meeting
the invention of claim 16.
In our view, the major cause of the dispute between
the examiner and appellants results from a difference in claim
interpretation. The examiner is giving the claims what he
considers to be the broadest reasonable interpretation
consistent with the disclosed invention. The examiner views
each icon of Fleming (sizing icons 29 and icon 45) as being
assigned to an object. The examiner also views each selection
of one of these icons as resulting in a message to open an
object associated with the selected icon [answer, pages 6-7].
Appellants, on the other hand, interpret the claims in light
of the disclosure, and they essentially are reading disclosed
aspects of the invention into the claims. Thus, many of
appellants’ arguments are not commensurate in scope with the
invention as interpreted by the examiner or when the claims
are given their broadest reasonable interpretation.
Appeal No. 95-4356
Application 08/133,821
10
As a general rule, claims are to be given their
broadest reasonable interpretation during prosecution. In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550
(CCPA 1969). It is improper to narrow the scope of the
claim by implicitly reading in disclosed limitations from the
specification which have no express basis in the claims. See
Id. When interpreting a claim, words of the claim are
generally given their ordinary and accustomed meaning, unless
it appears from the specification or the file history that
they were used differently by the inventor. Carroll Touch,
Inc. v. Electro Mechanical Sys., Inc., 15 F.3d 1573, 1577, 27
USPQ2d 1836, 1840 (Fed. Cir. 1993). Where an inventor chooses
to be his own lexicographer and to give terms uncommon
meanings, he must set out his uncommon definition in some
manner within the patent disclosure so as to give one of
ordinary skill in the art notice of the change. Intellicall,
Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388, 21 USPQ2d
1383, 1386 (Fed. Cir. 1992). We have carefully reviewed the
disclosure in this application, and we can find no specific
Appeal No. 95-4356
Application 08/133,821
11
definition of the terms used in claim 16 which would justify
giving the claimed terms an interpretation different from the
normal interpretation. In light of the above
discussion, we agree with the examiner that Fleming broadly
teaches that selection of an icon on the menu bar results in a
message being sent to the object assigned to that icon. We do
not agree with the examiner, however, that the sizing icons of
Fleming can be considered to be icons which are assigned to
an object. In our view, the only icons which meet the step of
assigning an icon to each of a plurality of objects are the
icons such as icons 45 and 51 in Fleming. We are also of the
view that the icon bar in IBM would not have suggested the
step of displaying icons assigned to an object in a window
menu bar as recited in claim 16. Nevertheless, our
interpretation of claim 16 does not require that there be a
plurality of icons within a single menu bar.
Fleming teaches at least two objects such as "Folder-
Project X" and "Chart-Chart 1" each of which has an icon
assigned
Appeal No. 95-4356
Application 08/133,821
12
to it (icons 45 and 51, respectively). Although icons 45 and
51 are not displayed on the same menu bar in Fleming, claim 16
does not require this limitation. The icons 45 and 51 in
Fleming are selected, tested and a message is broadly sent to
the assigned object as recited in claim 16. In our view,
claim 16 is broad enough to be suggested by the teachings of
Fleming taken alone so that IBM and the IBM Guide are
considered unnecessary to meet the invention as recited in
claim 16.
Appellants argue that Fleming et al. "do not teach an
ability to have multiple icons representing different objects
nor do they teach replacing the action list pull-down menus
with object invocation via a message" [brief, page 11]. As
noted above, however, Fleming does teach a plurality of
objects each of which has an assigned icon as recited in claim
16. We also agree with the examiner that claim 16 is not
limited to the replacement of action list pull-down menus with
object invocation via a message.
For all the reasons discussed above, we consider the
invention of claim 16 to be sufficiently broad that it would
Appeal No. 95-4356
Application 08/133,821
13
have been suggested by the graphical user interface of
Fleming. Therefore, we sustain the rejection of claim 16 as
unpatentable over the teachings of Fleming, IBM and the IBM
Guide.
We now consider the rejection of independent claims
17, 20 and 24 as unpatentable over the teachings of Fleming,
IBM, the IBM Guide and Berry. Appellants argue that each of
claims 17, 20 and 24 recites the display of an action submenu
in response to selection by the user of a designated object.
The examiner has cited Berry to teach the display of an action
submenu. Appellants argue that the help screen display of
Berry is not an action submenu as claimed.
On this latter point, we agree with appellants. The
help screens of Berry are merely informational and do not
offer the user action choices. Claim 17 recites that the
action submenu has a list of selectable actions. The help
screens of Berry clearly do not have selectable actions.
Claims 20 and 24 simply recite the display of action submenus
in response to selection of a designated object. An action
submenu can broadly be defined as a menu which offers the user
Appeal No. 95-4356
Application 08/133,821
14
a selectable action. Even using this broad definition, the
Berry help screens cannot be viewed as action submenus.
Since we agree with appellants that the help screens
of Berry cannot suggest the action submenus as recited in
independent claims 17, 20 and 24, and since the examiner has
not given a satisfactory response to this argument, we do not
sustain the rejection of claims 17-27 as formulated by the
examiner.
In summary, we have not sustained the rejection of
claim 16 under the second paragraph of 35 U.S.C. § 112, but we
have sustained the rejection of claim 16 under 35 U.S.C. §
103. We have not sustained the rejection of claims 17-27
under 35 U.S.C.
§ 103. Accordingly, the decision of the examiner rejecting
claims 16-27 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 95-4356
Application 08/133,821
15
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Mark S. Walker
IBM Corporation
Intellectual Property Law
11400 Burnet Road, 932, Zip 4054
Austin, TX 78758