Ex Parte Best et al

Board of Patent Appeals and Interferences

Jan 17, 2012

09747063 (B.P.A.I. Jan. 17, 2012)

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.
09/747,063 12/22/2000 Timothy A. Best STL919990186US2/A8063 1655
46159 7590 01/17/2012
SUGHRUE MION PLLC
USPTO CUSTOMER NO WITH IBM/SVL
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
PILLAI, NAMITHA
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
01/17/2012 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 TIMOTHY A. BEST, MICHAEL J. DOCKTER,
STEPHAN GRELL, and RONALD W. LYNN
____________

Appeal 2009-013220
Application 09/747,063
Technology Center 2100
____________

Before DENISE M. POTHIER, MICHAEL R. ZECHER, and
BRUCE R. WINSOR, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-013220
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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-42, 46-48, 51, 52, and 54-60. Claims 43-45, 49, 50,
and 53 have been canceled. App. Br. 4.1 We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to a technique for delivering multiple
applets within a fixed-size viewing space. See Spec. 1:10-11. Claim 1 is
reproduced below with the key disputed limitation emphasized:
1. A method of executing applets, comprising:
receiving a user selection of a plurality of applets;
generating separate windows within a main applet for each
selected applet;
displaying the main applet; and
the main applet executing each selected applet in a separate
window, wherein each selected applet is displayed in the separate
window inside the displayed main applet.
The Examiner relies on the following as evidence of unpatentability:
Southgate US 5,561,757 Oct. 1, 1996
Banthia WO 98/43170 Oct. 1, 1998
Sun Microsystems, Inc., The Swing Tool Set, 3 SWING CONNECTION 1-132
(1998), available at http://www.cs.bris.ac.uk/~worrall/tool_set.html (“Sun”).

THE REJECTIONS
1. The Examiner rejected claim 52 under 35 U.S.C. § 112, ¶ 1, as
failing to comply with the written description requirement. Ans. 3.3

1 Throughout this opinion, we refer to (1) the Appeal Brief filed December
13, 2007; (2) the Examiner’s Answer mailed March 4, 2008; and (3) the
Reply Brief filed May 5, 2008.
2 Thirteen printed pages of this reference were provided, and these page
numbers correspond sequentially to the pages provided.
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2. The Examiner rejected claims 1-4, 9-12, 14-18, 23-26, 28-32,
37-40, 42, 46-48, 51, 52, 54-58, and 60 under 35 U.S.C. § 103(a) as
unpatentable over Banthia. Ans. 3-10.
3. The Examiner rejected claims 5-8, 19-22, 33-36, and 59 under 35
U.S.C. § 103(a) as unpatentable over Banthia and Southgate. Ans. 10-11.
4. The Examiner rejected claims 13, 27, and 41 under 35 U.S.C.
§ 103(a) as unpatentable over Banthia and Sun. Ans. 11.

THE LACK OF WRITTEN DESCRIPTION REJECTION
Regarding claim 52, the Examiner finds that the Specification does
not describe the recitation, “at least two of said plurality of applets do not
inherit functions from [the] same base class” in such a way as to reasonably
convey to an ordinary skilled artisan that Appellants were in possession of
this recited subject matter. Ans. 3, 11-12. Appellants argue that the
Specification supports such a limitation. App. Br. 13-15; Reply Br. 4-6.
Appellants assert that the disclosure discusses various independent applets
(e.g., “sevenAMNewsTicker.class” and “MyApplet.class”) and that one
skilled in the art would have understood that these applets do not inherit
functions of the same base class. App. Br. 13-14. Appellants also contend
the disclosure of applets having different functions leads an ordinary artisan
to understand that such applets are “less likely . . . to inherit functions from
the same base class.” App. Br. 14.

3 The 35 U.S.C. § 112, ¶ 1, rejection of claims 57-60 has been withdrawn.
Ans. 2.
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ISSUE
Under § 112, first paragraph, has the Examiner erred in rejecting
claim 52 by finding Appellants’ disclosure does not reasonably convey to an
ordinary skilled artisan that Appellants were in possession of “at least two of
said plurality of applets do not inherit functions from [the] same base class”?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 52. First, Appellants do not use the words, “inherit,”
“base class,” or a derivative of these phrases, in their disclosure as originally
submitted. See generally Specification. Second, contrary to Appellants’
assertion (App. Br. 13), Appellants only state that multiple applets are used
within a browser space and do not describe the applets’ functions as
independent of each other. See Spec. 7:10-15. Also, Appellants do not
describe a loan calculator or word processor applet in the disclosure. See
App. Br. 14.
Moreover, we do not find that applets having different names (e.g.,
“Did You Know?,” “Corporate News,” “Business Intelligence” (Spec.
11:17-22; Fig. 4)) reasonably convey to an ordinary skilled artisan that
Appellants are in possession of subject matter of the applets not inheriting
functions from the same base class. For example, Appellants describe code
for two applets embedded in a web page (e.g., code for
“sevenAMNewsTicker.class” and code for “MyApplet.class”). Spec. 7:22-
8:26. Arguably, one skilled in the art would have understood applets having
different names coupled with the extension, “class,” as different from each
other and even being from a different class. See id. Nonetheless, the
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extension, “class,” is not labeled as or indicative of a base class.
“SevenAMNewsTicker.class” and “MyApplet.class” may describe
subclasses that both branch from a given base class, and thus, both these
applets may inherent functions from the same base class.
Nor have Appellants provided adequate evidence that such “class” in
the code is a “base class” as recited. See App. Br. 13-15. For the first time
in the Reply Brief, Appellants argue that “when two applets carry out
different types of functionalities, they would belong to different JAVA base
classes.” Reply Br. 4. Such an argument is untimely and waived. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”). Also, other than pointing out that the applets have different
names, this assertion is unsupported by factual evidence and is entitled to
little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
We therefore find that the disclosure does not reasonably convey to
one skilled in the art that they had possession of the limitation, “at least two
of said plurality of applets do not inherit functions from [the] same base
class,” as of the time of filing. For the foregoing reasons, Appellants have
not persuaded us of error in rejecting independent claim 52.

THE OBVIOUSNESS REJECTION OVER BANTHIA
Contentions
Regarding representative claim 1, the Examiner finds that, while
Banthia teaches that the controlling applet has a height and width of zero or
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is hidden, Banthia further suggests that the height and width of the applet
can be altered, such that the displayed applets are displayed in separate
windows inside the controlling applet. Ans. 4, 12-13. Appellants argue that
Banthia fails to teach or suggest displaying each selected applet in a separate
window inside the displayed main applet as recited because the controlling
applet is hidden and the displayed applets are displayed within a browser
window. App. Br. 19, 21-22; Reply Br. 6-8. Appellants further assert that
the Examiner has not provided a reason for displaying separate applets
inside the controlling or main applet. App. Br. 20.
As for claim 11, Appellants assert that Banthia does not teach or
suggest the controlling applet being a webtop applet. App. Br. 24; Reply Br.
10.
As for claim 12, Appellants contend Banthia does not teach or suggest
having an available applets list being displayed within the main applet. App.
Br. 24; Reply Br. 10.
As for claim 52, Appellants argue that Banthia teaches that the
displayed applets (a) inherit from the same base class, which is contrary to
the recite claim language, and (b) are interdependent. App. Br. 24-25; Reply
Br. 11.
Regarding claim 54, Appellants assert that tearing off applets does not
teach receiving a user selection of applets at substantially the same time.
App. Br. 25; Reply Br. 11-13.
Regarding claim 57, the Examiner finds that Figure 5 teaches
“selecting a plurality of applets from a displayed list of the plurality of
available applets.” Ans. 8. The Examiner further explains that because the
information in the applets is updated, the displayed applets have not been
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uploaded until the information is added and redisplayed. Ans. 9, 13.
Appellants contend that Banthia teaches that the displayed applets are loaded
rather than are applets not yet loaded for execution as recited. App. Br. 23-
24; Reply Br. 8-9.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Banthia would have taught or suggested “each selected applet is
displayed in the separate window inside the displayed main applet”?
(2) Under § 103, has the Examiner erred in rejecting claim 11 by
finding that Banthia would have taught or suggested the main applet is a
webtop applet?
(3) Under § 103, has the Examiner erred in rejecting claim 12 by
finding that Banthia would have taught or suggested executing the main
applet to display within the main applet an available applets list from which
the user can select applets?
(4) Under § 103, has the Examiner erred in rejecting claim 52 by
finding that Banthia would have taught or suggested the applets are
independent and at least two applets do not inherit functions from the same
base class?
(5) Under § 103, has the Examiner erred in rejecting claim 54 by
finding that Banthia would have taught or suggested receiving a user
selection of the applets at substantially the same time?
(6) Under § 103, has the Examiner erred in rejecting claim 57 by
finding that Banthia would have taught or suggested selecting from a
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displayed list of available applets displayed in the main applet, wherein the
applets displayed in the list are not yet loaded for execution?

FINDINGS OF FACT (FF)
Banthia
1. Banthia states, “[t]ypically, the controlling applet is a hidden
applet. This means that its height and width parameters are zero.” 5:33-35.
2. Banthia’s Figure 5 displays six smaller display applets inside a
larger browser window. 4:36-38; 5:36–6:2; 8:19-21; Fig. 5.
3. Banthia’s controlling applet interfaces and communicates with the
display applets. The controlling applet maintains a connection to the server
and continues to update each “torn off” applet with new data. 5:29-31; 8:34-
37.
4. Banthia teaches a user can move a display applet to another
window, such as clicking on the “Window” icon corresponding to Packet
Size Distribution. The “torn off” applet window will move to another screen
location of the user’s display screen (e.g., upper top left corner). 8:25-33.

ANALYSIS
Claims 1-4, 9, 10, 14-18, 23-36, 28-32, 37-40, 42, 46-48, 51, 55, and 56
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 1 which calls for, “each selected applet is
displayed in the separate window inside the displayed main applet.” As the
Examiner explains (Ans. 4, 12), Banthia states, “[t]ypically, the controlling
applet is a hidden applet.” FF 1. However, as the phrase, “typically,”
suggests, Banthia suggests scenarios where the controlling applet can be
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visible or in atypical situations. We therefore agree with the Examiner (Ans.
4, 12) that Banthia suggests the controlling applet can be visible or
displaying a main applet as recited by adjusting the height and width
parameters to something greater than zero. See FF 1.
Additionally, contrary to Appellants’ assertions (App. Br. 20-21;
Reply Br. 8), this teaching of making the controlling applet visible in
atypical situations does not teach away from displaying the controlling
applet. That is, while Banthia’s controlling applet is typically hidden, this
teaching does not discourage an ordinary skilled artisan from making the
applet visible to the user or that there is no need to display the controlling
applet. Rather, Banthia teaches or suggests an alternative to hiding the
applet. Also, the “tearing off” feature in Banthia does not teach away (App.
Br. 20; Reply Br. 7) from displaying the separate applets within a main
applet. In fact, this “tearing off” feature suggests a technique for placing
applets at various locations, including inside other windows or applets. See
FF 4. An ordinary skilled artisan would have recognized that tearing off
applets from the window permits the user the flexibility of moving applets to
other locations on the screen, including inside a visible controlling applet.
See id. As such, Banthia’s “tearing off” feature suggests arranging selected
applets within a visible controlling applet, such that each applet performs the
same function, and yields no more than one would expect from such a
combination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellants also assert that the Examiner has provided no reason to
modify Banthia to display the controlling applet. App. Br. 20. Notably,
Banthia at least suggests that the controlling applet can be visible (see FF 1),
and thus, the Examiner is not suggesting modifying Banthia but rather
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elected one of Banthia’s alternative embodiments (e.g., atypical situation
where the controlling applet is visible). Also, the Examiner explains (Ans.
13) that Figure 5 suggests to an ordinary skilled artisan displaying smaller,
separate applets inside a larger portion of a window. FF 2. Moreover, the
Examiner states (Ans. 13) an artisan would have recognized displaying the
separate applets inside a controlling applet, in light of the controlling
applet’s working relationship with the other applets, such as interfacing and
communicating with other applets to update applets with new data (FF 3).
Lastly, as stated above, Banthia teaches a “tearing off” feature to move
applets to various locations within the screen (see FF 4) and thus provides
the user with flexibility in displaying selected applets inside the displayed
main applet.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-4, 9, 10, 14-18, 23-26,
28-32, 37-40, 42, 46-48, 51, 55, and 56 not separately argued with
particularity (App. Br. 17-23).

Claim 11
Based on the record before us, we find no error in the Examiner’s
rejection of claim 11, which depends from claim 1. Notably, Appellants
have not defined “a webtop applet” (see generally Specification) but have
stated that “a windowing desktop within a browser[ is] a ‘WebTop’” (Spec.
9:16-17). As such, an applet which acts like a larger window or a desktop
within a browser can reasonably be the recited webtop applet. As explained
above when addressing claim 1, Banthia teaches and suggests the controlling
or main applet can be visible such that other applets are inside of the main
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applet or acts like a desktop within the browser. See also FF 1-4. Also, as
the Examiner states (Ans. 5, 14), Banthia teaches applets, such as the
controlling applet, are implemented or loaded into a Java interpreter (e.g., a
Java application). See Banthia 2:30-36. For the foregoing reasons,
Appellants have not persuaded us of error in the rejection of claim 11.

Claim 12
Based on Appellants’ contentions, we find no error in the Examiner’s
rejection of claim 12, which depends from claim 1. We first refer to our
previous discussion of claim 1 and how Banthia teaches and suggest a main
applet displaying other applets within the main applet. Also, as the
Examiner notes (Ans. 5, 13), Banthia’s Figure 5 shows or displays various
applets. See FF 2. Thus, Figure 5 is an index or roster (e.g., a list) of
available applets. See id. While this list may differ from Appellants, this
display is still a “list” given its broadest reasonable construction.
Additionally, as discussed above, Banthia discloses how a user can move
(e.g., select) an applet to another location on the screen. FF 4. Thus, each
applet can be selected from this “list” as recited. For the foregoing reasons,
Appellants have not persuaded us of error.

Claim 52
Claim 52 depends from claim 46. Based on the record before us, we
are not persuaded by Appellants’ arguments. As stated above when
discussing claim 52 under § 112, first paragraph, the phrase, “base class” is
not in or defined by the Specification. Appellants also have not
demonstrated that a “base class” has a special meaning in the art. See App.
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Br. 13-15, 24-25. Thus, the Examiner’s construction that a base class
includes “any parent class from which a derived class inherits from” (Ans.
14) is broad, but reasonable.
Banthia’s Figure 3 shows a hierarchy or inheritance for various
applets. Banthia 4:31-32; Fig. 3. As the Examiner explains (Ans. 7, 14), the
“Packet Distribution Display” applet (as shown in Fig. 3) inherits the
properties from the “Pie Chart” applet, or the Pie Chart is the base class from
which the Packet Distribution Display applet inherits functions. See id. The
Examiner also states the “Packet Rates Display” applet (also shown in Fig.
3) inherits the properties from the “Bar Chart” applet, or the Bar Chart is the
base class from which the Packet Rate Display applet inherits functions. See
id. We therefore agree with the Examiner that Banthia teaches a plurality of
applets4 (e.g., the Packet Distribution Display and Packet Rates Display
applets) that are independent in as much as each applet does not inherit the
features or functions of its parent or base class (e.g., Pie Chart and Bar
Chart). For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claim 52.

Claim 54
Based on the record before us, we find no error in the Examiner’s
rejection of claim 54, which recites the receiving comprising receiving at
substantially the same time the user selection of the applets. As discussed
above in connection with claim 12, Banthia teaches and suggests displaying

4 Notably, claim 46, from which claim 52 depends, does not recite a
“plurality of applets.” Rather, claim 46 recites “a list of applets,” “at least
two applets,” and “selected applets.”
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applets and the user selecting from the applets as a “torn off” window that
can be moved from one location to another on the display screen. See FF 2,
4. Also, Appellants do not define “at substantially the same time” (see
generally Specification) and, giving this phrase its broadest reasonable
construction, “substantially the same time” can reasonably include being
near in time (e.g., within several seconds of each other).
Banthia teaches tearing off multiple applets (Banthia 8:33-34) or
selecting more than one applet. See Ans. 14. An ordinary skilled artisan
would recognize from this teaching that multiple selections of different
applets can occur subsequent to each other or adjacent in time. Thus,
Banthia teaches and suggests selecting one applet to tear off and then
immediately selecting another applet to tear off or “receiving at substantially
the same time the user selection of the plurality of applets” as recited. For
the foregoing reasons, Appellants have not persuaded us of error in the
rejection of claim 54.

Claims 57, 58, and 60
Unlike claim 12, claim 57 recites the applets displayed in the list are
not yet loaded for execution. We are therefore persuaded by Appellants’
arguments. While Figure 5 shows applets displayed and are arguably a
displayed list of applets, these applets have been loaded for execution. See
FF 2. The Examiner argues that the information in the applets is updated
and thus recreates an applet that is not yet loaded. Ans. 9, 13. However,
updating an applet with new information by redisplaying, as Banthia teaches
(see Banthia 7:7-10), differs from loading an applet for execution. Also,
Banthia’s Figure 5 does show various icons and displays various applets.
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See FF 2. Nonetheless, whether these icons provide
drop-down menus to select applets for display or how the applets displayed
were uploaded in Figure 5 is not described in sufficient detail by Banthia.5
For the foregoing reasons, Appellants have persuaded us of error in the
rejection of independent claim 57 and dependent claims 58 and 60 for
similar reasons.

THE OBVIOUSNESS REJECTION OVER BANTHIA AND SOUTHGATE
Appellants refer to the discussion of independent claims 1, 15, 29, and
57 and additionally argue that Southgate does not cure the purported
deficiencies. App. Br. 26. We disagree for the reasons previously discussed
related to claim 1 and Banthia, and need not address whether Southgate
cures any alleged deficiency. For the reasons previously set forth,
Appellants have not persuaded us of error in the rejection of claims 5-8, 19-
22, and 33-36.
However, claim 59 depends from claim 57. We stated above that
Banthia does not teach or suggest the step of selecting applets from a
displayed list of available applets, wherein the applets displayed in the list
are not yet loaded for execution. Additionally, the Examiner has not relied
upon Southgate to cure this deficiency. See Ans. 10-11. Because we reverse
the Examiner’s rejection of independent claim 57, we likewise will not
sustain the rejection of claim 59.

5 Also, whether providing a menu or list to the user from the shown icons for
selecting applets to be uploaded would have been obvious to an ordinary
skilled artisan is not before us.
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THE OBVIOUSNESS REJECTION OVER BANTHIA AND SUN
Regarding representative claim 13, Appellants refer to the discussion
of independent claims 1, 15, and 29 and additionally argues that Sun does
not cure the purported deficiencies. App. Br. 26-27. We disagree for the
reasons previously discussed related to claim 1 and Banthia, and need not
address whether Sun cures any purported deficiency. Additionally,
Appellants argue that the Examiner provides no motivation or relies on
impermissible hindsight in formulating the obviousness rejection. App. Br.
27-29. Appellants further assert that JInternalFrame is not intended for
visibility, lacks operations for holding an applet, and thus does not suggest
being implementing for applets. App. Br. 28. The issue before us then is:
has the Examiner erred in rejecting claim 13 by finding that Banthia and Sun
collectively would have taught or suggested generating a JInternal frame
window for each selected applet under § 103?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 13. We adopt the Examiner’s findings related to Sun and
the JInternal frame and combining this teaching with Banthia’s desktop
environment. See Ans. 11, 15. Particularly, the Examiner states Banthia
teaches a desktop environment and Sun teaches using JInternal Frame
components or objects inside a desktop (e.g., JDesktopPane). See id.
Moreover, combining Sun’s teaching of using a JInternalFrame with
Banthia’s desktop environment simply suggests arranging objects within
Banthia’s desktop (e.g., the selected applets), as a JInternalFrame, with each
applet performing the same function, and yielding no more than one would
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expect from such a combination. See KSR, 550 U.S. at 417. Thus, the
Examiner provides an adequate explanation that the combination is obvious
under § 103. See id. Additionally, Sun teaches using a JInternal Frame
object to emulate a native frame window, such as Banthia’s applet windows
(see FF 4). See Sun 10. Thus, Sun provides yet another reason with some
rational underpinning to support a legal conclusion for obviousness. See
KSR, 550 U.S. at 418.
Lastly, Appellants assert that JInternalFrame is not intended for
visibility, lacks operations for holding an applet, and thus does not suggest
being implementing for applets. App. Br. 28. To support this assertion,
Appellants refer to their own disclosure. See id. Yet, pages 2-4 and 9 do not
state that the JInternalFrame lacks operations for holding an applet and thus
cannot be implemented for applets. Also, while page 9 of the disclosure
states JInternalFrame was not intended to have multiple applets visible
(Spec. 9:12-13), this does not demonstrate that JInternalFrame cannot be
generated for an applet or implemented to make the applets visible.
Additionally, mere assertions that are unsupported by factual evidence are
entitled to little probative value. See Geisler, 116 F.3d at 1470. For the
foregoing reasons, Appellants have not persuaded us of error in the rejection
of claim 13 and claims 27 and 41 not separately argued (App. Br. 26-29).

CONCLUSION
Under § 112, first paragraph, the Examiner did not err in rejecting
claim 52.
Under § 103, the Examiner did not err in rejecting claims 1-42, 46-48,
51, 52, and 54-56 but erred in rejecting claims 57-60.
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DECISION
The Examiner’s decision rejecting claims 1-42, 46-48, 51, 52, and
54-60 is affirmed-in-part.
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-IN-PART

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