Ex Parte Boyer et al

Patent Trial and Appeal Board

Jul 22, 2016

11693364 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111693,364 0312912007 John M. Boyer
45544 7590 07/26/2016
HOFFMAN WARNICK LLC
540 Broadway
4THFLOOR
ALBANY, NY 12207
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CA920070024US 1 9148
EXAMINER
PARKER, JEANETTE J
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
07/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. BOYER, CHRISTOPHER D. LAMB,
DAVID F. MANNING, and MICHAEL C. MANSELL
Appeal2014-009137
Application 11/693,364
Technology Center 2100
Before LARRY J. HUME, NATHAN A. ENGELS, and
NORMAN H. BEAMER, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4--14, and 16-22. Claims 3 and 15 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-009137
Application 11/693,364
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of managing a user interface, the method
compnsmg:
obtaining a document for a rendition, wherein the
document includes a plurality of user interface items;
positioning a first user interface item at a first location on
the document;
setting a display property value of the first user interface
item to one of: on or off, wherein when the display property is
set to off, a height and a width of the first user interface item is
changed to zero, in response to the display property value of the
first user interface item being set to off, such that a top edge and
a bottom edge of the first user interface item overlay each other
and a right edge and a left edge of the first user interface overlay
each other; and
relatively positioning from the first user interface item a
second user interface item at a second location, wherein the
relative positioning is independent of the display property value,
and wherein a set of location identifiers for the second user
interface item are adjusted based on the height and width of the
first user interface item being changed to zero.
THE REJECTIONS 1
Claims 1, 2, 4--14, and 16-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable in view of Pavek et al. (US 8,091,036 Bl, issued
1 Claim 19 recites a "computer program comprising program code stored on
a computer-readable medium" without restriction on the type of memory.
See App. Br. 14--15 (Claims App'x); see also, e.g., Spec. i-f 12 (describing a
"propagated signal for managing a user interface"). Should there be further
prosecution of Appellants' Application (including any review for
allowance), the Examiner may wish to review claim 19 for compliance with
35 U.S.C. § 101 in light of the Board's precedential decision that the
broadest reasonable interpretation of such claim language includes transitory
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Appeal2014-009137
Application 11/693,364
Jan. 3, 2012, filed Apr. 27, 2006), Yankovich et al. (US 7,000,179 B2,
issued Feb. 14, 2006), and Joshi et al. (US 2004/0177147 Al, published
Sept. 9, 2004). Claims 21and22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of Pavek, Yankovich, Joshi, and Lehenbauer et
al. (US 2006/0048052 Al, published Mar. 2, 2006).
ANALYSIS
Having considered the Examiner's rejections in light of Appellants'
arguments and the evidence of record, we are unpersuaded that the Examiner
erred in the rejections of claims 1, 2, 4--14, and 16-22. We agree with and
adopt as our own the Examiner's findings, conclusions, and reasoning as set
forth in the Final Office Action and the Examiner's Answer.
Appellants argue for the patentability of independent claims 1, 13, 19,
and 20 collectively and further assert the arguments presented apply to all of
the pending claims---claims 1, 2, 4--14, and 16-22. See App. Br. 9. We
address claim 1 as illustrative and provide the following analysis for
emphasis.
Appellants argue Yankovich teaches a rules engine that allows
customized display of fields in a document, where fields can be set to visible
or not visible. App. Br. 6 (citing Yankovich col. 7, 11. 16-20, 24--50, col. 15,
11. 16-20). According to Appellants, Yankovich does not teach changing a
field's height and width values to zero when the field is set to not visible.
App. Br. 6. Further, Appellants argue that while Joshi teaches an "image
signals per se and is therefore non-statutory. See Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) (precedential).
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Appeal2014-009137
Application 11/693,364
element" that has height and width values set to zero, Joshi's image element
is not equivalent to a user interface item as claimed because Joshi's image
element merely acts to keep a browser connection open and is not intended
to be displayed. App. Br. 7 (citing Joshi i-fi-1 50, 58). Further, Appellants
argue the height and width of Joshi's image element are not changed to zero,
the height and width are set to zero from the start because the element is
never intended to be displayed. App. Br. 7 (citing Joshi i-fi-150, 58). In
addition, Appellants argue Yankovich "has little or nothing to do with any
relative positioning" and the cited combination therefore fails to teach or
suggest the claimed set of location identifiers for the second user interface
item being adjusted based on the height and width of the first user interface
item being changed to zero. App. Br. 8.
The Examiner finds Pavek teaches a system and method of managing
a user interface and concludes that claim 1 would have been obvious to a
person of ordinary skill based on Pavek's teachings combined with known
functionalities evidenced in Yankovich and Joshi. Final Act. 3--4, 9-13;
Ans. 2-5. Specifically, the Examiner finds Yankovich teaches setting a
display property value of a first user interface to one of "on or off' with its
disclosures of toggling a flag setting to make a display field either visible or
not visible. Ans. 2-3 (citing Yankovich col. 7, 11. 16-20). Further, the
Examiner cites Joshi as evidence of an element having a height and width set
to zero when the element is not to be displayed. Ans. 3--4. Combining such
evidence with Pavek's teachings regarding the display of a first and second
user interface items (Final Act. 3 (citing Pavek col. 6, 11. 10-14, col. 8, 11.
15-17)), the Examiner concludes claim 1 would have been an obvious
combination of known elements that would have provided improved
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Appeal2014-009137
Application 11/693,364
flexibility to the systems and methods taught by Pavek (Final Act. 3--4, 9-
13; Ans. 2---6).
We are unpersuaded by Appellants' arguments that Joshi' s image
element is not equivalent to Appellants' claimed first user interface item and
"there would have been no motivation to combine Yankovich and Joshi, nor
would the combination result in a predictable outcome." Reply Br. 2;
accord App. Br. 6-7. The Examiner cites Joshi as evidence that it was
known to set height and width to zero when user interface items (such as
those taught by Pavek and Yankovich) are not to be displayed; the
Examiner's combination does not require bodily incorporation of Joshi's
image elements. Final Act. 10 ("Joshi discloses the limitation a height and a
width of the first user interface item is changed to zero [as disclosed in Joshi
Fig. 4 and paragraph 58]"); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981) ("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference."). Appellants offer no evidence to establish that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Further, we are unpersuaded
by Appellants' arguments that Yankovich "has little or nothing to do with
any relative positioning" (App. Br. 8), as the Examiner cites Pavek for its
teachings of the claimed relative positioning step and Appellants do not
rebut the Examiner's findings regarding Pavek. See Final Act. 3 (citing
Pavek col. 6, 11. 10-14, col. 8, 11. 15-17 ("a sequential group is a group of
components in which each component is aligned sequentially relative to the
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Application 11/693,364
other components")); Ans. 5---6. Accordingly, for the reasons set forth above
and in the Final Rejection and the Examiner's Answer, we sustain the
rejections of claims 1, 2, 4--14, and 16-22.
DECISION
We affirm the Examiner's rejections of claims 1, 2, 4--14, and 16-22.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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