Ex Parte Chatterjee et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10680930 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIRAJ CHATTERJEE, SUSANTA SARKAR,
and NARESH C. GUPTA
_____________

Appeal 2009-005213
Application 10/680,930
Technology Center 2600
____________

Before JOHN C. MARTIN, THOMAS S. HAHN,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

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.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-49. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellants’ Figure 2 is reproduced below:

Appellants’ Figure 2 and claimed invention are directed to separate
document renderings based on the different display characteristics of the
display devices and also on the type of device. Thus, a view 210 on the
Personal Digital Assistant (PDA) 200 can have different content than a view
230 on the display device 220, even when the same electronic document is
being presented. The application can render two different pages of the
document to generate the two different views 210, 230, or the application
can render the same page in a different manner to generate the two different
views 210, 230. This targeting of content to the different display devices
can be done both to address the display characteristics of the devices (i.e.,
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various graphics from the document that are shown in the view 230 need not
be shown in the view 210 on the PDA 200), and to facilitate the presentation
(e.g., private notes relating to the current slide can be shown in the view 210
on the PDA 200, without also appearing in the view 230 on the display
device 220). (See Fig. 2; Spec. [0026]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method comprising:
identifying, by a software application in a computing system, display
characteristics of multiple display devices; and
generating, by the software application in the computing system,
simultaneous independent views of an electronic document on the display
devices by separately rendering the electronic document to each of the
display devices based on the identified display characteristics of the device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Singhal US 5,488,385 Jan. 30, 1996
Meyn US 5,859,623 Jan. 12, 1999
Tafoya US 5,917,480 Jun. 29, 1999
Okuley US 6,956,542 B2 Oct. 18, 2005
Terayama US 7,010,551 B2 Mar. 7, 2006
Shih US 7,102,591 B2 Sep. 5, 2006
The following rejections are before us for review:
1. The Examiner rejected claims 1, 18, 35-39, 48, and 49 under 35
U.S.C. § 102(b) as being anticipated by Singhal.
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2. The Examiner rejected claims 2-8, 11, 19-25, 28, 41, and 42 under
35 U.S.C. § 103(a) as unpatentable over Singhal in view of Terayama.
3. The Examiner rejected claims 46 and 47 under 35 U.S.C. § 103(a)
as unpatentable over Singhal in view of Okuley.
4. The Examiner rejected claims 9, 10, 12-15, 26, 27, 29, 31, 32, and
40 under 35 U.S.C. § 103(a) as unpatentable over Singhal in view of Shih.
5. The Examiner rejected claim 43 under 35 U.S.C. § 103(a) as
unpatentable over Singhal in view of Terayama and Tafoya.
6. The Examiner rejected claims 44 and 45 under 35 U.S.C. § 103(a)
as unpatentable over Singhal in view of Terayama, Tafoya, and Meyn.
7. The Examiner rejected claims 13, 16, 17, 30, 33, and 34 under 35
U.S.C. § 103(a) as unpatentable over Singhal in view of Shih and Meyn.

ISSUES
A pivotal issue is whether Singhal teaches “identifying, by a software
application in a computing system, display characteristics of multiple
display devices,” as recited in claim 1.
Regarding independent claim 48, the issue is whether Singhal fails to
disclose images that represent “independent views of “an electronic
document” (emphasis added) (see App. Br. 13).

PRINCIPLES OF LAW
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may
anticipate if that element is “inherent” in its disclosure. To
establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
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recognized by persons of ordinary skill.” “Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).

ANALYSIS
Anticipation Rejection
Appellants argue (App. Br. 12-13) that nothing in Singhal teaches a
software application for identifying display characteristics of multiple
display devices. We agree with Appellants.
At the outset, we note that the Examiner equates the term “identify”
with the term “recognize” (Ans. 14; reciting “identify/recognize”) and
Appellants (Reply Br. 3) do not contest such a qualification. Turning to the
Examiner’s (Ans. 14) cited Singhal portions (col. 5, ll. 47-53, 55-61), we
find nothing to support the assertion that the computing system, either
expressly or inherently, via the use of software identifies/recognizes the two
different types of displays LCD 52 and CRT 54 based on their
characteristics. In other words, there is no recognition of the different
display characteristics via software.
Furthermore, we note that the user could have inputted the different
characteristics for the two types of displays in the system or the different
types of displays characteristics could have been pre-stored.
Thus, the mere recitation of the different characteristics of the two
displays (col. 5, ll. 47-53) does not necessarily entail using software to
recognize the different characteristics of the two displays. See Robertson,
169 F.3d at 745.
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Accordingly, we will reverse the Examiner’s rejection of claim 1 and
for similar reasons the rejection of claims 18, and 35-39.
With respect to independent claim 48 and its dependent claim 49,
Appellants argue that the Examiner’s proffered section of Singhal (col. 6, ll-
36-37) does not teach that the images are “independent views of an
electronic document,” claim language that we understand to mean
independent views of the same electronic document. This argument is
unpersuasive because Singhal teaches applying “identical frame data” to
LCD controller 118 and CRT interface 124 (col. 8, ll. 8-10) (emphasis
added).
Accordingly, we will affirm the Examiner’s rejection of claims 48 and
49.
Obviousness Rejections
The additional applied references of Terayama, Okuley, Shih, Tafoya,
and Meyn, either alone or in combination, do not cure the above-cited
deficiency. Accordingly, we will also reverse the Examiner’s rejections of
claims 2-17, 19-34, and 40-47.

CONCLUSION
Singhal does not teach “identifying, by a software application in a
computing system, display characteristics of multiple display devices.”
Singhal teaches images that represent “independent views of “an
electronic document.”
ORDER
The decision of the Examiner to reject claims 1-47 is reversed. The
decision of the Examiner to reject claims 48 and 49 is affirmed.
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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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED-IN-PART

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