Ex Parte Gillespie et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10125066 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID W. GILLESPIE, RAY TRENT, ANDREW C. HSU, and
LESLIE R. GRATE
____________

Appeal 2009-003929
Application 10/125,066
Technology Center 2100
____________

Decided: October 28, 2009
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
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The Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 10-14, 16-34, 57, 61-69, and 72-89. Claims 1-9, 15, 35-56, 58-60,
and 70-71 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The Appellants invented a graphical user interface in a computing
device comprising a touch screen and a driver coupling to the operating
system. The driver displays a plurality of icons on the touch screen having
an inactivated state and an activated state in response to contact by an object
on the icons (Spec. 4-5).
The Illustrative Claim
Claim 72, an illustrative claim, reads as follows:
72. In a computing device having a processor running
a program configured to perform a plurality of actions
and a first display, said first display displaying an
interface to said program, a graphical user interface,
comprising:
a touch screen, said touch screen including an
object position sensor stacked with a second display, said
touch screen configured to display at least one icon on
said second display when said at least one icon is
activated and when said icon is inactivated; and
a driver coupling said touch screen to said program,
wherein said driver will cause said at least one icon to be
inactivated in response to a first action by a user, and wherein
said object position sensor will cause cursor positioning of a
cursor on the first display in response to contact by an object on
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said at least one icon when said at least one icon is inactivated,
and wherein said driver will cause said at least one icon to be
activated in response to a second action by a user, and wherein
said object position sensor will cause at least one of said
plurality of actions on said program corresponding to said at
least one icon in response to an [sic] contact by an object on
said at least one icon when said at least one icon is activated.

The References
The Examiner relied upon the following prior art as evidence in
support of rejections:
Clancy US 5,952,998 Sept. 14, 1999
Kamijo US 6,538,880 B1 Mar. 25, 2003
Yamada US 6,560,612 B1 May 6, 2003

HPC: FACTOR, The History of Windows CE: Windows CE 3,
http://www.hpcfactor.com/support/windowsce/wce3.asp (last visited July 21,
2006) (hereinafter “HPCFACTOR”).

The Rejections
The following rejections are before us for review:
Claims 10-14, 17-34, 57, 61-68, and 72 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Clancy.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clancy.
Claim 69 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clancy in view of Yamada.
Claims 73-74, 78, 80, 88-89 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Clancy in view of Kamijo.
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Claims 75-77, 79, and 81-87 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Clancy in view of Kamijo, and further in view of
HPCFACTOR.

II. ISSUE
Have Appellants shown that the Examiner erred in finding that Clancy
discloses “said object position sensor will cause cursor positioning of a
cursor on the first display in response to contact by an object on said at least
one icon when said at least one icon is inactivated,” as recited in the
independent claim 72?

III. PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for its rejection of an
application under 35 U.S.C. §§ 102 and 103. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016
(CCPA 1967)). Appellant has the opportunity on appeal to the Board of
Patent Appeals and Interferences to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).

Anticipation
“[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . .” In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
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GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986) (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1573-74 (Fed. Cir. 1984)), overruled on other grounds by Knorr-
Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337
(Fed. Cir. 2004).
Inherency is not established by probabilities or possibilities. See
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F. 3d 1362, 1365 (Fed. Cir.
1999) (citing In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (internal
citations omitted)). That a certain thing may result from a given set of
circumstance is not sufficient to establish inherency. Id.
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; and
(3) the level of skill in the art. See Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
1. Clancy discloses a graphic user interface for a computing
device that comprises a touchpad 16 as a second display to display various
icons such as button images (30 and 32). The icons function as the
conventional mouse buttons. When the user presses one button image, the
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mouse button is activated (col. 2, ll. 53-62; Fig. 2). Clancy also discloses a
pointer 80 on the touchpad 16 functions as a conventional mouse pointer to
move the cursor on the first display 14 by touching and moving the pointer
80 on the touchpad (col. 3, ll. 17-22; Fig. 2).
2. Clancy further discloses that a user can use a function key 12 to
cause the desired screen or menus to be produced on the touchpad 16, and
then the user can adjust the controls for the processor by touching and
moving the icons appeared on the touchpad 16 (col. 3, ll. 6-16, ll. 62-66; Fig.
1).
3. Clancy also discloses the cursors 27 or 28 can be touched and
moved along the ramp-shaped image 24 or 26 to adjust the volume of the
audio or the screen brightness of first display 14 (Clancy, col. 2, l. 63-col. 3,
l. 6; col. 3, l. 66-col. 4 l. 2; Fig. 2).

V. ANALYSIS
The Examiner sets forth a detailed explanation of a prima facie case of
obviousness in the Examiner’s Answer. Therefore, we look to the
Appellants’ Brief to show error in the proffered prima facie case.

35 U.S.C. § 102(b) rejection
With respect to claim 72, the Appellants contend that “Clancy fails to
teach a user interface system . . . 2) where contact with an icon will cause
cursor positioning on the first display when the icon is inactivated.” (App.
Br. 13-14).

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The Examiner maintains that the claim language is anticipated by
Clancy:
In summary, the Examiners [sic] argument is that Clancy
expressly states buttons are shown in various visual states
(pressed and un-pressed) and where the user has selected the
Icon and held their finger on the touchpad after activating a
button and then systematically moved to another icon, the
system would provide for cursor positioning even when the
cursor is moved over another icon. Once the user lifts their
finger and then reactivates the button and lifts their finger,
another action will occur.
(Ans. 27.)
We disagree with the Examiner’s reading of the Clancy reference.
We find Clancy teaches that the button images (icons) 30 and 32 function as
conventional mouse buttons that are activated when touched, and the pointer
80 positions the cursor in the first display 14 of personal computer when
touched and moved (FF 1). We also find Clancy teaches that a user may
press a key 12 to cause a desired icon appearing on the touchpad, and then
touch it to adjust the controls for the processor 10 (FF 2), either to move the
mouse cursor by touching and moving the pointer 80 (FF 1) or to adjust the
controls by moving cursors 27 or 28 (FF 3). We thus find that Clancy does
not teach that the icon still remains inactivated after touching the icon.
According to Clancy, the icon is activated whenever it is touched by a user
(FF 1 and FF 3). We, therefore, find the arguments of the Examiner
unpersuasive. The Examiner has not shown, and we do not readily find that
Clancy discloses the argued limitations.
Because we agree with at least one of the Appellants’ contentions, we
cannot sustain the anticipation rejection of claim 72.
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Independent claim 10 contains the same argued limitations as those of
claim 72. Thus, we can not sustain the anticipation rejection of claim 10.
The anticipation rejection of dependent claims 11-14, 17-34, 57, and
61-68 contains the same deficiencies.
Therefore, we reverse the anticipation rejection of claims 10-14, 17-
34, 57, 61-68, and 72.
35 U.S.C. § 103(a) Rejection
Claim 16. Claim 16 depends on claim 10 and the obviousness
rejection of claim 16 contains the same deficiency as the rejection of claim
10. Therefore, we can not sustain the obviousness rejection of claim 16.
Claim 69. Claim 69 depends on claim 10 and claim 72. The
obviousness rejection of claim 69 contains the same deficiency as the
rejection of claim 10 and claim 72. Therefore, we can not sustain the
obviousness rejection of claim 69.
Claim 73. Claim 73 contains the similar argued limitations as those of
claim 72. The Examiner cites Kamijo in rejecting the claim language
“supplementary information from said program” (Ans. 18), but fails to
identify how Kamijo remedies the noted deficiencies as in those of the
rejection of claims 10 and 72 under 35 U.S.C. § 102(b). As discussed above,
we can not sustain the obviousness rejection of independent claim 73. The
rejection of dependent claims 74-89 contains the same deficiencies.
Accordingly, we reverse the obviousness rejection of claims 16, 69,
and 73-89.
VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that Clancy discloses “said object position sensor will cause
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cursor positioning of a cursor on the first display in response to contact by
an object on said at least one icon when said at least one icon is inactivated,”
as recited in the independent claim 72.

VII. DECISION
We reverse the Examiner’s rejections of claims 10-14, 16-34, 57, 61-
69, and 72-89.
REVERSED

erc

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