Ex Parte Han et al

Patent Trial and Appeal Board

Mar 9, 2018

14278213 (P.T.A.B. Mar. 9, 2018)

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.
14/278,213 05/15/2014 Chris Han 319790-US-CNT 9233
69316 7590 03/13/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
RIEGLER, PATRICK F
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS HAN and NATHAN DUNLAP
Appeal 2017-007950
Application 14/278,213
Technology Center 2100
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
MATTHEW J. McNEILL, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 21—40. We have jurisdiction over the appeal of these claims
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-007950
Application 14/278,213
STATEMENT OF CASE1
An understanding of the invention can be derived from a reading of
exemplary claim 21, which is reproduced below:
21. A method for providing a table of contents,
comprising:
displaying information that contains a plurality of
portions of content;
upon receiving a selection from a user to access a table of
contents for the information, displaying a table of contents
containing a plurality of thumbnail representations, each
thumbnail representation corresponding to a respective portion
of the plurality of portions of the content, in a manner that is
overlaid on at least some of the information; and
allowing the user to view at least part of the information
between a first thumbnail representation of the plurality of
thumbnail representations and a second thumbnail
representation of the plurality of thumbnail representations
while the plurality of thumbnail representations is overlaid on
the at least some of the information.
REJECTIONS
Claims 37-40 are rejected under 35U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 21—24, 26—32, and 34-40 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Tally (Customize the Adobe
Acrobat 8 Interface (March 16, 2007), http://layersmagazine.com/customize
the-adobe-acrobat-8-interface.html), and further in view in Sullivan et al.
(US 2007/0192791 Al, published August 16, 2007) (hereinafter “Sullivan”)
1 Our Decision makes reference to Appellants’ Appeal Brief (“App. Br.,”
filed January 4, 2017), and the Examiner’s Answer (“Ans.,” mailed March
27, 2017), and the Reply Brief (“Reply Br.,” filed May 1, 2017).
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Application 14/278,213
Claims 25 and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Tally and Sullivan, and further in view of Sadikali
et al. (US 2008/0126982 Al, published May 29, 2008) (hereinafter
“Sadikali”).
ANALYSIS
Rejection under 35 U.S.C. § 101
Claims 37—40
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
Appellants contend “the ordinary meaning of the phrase
‘computer readable device’ does not include signals.” App. Br. 7.
The Examiner found that Appellants have not limited the claimed
computer readable device to statutory subject matter. Ans. 2-4. We agree
with the Examiner.
We sustain the Examiner’s § 101 rejection of independent claim 37
reciting, in pertinent part, a computer-readable device having computer-
executable instructions. We note the claim does not limit the computer-
readable device to non-transitory forms.
The device recitation, however, is insufficient to limit the claim to
non-transitory forms. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB
2013) (expanded panel) (precedential) (holding recited machine-readable
storage medium ineligible under § 101 since, absent a contrary disclosure in
the Specification, a machine-readable storage medium encompasses
transitory media).
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Application 14/278,213
We are not persuaded that the Examiner erred in rejecting
representative claim 37, and claims 38—40 for similar reasons.
Rejections under 35 U.S.C. § 103
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments regarding claims 21—40.
App. Br. 10-40; Reply Br. 4—5.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 4—11.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
Issue 2: Did the Examiner err in finding that the combined teachings
of Tally and Sullivan teach and/or suggest “a table of contents,” as set forth
in claim 21, and similarly recited in independent claims 29 and 37?
Appellants contend,
displaying thumbnails of all of the pages in a document in a
separate panel, as described by Taz-Tally, does not satisfy the
definition of the term “table of contents” as set forth in the
Wiktionary® technical dictionary. For example, displaying
thumbnails of all of the pages in a document in a separate panel,
as described by Taz-Tally, does not constitute a list of titles of
the parts of a book or document, organized in the order in
which the parts appear.
Clearly, displaying thumbnails of all of the pages in a
document in a separate panel, as described by Taz-Tally, does
not satisfy the ordinary and customary meaning of the term
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Appeal 2017-007950
Application 14/278,213
“table of contents.” Moreover, Sullivan is not asserted to and
does not remedy this deficiency of Taz-Tally.
Reply Br. 5.
Regarding Appellants’ above argument that in Tally “thumbnails of
all of the pages in the document are displayed,” (Reply Br. 4—5 (emphasis
omitted)), Appellants’ argument is not commensurate with the scope of
claim 21, because claim 21 does not preclude such a reading of the
displaying step.
The Examiner also finds
within Tally, the “pages panel” described on pages 3, 4, 8 and 9
suggests a floating table of contents that comprises page
thumbnails for selection. Specifically, the figures on page 4
clearly show a page panel that fills a navigation panel and a
larger document view, where a user can select pages within the
page panel to view the document at the selected page in the
larger document view. This clearly suggests that a page panel
is a table of contents as claimed. Page 2 describes at least a
“page” icon within a navigation panel that is used to show the
page panel (equivalent to a selection receivable by a user to
access a table of contents). The bottom of page 8 is where it is
suggested that the (page) panel can float above the document
via a manipulation.
Ans. 5 (emphasis added).
We agree with and adopt the Examiner’s findings as our own.
Particularly, we concur with the Examiner’s conclusion that Tally in
combination with Sullivan teaches or suggests Appellants’ claimed
invention.
Thus, in light of the broad terms recited in claim 21 and the arguments
presented, Appellants have failed to clearly distinguish the claimed
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invention over the prior art combination relied on by the Examiner.
Therefore, in the absence of sufficient evidence or argument, we are not
persuaded the Examiner’s reading of the claims on the cited references is
erroneous and sustain the rejection of independent claims 21, 29, and 37,
which include substantially the same limitations.
Regarding dependent claim 24, while Appellants raised additional
arguments for patentability (App. Br. 18—20), we find that in the Answer the
Examiner has rebutted with sufficient evidence each and every one of those
arguments. Ans. 7—8. Therefore, we adopt the Examiner’s findings and
underlying reasoning, which are incorporated herein by reference.
With respect to dependent claims 22, 23, and 25 40, Appellants argue
these claims are patentable due to their dependency on their respective
independent or dependent claims. Thus, as we sustained the rejection of
claims 1, 29, and 37, we also sustain the rejection of claims 22, 23, and 25—
40, dependent therefrom.
Consequently, we conclude there is no reversible error in the
Examiner’s rejections of claims 21—40.
DECISION
The Examiner’s decision rejecting claims 37-40 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is affirmed.
The Examiner’s decision rejecting claims 21—40 under 35 U.S.C.
§ 103(a) 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)(l)(iv).
AFFIRMED
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