Ex Parte Heikes et al

Board of Patent Appeals and Interferences

Apr 23, 2010

11021009 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN DEAN HEIKES and JAMES A. ODELL
____________________

Appeal 2009-0148171
Application 11/021,0092
Technology Center 2100
____________________

Decided: April 23, 2010
____________________

Before JOHN A. JEFFERY, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants waived attendance at an oral hearing scheduled for April 13,
2010 – Appellants failed to return the Hearing Confirmation mailed
February 25, 2010.
2 Application filed December 23, 2004. The real party in interest is AOL,
LLC. (App. Br. 1.)
Appeal 2009-014817
Application 11/021,009

STATEMENT OF THE CASE
The Appellants appeal the Examiner’s rejection of claims 1 and 3-36
under authority of 35 U.S.C. § 134(a). Claim 2 has been canceled. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

Appellants’ Invention
Appellants invented a method for regulating the interruption of a
user’s activity (processes) resulting from an instant message from a remote
party. The method includes monitoring a user’s activity in a first visible and
active window, receiving a notification of an incoming message, opening a
second visible but inactive window, determining that a condition is satisfied
– such as when a user is active for a predetermined amount of time – and
automatically transitioning the windows. (Spec. 1, ll. 6-7; 1, l. 27 to 2, l.
17.)3

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A computer-implemented method, comprising:
monitoring a user’s activity within a first window that is
visible to the user in a graphical user interface (GUI) and that is
active;

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed December 10, 2008; and Reply Brief (“Reply Br.”) filed June 2, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed April 2, 2009.
2
Appeal 2009-014817
Application 11/021,009

receiving a notification of an incoming message intended
for the user;
after receiving the notification, opening a second window
that is visible to the user in the GUI but that is inactive, the
second window being distinct from any other window currently
open in the GUI;
after opening the second window in the GUI, determining
whether a predetermined condition is satisfied based upon
results of monitoring the user’s activity in the first window; and
when the predetermined condition is satisfied:
automatically transitioning the first window in the
GUI from being active to being inactive, and
automatically transitioning the second window in
the GUI from being inactive to being active to provide the user
with notification of the incoming message.

References
The Examiner relies on the following references as evidence of
unpatentability:
Slotznick US 6,609,146 B1 Aug. 19, 2003

Rundell US 2004/0189712 A1 Sep. 30, 2004

Rejections on Appeal
The Examiner rejects claims 1 and 3-36 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Rundell and Slotznick.4

4 We note that Appellants’ claim 3 depends from canceled dependent claim
2 (which depended from independent claim 1). Neither the Examiner, nor
Appellants addressed this error in the Briefs. We therefore deem this as
harmless error, and treat claim 3 as depending from independent claim 1 for
judicial efficiency as well as clarity and consistency of the record.
3
Appeal 2009-014817
Application 11/021,009

ISSUE
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issue before us is as follows.
1. Does the Examiner err in finding the combination of the
Rundell and Slotznick references collectively would have taught or
suggested: (1) monitoring a user’s activity in a first visible, active window;
(2) opening a second visible, but inactive window; (3) determining that a
condition is satisfied; and (4) automatically transitioning the windows?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification explains that it is well known to open
a new window in response to an instant message:
While the user is typing a message to the first individual during
the course of this conversation, a second individual may send
the user a new instant message. If the user does not already
have an open instant messaging conversation with the second
individual, a new instant message UI window is created and
opened on the user’s machine. When this new window is
opened, it may take active focus away from other UI windows.
(Spec. 1, ll. 17-22.)
2. Appellants’ Specification describes determining that a
predetermined condition is satisfied based on monitoring a user’s activity or
inactivity in a first window:
In an act 306, the client device 108A or 108B continually
monitors the user’s activity within the first window. At a
checkpoint 308, the client device 108A or 108B determines
whether a predetermined condition has been satisfied based
upon the user’s activity being monitored in the first window.
For example, the predetermined condition may be satisfied if
4
Appeal 2009-014817
Application 11/021,009

the user’s activity is idle within the first window or if the user
has not typed within the first window in a certain threshold
number of seconds (e.g., three seconds). In another example,
the predetermined condition is satisfied once the user has
finished working on a particular document within the first
window and has closed out of this document. In another
example, the predetermined condition is satisfied when the user
has been continually typing within the first window for a
predefined number of seconds (e.g., sixty seconds). (The client
device 108A or 108B may determine that the user is continually
typing within the first window by determining that there are no
more than a specified number of seconds of idle time in
between successive keystrokes by the user.) In this example,
the client device 108A or 108B may decide to interrupt the
user’s typing after having waited the predefined number of
seconds.
(Spec. 6, l. 30 to 7, l. 13.)

Rundell Reference
3. Rundell describes a data processing system and method “for
managing the movement of windows between a background mode and a
foreground mode” (¶ [0002]), i.e., “an improved method, apparatus, and
computer instructions for managing windows, such as pop-up windows, in a
data processing system” (¶ [0009]). Rundell explains that it is know to
receive an instant message pop-up window that changes “the focus” of the
graphical user interface (“GUI”) or “desktop;” i.e., the pop up window
moves to the foreground becoming active, and the active window moves to
the background becoming inactive:
Although instant messaging is a useful tool, having windows
pop up with messages while a user is working on other
documents can be distracting and frustrating. For example, if a
user is typing in a document using a word processor application
and an instant message is received, a pop-up window changing
5
Appeal 2009-014817
Application 11/021,009

the focus of the desktop. In other words, the word processing
document moves from the foreground to the background, while
the pop-up window moves to the foreground. If the user is
typing information, this input is often redirected into the pop-up
window, rather than the document.
(¶ [0007].)
4. Rundell describes receiving a request to transition (move) a
window from the background to the foreground, determining if certain
conditions have been met – such as whether the foreground window has
received user input within a predetermined amount of time – and
transitioning the window from the background to the foreground when the
conditions have been met. (¶¶ [0010], [0026], [0039]-[0040].) Rundell also
determines if the active application window is interruptible based on a user
modifiable list of applications. (¶¶ [0027], [0032]-[0033].)
5. Rundell monitors user input (data) in a buffer to determine user
activity (or inactivity). Rundell ignores requests to transition windows if
activity is present. If the request is ignored, Rundell may check at a later
time to determine if activity is present (i.e., again monitors user input). (¶¶
[0026], [0031]-[0032], [0039]-[0040], [0045]-[0046].) Rundell may also
check at a later time to determine if the active application window is
interruptible. (¶¶ [0027], [0032].)

Slotznick Reference
6. Slotznick explains that known operating systems have multiple
program windows operating on a GUI or desktop, with a visible active
window “on top” of other partially visible, masked, or hidden (minimized)
windows that may still process information. (Col. 1, ll. 15-67; col. 7, l. 34 to
col. 8, l. 64.)
6
Appeal 2009-014817
Application 11/021,009

7. Slotznick describes a system for automatically switching
between executable program windows in a GUI. (Abstract; col. 3, ll. 34-53.)
Slotznick’s system automatically manages program windows – it minimizes,
resizes, and/or repositions program windows, switches between program
interfaces (windows), and moves windows between a “top” and “back”
layer. (Col. 3, ll. 34-53; col. 7, l. 34 to col. 8, l. 64.)
8. Slotznick describes switching (transitioning) between programs
(e.g., an Internet browser and a game application) by automatically
minimizing (deactivating) a first program in a first program window and
switching to a second program in a second program window when a
condition is satisfied (e.g., Browser Help Object check (col. 19, ll. 24-32))
and certain messages are received (e.g. Before Navigate and Navigate
Complete (col. 19, ll. 8-19)), and vice-versa – e.g., the system minimizes the
game until the browser downloads information, then the system minimizes
the browser and activates the game until the browser completes the
download and a minimum run time has elapsed (or the user has paused the
game). (Col. 15, l. 66 to col.19, l. 63; Figs. 4-5.)

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (Precedential).
7
Appeal 2009-014817
Application 11/021,009

An appellant has the opportunity on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998), overruled in
part on other grounds, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 422
(2007)); Frye, 94 USPQ2d at 1075.

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR, 550 U.S. at 406; Graham v. John Deere
Co., 383 U.S. 1, 13 (1966). 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. Graham, 383
U.S. at 17. See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasizes “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and states that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 415-16. The Court explains:
8
Appeal 2009-014817
Application 11/021,009

When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 416). The Federal Circuit relied in part on the fact
that Leapfrog had presented no evidence that the proposed modification was
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Id. at 1162.
Similarly, the Federal Circuit recently found that adapting existing
electronic processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
9
Appeal 2009-014817
Application 11/021,009

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir.
2008) (quoting KSR, 550 U.S. at 421).

ANALYSIS
Rejection of Claims 1, 3-21, 24, and 26-30

Appellants argue the patentability of claims 1, 3-21, 24, and 26-30 as
a group. (App. Br. 8-9.) We select independent claim 1 as the
representative claim. We therefore treat claims 3-21, 24, and 26-30 as
standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
Appellants contend that the combination of the Rundell and Slotznick
references collectively does not teach “after receiving a notification of an
incoming message intended for a user, opening a second window that is
visible to the user in the GUI but that is inactive, as recited in amended
independent claim 1.” (App. Br. at 9.) The Examiner finds that the prior art
teaches each feature of Appellants’ claim 1 and maintains that the claim is
properly rejected. (Ans. 3-4, 12-13.) Specifically, the Examiner finds that
Rundell teaches a first visible window, a second visible window, receiving a
message, and determining if a condition is satisfied. The Examiner finds
Slotznick teaches switching among multiple (active and inactive) windows,
as well as when a condition is satisfied, deactivating the first window and
activating the second window. (Ans. 3-4, 12-13.) Accordingly, we decide
the question of whether the Rundell and Slotznick references collectively
teach or suggest a first visible active window, after receiving a notification
of an incoming message opening a second visible but inactive window, and
10
Appeal 2009-014817
Application 11/021,009

automatically transitioning between a first visible active window and the
second window.
After reviewing the record on appeal, we agree with the Examiner’s
findings and find the Rundell and Slotznick references collectively teach the
disputed limitations. Specifically, we find that one of skill in the art would
have known at the time of Appellants’ invention to receive an instant
message pop-up window that changes “the focus” of the graphical user
interface (“GUI”) from a first active window to the pop up (second) window.
(FF 1, 3.) We also find Rundell teaches, based on such a message,
transitioning (moving) a second window from the background to the
foreground (making the second inactive window active), if certain
conditions have been met. (FF 4.) We further find that Slotznick teaches
multiple program windows operating on a GUI with a visible active window
“on top” of other partially visible windows in a back layer, and
automatically switching between the program windows. (FF 6, 7.) We
therefore find that the Rundell and Slotznick references collectively teach
each of the disputed features: a first visible active window, after receiving a
notification of an incoming message opening a second visible but inactive
window, and automatically transitioning between a first visible active
window and the second window.
We are not persuaded by Appellants’ contrary arguments that neither
Rundell, nor Slotznick individually teach the disputed features. (App. Br. 8-
9.) See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually”).
11
Appeal 2009-014817
Application 11/021,009

We conclude that combining Rundell’s system for automatically
managing and transitioning between windows with Slotznick’s teaching of
automatically switching between a visible active window and a partially
visible inactive second window is tantamount to the predictable use of prior
art elements according to their established functions – an obvious
improvement. See KSR, 550 U.S. at 417. We agree with the Examiner that
it would have been obvious to one of skill in the art at the time of the
invention to combine Rundell’s automatic window management system with
Slotznick’s automatic window switching techniques.
Appellants have provided no persuasive evidence on this record
establishing that these improvements would have been beyond the level of
skilled artisans. See id. (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”); Muniauction, 532
F.3d at 1327; Leapfrog, 485 F.3d at 1162. Thus, we find Appellants do not
provide any persuasive evidence supporting the assertions of alleged error in
the Examiner’s position. Accordingly, Appellants have not persuaded us to
find error in the Examiner’s obviousness rejection of claims 1, 3-21, 24, and
26-30.

Rejection of Claims 22, 23, 25, and 31

Appellants argue the patentability of claims 22, 23, 25, and 31 as a
group. (App. Br. 11.) We select independent claim 22 as the representative
claim. We therefore treat claims 23, 25, and 31 as standing or falling with
representative claim 22.
12
Appeal 2009-014817
Application 11/021,009

Appellants contend that the combination of the Rundell and Slotznick
references does not (collectively) teach:
determining that a predetermined condition has been satisfied
because a particular period of time since receiving a
notification of an incoming message during which a user’s
activity in a first window has remained active exceeds a
predetermined period of time, and, in response, automatically
causing the first window in the GUI to transition from being
active to being inactive and automatically causing a second
window to become active in the GUI, as recited in independent
claim 22.
(Reply Br. 5-6; see App. Br. 9-11.) The Examiner finds that the prior art
teaches each feature of Appellants’ claim 22 and maintains that the claim is
properly rejected. (Ans. 3-4, 9, 13-14.) Specifically, the Examiner finds
that Rundell teaches monitoring a user’s activity (Ans. 14), and also
Slotznick teaches automatically switching windows when conditions are
satisfied (Ans. 4). Accordingly, we decide the question of whether the
Rundell and Slotznick references collectively would have taught or
suggested monitoring a user’s activity in a first visible, active window,
determining that a condition is satisfied – specifically, if a user’s activity
exceeds a predetermined period of time – and automatically transitioning the
windows accordingly.
After reviewing the record on appeal, we agree with the Examiner’s
findings and find the Rundell and Slotznick references collectively teach the
disputed limitations. We begin our analysis by construing Appellants’
disputed claim limitation. We determine the scope of the claims (claim
limitations) not solely based on the claim language, but upon giving the
claims “their broadest reasonable interpretation consistent with the
[S]pecification” and “in light of the [S]pecification as it would be interpreted
13
Appeal 2009-014817
Application 11/021,009

by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Appellants’ claim 22
recites a limitation directed to “determining that the predetermined condition
has been satisfied because the particular period of time since receiving the
notification of the incoming message during which the user’s activity in the
first window has remained active exceeds the predetermined period of time”
(App. Br 22, claim 22). We broadly but reasonably construe this limitation
to simply mean a user’s activity exceeds a predetermined time constraint.
We find that Rundell monitors user input to determine user activity
(or inactivity), determines if a user provides input within a predetermined
amount of time, and transitions the windows when the condition has been
met. (FF 4, 5.) While, as pointed out by Appellants, Rundell teaches an
inactivity period instead of an activity period (App. Br. 10; Reply Br. 5), it is
undisputed that Rundell teaches monitoring user input and comparing it to a
time threshold. We find that a skilled artisan would understand that
monitoring user input and comparing it to a time threshold is equally
applicable to determining user activity or inactivity, especially in view of
Appellants’ disclosure of making the determination based on idle time – “the
predetermined condition is satisfied when the user has been continually
typing within the first window for a predefined number of seconds . . . . by
determining that there are no more than a specified number of seconds of
idle time in between successive keystrokes by the user.” (Spec. 7, ll. 7-11;
FF 2.)
As we previously explained with respect to claim 1, supra, we find
Rundell teaches transitioning a first window from active to inactive
(foreground to background) and a second window from inactive to active
14
Appeal 2009-014817
Application 11/021,009

(background to foreground), if certain conditions have been met, and that
Slotznick teaches moving among multiple program windows. Therefore, we
find that combination of the Rundell and Slotznick references teaches the
disputed limitations, and conclude that these limitations are tantamount to
the predictable use of prior art elements according to their established
functions – an obvious improvement. See KSR, 550 U.S. at 417.
Appellants have not provided any persuasive evidence on this record
establishing that these improvements would have been beyond the level of
skilled artisans. See id. Accordingly, Appellants have not persuaded us to
find error in the Examiner’s obviousness rejection of claims 22, 23, 25, and
31, and we affirm the Examiner’s obviousness rejection of these claims.

Rejection of Claims 32 and 33

Appellants argue the patentability of claims 32 and 33 as a group.
(App. Br. 11, 13.) We select independent claim 32 as the representative
claim, and treat claim 33 as standing or falling with representative claim 32.
Appellants contend that the combination of the Rundell and Slotznick
references does not teach “determining, based on an identity associated with
the sender of the incoming message, whether to interrupt the user’s activity
in response to receipt of the incoming message, as recited in independent
claim 32.” (Reply Br. 6; see App. Br. 11-13.) The Examiner finds that the
prior art teaches each of the disputed features of Appellants’ claim 32 and
maintains that the claim is properly rejected. (Ans. 3-4, 11, 15-16.)
Specifically, the Examiner finds that Rundell teaches determining whether
the active application window (application in the foreground) is
interruptible. (Ans. 15-16.) Accordingly, we decide the question of whether
15
Appeal 2009-014817
Application 11/021,009

the Rundell and Slotznick references collectively would have taught or
suggested determining whether to interrupt the user’s activity based on an
identity associated with the sender of the incoming message.
After reviewing the record on appeal, we agree with Appellants that
the combination of the Rundell and Slotznick references does not teach
determining whether to interrupt the user’s activity based on an identity
associated with the sender of the incoming message. Rundell does teach a
determining whether the active application window is interruptible based on
a user modifiable list of applications. (Ans. 15-16; FF 4.) But this is not the
same as determining whether the active application window is interruptible
based on message sender identity – in other words, determining that a
messaging application may interrupt the active application window, and also
determining that a particular sender (identity) may (or may not) interrupt the
active application window.
Therefore, we find that combination of the Rundell and Slotznick
references does not teach the disputed limitations. Appellants persuade us to
find error in the Examiner’s obviousness rejection of claims 32 and 33.
Accordingly, we reverse the Examiner’s obviousness rejection of claims 32
and 33.

Rejection of Claims 34 and 35

Appellants argue the patentability of claims 34 and 35 as a group.
(App. Br. 13-14.) We select independent claim 34 as the representative
claim, and treat claim 35 as standing or falling with representative claim 34.
Appellants contend that the combination of the Rundell and Slotznick
references does not teach:
16
Appeal 2009-014817
Application 11/021,009

determining that a predetermined amount of time has elapsed
since receiving the notification of the incoming message
without the predetermined condition having been satisfied, and,
in response, automatically providing an indication to the other
user (i.e., the user from whom the incoming message was
received) that the user has not yet received notification of the
incoming message.
(App. Br. 13.) The Examiner finds that the prior art teaches each of the
disputed features of Appellants’ claim 34 and maintains that the claim is
properly rejected. (Ans. 3-4, 11-12.) Specifically, the Examiner finds that
Slotznick teaches:
determining that a predetermined amount of time has elapsed
since receiving the notification of the incoming message
without the predetermined condition having been satisfied (such
as, the Browser Helper Object also checks to see if the
minimum run time of the game or application has elapsed or if
the user has put the game on pause or hold, col., 19, lines, 30-
32); and in response to determining that the predetermined
amount of time has elapsed since receiving the notification of
the incoming message without the predetermined condition
having been satisfied automatically providing an indication to
the remote user that the user has not yet received notification of
the incoming message (col., 19 lines, 50-60).
(Ans. 11-12.) Accordingly, we decide the question of whether the Rundell
and Slotznick references collectively would have taught or suggested the
disputed limitations - determining that the condition is not satisfied within a
predetermined time since receiving the message notification, and
automatically providing an indication to the message sender that the user has
not received the notification.
After reviewing the record on appeal, we agree with Appellants that
the combination of the Rundell and Slotznick references does not teach
automatically providing an indication to the message sender that the user has
17
Appeal 2009-014817
Application 11/021,009

not received the notification. While Slotznick does teach switching between
programs when a condition is satisfied and certain messages are received
(Ans. 11-12; FF 8), nowhere does Slotznick (or Rundell) describe or suggest
sending a return message (indication) to a sender in response to the user not
receiving notification of an incoming message (see App. Br. 13-14).
Moreover, as pointed out to by Appellants, the Examiner fails to address this
deficiency. (Reply. Br. 1-2.)
Therefore, we find that combination of the Rundell and Slotznick
references does not teach the disputed limitations. Appellants persuade us to
find error in the Examiner’s obviousness rejection of claims 34 and 35.
Accordingly, we reverse the Examiner’s obviousness rejection of claims 34
and 35.

Rejection of Claim 36

Appellants contend that the combination of the Rundell and Slotznick
references does not teach “monitoring the user’s interaction with the
application running in the presently active first window if it is determined
that the user’s interaction with the application running in the presently
active first window is not to be interrupted in response to receipt of the
incoming message, as recited in independent claim 36.” (Reply Br. 7; see
App. Br. 15.) The Examiner finds that the prior art teaches each of the
disputed features of Appellants’ claim 36 and maintains that the claim is
properly rejected. (Ans. 3-4, 12, 16-17.) Specifically, the Examiner finds
that Rundell teaches monitoring user input, and determining if the (presently
active) application is interruptible. (Ans. 16-17.) Accordingly, we decide
the question of whether the Rundell and Slotznick references collectively
18
Appeal 2009-014817
Application 11/021,009

would have taught or suggested monitoring the user’s interaction with the
active application window if it is determined that the active application
window is not interruptible by the incoming message.
After reviewing the record on appeal, we agree with the Examiner’s
findings and find the Rundell and Slotznick references collectively teach the
disputed limitations. We broadly but reasonably construe the disputed
limitations of Appellants’ claim 36 – “if it is determined . . . that the user’s
interaction with the application running in the presently active first window
is not to be interrupted . . . monitoring the user’s interaction with the
application running in the presently active first window” (App. Br. 30, claim
36) – to simply mean that if it is determined not to interrupt the active
application window, continuing to monitor, or performing monitoring at a
later time of, a user’s interaction or activity with an active application
window. Appellants do not in anyway limit the monitoring to a particular
period of time.
As we previously explained (supra) with respect to claims 1 and 22,
we find that Rundell monitors user input to determine user activity. Rundell
also may determine if the active application window is interruptible based on
a user modifiable list of applications. (FF 4.) If Rundell ignores a request to
transition the windows, e.g., if activity is present or the application is not
interruptible, Rundell may again, at a later time, monitor user input to
determine if activity is present and check if the active application window is
interruptible. (FF 5.) Therefore, we find that combination of the Rundell
and Slotznick references teaches the disputed limitations, and conclude that
these limitations are tantamount to the predictable use of prior art elements
19
Appeal 2009-014817
Application 11/021,009

according to their established functions – an obvious improvement. See
KSR, 550 U.S. at 417.
Appellants have not provided any persuasive evidence on this record
establishing that these improvements would have been beyond the level of
skilled artisans. See id. Accordingly, Appellants have not persuaded us to
find error in the Examiner’s obviousness rejection of claim 36, and we
affirm the Examiner’s obviousness rejection of this claim.

CONCLUSION OF LAW
On the record before us, we find Appellants have not established that
the Examiner erred in rejecting claims 1, 3-31, and 36 under 35
U.S.C. § 103. We further find Appellants have established that the
Examiner erred in rejecting claims 32-35 under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s rejection of claims 1, 3-31, and 36 under 35
U.S.C. § 103.
We reverse the Examiner’s rejection of claims 32-35 under
35 U.S.C. § 103(a).
20
Appeal 2009-014817
Application 11/021,009

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

peb

FISH & RICHARDSON P.C.
P.O. Box 1022
MINNEAPOLIS, MN 55440-1022
21