Ex parte Hirayama

Board of Patent Appeals and Interferences

Jul 23, 1998

07831953 (B.P.A.I. Jul. 23, 1998)

Application for patent filed February 6, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TOMOSHI HIRAYAMA
__________
Appeal No. 95-4629
Application 07/831,9531
__________
ON BRIEF
__________
Before THOMAS, KRASS, and CARMICHAEL, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4629
Application 07/831,953
2
Appellant has appealed to the Board from the examiner's
final rejection of claims 1 to 9, which constitute all the
claims in the application.
Representative claim 1 is reproduced below:
1. A display apparatus for displaying a window image
thereon, the window image having an image area, the display
apparatus comprising:
(a) a display for displaying the window image at a
selected position of the display, the display having a visible
area;
(b) a coordinate data input device for choosing the
selected position by pointing to a window display area so as
to display the window image on the display;
(c) a memory for storing the window image;
(d) a controller for supplying the window image from said
memory to said display; and
(e) correction means for correcting the selected position
of said window image if the window image protrudes from the
visible area of the display, wherein if the window image is
displayed on the window display area chosen by the coordinate
data input device, said correction means corrects the position
of the window image so that the image area of the window image
is displayed in the visible area.
The following references are relied on by the examiner:
Norwood 5,063,600 Nov. 5,
1991
Appeal No. 95-4629
Application 07/831,953
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Borland, Quattro® Pro User Manual, p. 235-250; 1989
Microsoft Windows 3.0 User Manual, p. xi-xvi, 20-22, 46, 157,®
and 494; 1990
Claims 1, 2, 5 and 6 stand rejected under 35 U.S.C. §
102(a) as being anticipated by Microsoft . All claims also®
stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner relies upon Microsoft in view of®
Borland as to claims 1, 2, 5 and 6. As to claims 3, 4, and 7
to 9, the examiner relies upon Microsoft in view of Norwood.®
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answers for
the respective details thereof.
Opinion
Generally for all the reasons expressed by the examiner
in the answers, and for the additional reasons presented here,
we will sustain all three prior art rejections of all the
claims on appeal. To round-out the examiner's detailed
analysis of the claimed invention and appellant's arguments,
we add the following.
Appeal No. 95-4629
Application 07/831,953
4
Our study of the briefs and the answers leads us to
conclude there is an undercurrent of dispute between the
examiner and the appellant as to what the claims on appeal
really recite. Inasmuch as appellant's arguments focus only
upon the correction means clause of claim 1 on appeal and that
corresponding clause and the detecting means clause of
independent claim 5 on appeal, we focus upon these portions of
these respective claims. As alluded to by the examiner in the
answers, there is recited in each independent claim two
different conditions, each of which may be answered in the
affirmative or negative. The first question with respect to
claim 1 is whether an image is even displayed at all on a
window display area chosen by a coordinate data input device.
If this question is answered in the negative, there is no
correction means clause operative in the claim. Assuming it
is answered in the positive, there still may be no correction
means operative in the claim since the correction means clause
is merely for correcting a selective position of a window if
the window image "protrudes from the visible area of the
display." Thus, even if a window image is displayed in the
Appeal No. 95-4629
Application 07/831,953
5
display area it may not protrude from the visible area of the
display, thus causing the correction means clause to be
inoperative or not needed in the context of the overall
claimed invention. Even still, the function of the correction
means is that it "corrects the position of the window image so
that the image area of the window image is displayed in the
visible area." This language of the correction means clause
of independent claim 1 on appeal is more explicitly recited in
both the correction means and detection means clauses of
independent claim 5 on appeal, with the same end result when
the same claimed "conditions" are followed through, that is,
answered in the positive or the negative.
From our review of the disclosed invention, it appears
that independent claim 1 is apparently directed to focus on
the disclosed "first aspect" of the disclosed invention.
However, the scope of claim 1, as noted by the examiner, is
much broader than appellant's arguments appear to obtain.
Initially, we observe that there is no automatic correction
that occurs which is plainly an intent of the disclosed
invention. Secondly, the function of the correction means is
Appeal No. 95-4629
Application 07/831,953
6
merely to correct the position of the window image so that the
image area of the window image is displayed in the visible
area. What is disclosed is the correction means is operative
such that the effective display area of the window is wholly
displayed within the display screen. Note the specification
as filed at page 3, lines 5 to 10 and at page 22, lines 8 to
12. A similar aim is expressed in the Amendment to the top of
page 16 of the specification as filed where a correction means
is operative in such a manner as to permit the image 84L to be
displayed "substantially in whole." Similar language is
expressed at page 17, where the correction means is operative
such that the image is displayed “at substantially the center
of the display screen 8 correctly” at lines 10 and 11.
It is believed that the second independent claim 5 on
appeal is intended to cover the disclosed "second aspect" of
the disclosed invention. Appellant's remarks at the middle of
page 4 of the principal brief on appeal indicate that as to
independent claim 5 the above-noted language refers to the
situation where the user intentionally wishes to have the icon
image protrude from the visible display area. At page 3 of
Appeal No. 95-4629
Application 07/831,953
7
the specification as filed the "second aspect" of the
invention it is stated at lines 14 through 18 that "when the
position pointed by the coordinate input device is out of the
tolerance range of the protrusion of the window, the display
position is corrected or not corrected depending on the
condition.” This aspect is more specifically described at
page 22, lines 16 to 21 where it is stated that "since the
display position is corrected or not corrected on the basis of
the condition when the display position designated lies
outside of the tolerance range, the user can operate the
window display apparatus in accordance with the user's own
intention and the window display apparatus can be operated
more conveniently."
When the subject matter of the last two paragraphs of
this discussion have been considered against the claimed
invention, it is noted that there is no statement in
independent claim 1 or 5 as to any correction being
automatically effected and in any manner such as that the
window image would be wholly displayed within the display
screen or substantially centered. Moreover, at least as to
Appeal No. 95-4629
Application 07/831,953
8
the invention intended to be recited in independent claim 5
and its most dependent claim, claim 9, there is no statement
of any tolerance range and whether a given image display
position is within or without this tolerance range as related
to any conditions recited. These considerations are all
significant because they widen the breadth of applicability of
prior art against the present claims. The examiner has taken
full advantage according to the reasoning that we understand
from the answers to this wider-scoped language of the claims.
Appellant's arguments are therefore not coextensive with the
actual recited conditional language of the claims and
therefore do not show a full appreciation of the breadth of
the subject matter set forth in the claims on appeal.
As to the first rejection of claims 1, 2, 5 and 6 under
35 U.S.C. § 102 as being anticipated by Microsoft , we add to®
the examiner's view our view as to the showing at page xii the
image showing of two windows overlapping each other. The
statement below these two depictions indicates to the user
that "to review a spreadsheet and a report from two separate
applications, you change the size of their windows so that
Appeal No. 95-4629
Application 07/831,953
9
they can fit side by side on the desktop." This showing
clearly shows that a given window image may "protrude from" a
visible area of the display such as to be overlapped by
another window closer to the user. The statement that the
size of them may be changed so that they may fit side by side
operates as a clear teaching of the
correctability of them to the extent claimed, with such a
corrected version shown at page xiii. From the user's
perspective, to display the images side by side is an
operational or conditional feature within the Windows
software, which feature may be chosen or may not be chosen by
the user.
Furthermore, the teaching at the bottom of page 21 of
Windows indicates that controls exist to change the size and
to move Windows, to maximize and minimize their size by use of
a mouse, a coordinate data input device, noted by the examiner
in the Answer. As to the protrusion feature, we also note the
teaching at page 22 of Microsoft which indicates that the®
scroll bars allow parts of a document to be viewed when the
entire document won't fit within the window. Therefore, when
Appeal No. 95-4629
Application 07/831,953
10
portions of the document protrude from the visible area,
horizontal and vertical scroll and size change correction
means exist wherein the document may be completely or wholly
viewed in a normal sense within the display area.
All of this is to say that there are many more teachings
within the Microsoft Windows disclosure relied upon by the®
examiner other than the sizing grid variation at page 157 the
discussion of which we fully agree with as basis for
correctability to the extent recited in independent claims 1
and 5 on appeal. Appellant's arguments are misplaced to the
extent appellant argues that the examiner has ignored
limitations in the claims on appeal, as must surely be
apparent in light of our extensive initial discussion in this
opinion. Furthermore, following the examiner's reasoning, if
the grid lines feature is activated as the examiner argues
from the teaching at page 157 of Windows, it is operative
under all conditions, that is, whether or not an image
protrudes or not. Therefore, if an image does protrude it is
operative to the extent claimed. The examiner has not
rewritten the claims to cover the cited references but in fact
Appeal No. 95-4629
Application 07/831,953
11
has interpreted the breadth of the claims on appeal and
applied the reference's teaching to this broad language.
We turn next to the rejection of the same claims, claims
1, 2, 5 and 6 under 35 U.S.C. § 103 in light of the collective
teachings of Microsoft in view of Borland. Clearly, Borland®
is designed to operate in a Windows environment such as set
forth in the Microsoft reference relied upon initially by the®
examiner. What Borland does add to the Microsoft is®
additional teachings that are particular to Borland but also
which enhance upon basic Microsoft features. The zoom, tile,®
stack and move/size optional window features first introduced
at page 237 of Borland's reference also contain additional
options to which the user may obtain and directly relate to
the correctability and the conditional operability from a
user's perspective of features that affect the Window images
and their relationship to each other and the size of any one
of them. For example, the tile display feature is stated at
the bottom of page 239 to automatically, once activated by the
user, reposition and resize the displayed windows as necessary
giving the windows equal room on the screen. The ability of
Appeal No. 95-4629
Application 07/831,953
12
the user to move a window by dragging it with a mouse has been
explicitly noted at the top of page 242 of Borland, which
feature is already present in Windows.
As to the last stated rejection, that of claims 3, 4 and
7 to 9 under 35 U.S.C. § 103 in light of the collective
teachings of Microsoft in view of Norwood, appellant does not®
traverse the combinability of Norwood with Microsoft within®
35 U.S.C. § 103. Norwood's discussion at column 3 beginning
at line 19 indicates that combined flat panel displays and
screen tablets with an attached pen were known in the art to
Norwood. Such is relied upon by Norwood at column 9 beginning
at line 51.
The selective correctability to the extent claimed and to
the extent argued appears to have been met by the teachings of
the art relied upon as argued by the examiner and as
additionally pointed out by us from additional teachings and
showings from the references relied upon by the examiner. The
selective dragability of any icon or movability of any
displayed window by the user is an inherent part of the
disclosed invention as well as each of the three references
Appeal No. 95-4629
Application 07/831,953
13
relied upon by the examiner. From our perspective, it
also appears in passing that the subject matter of claim 1 in
the correction means clause reads upon appellant's admitted
prior art since there is no requirement of this claim that the
image be automatically substantially centered or wholly
displayed within the display screen since the claim does not
recite any of these particulars. Indeed, the function of the
correction means to merely position the window image so that
the image area of the window image is displayed in the visible
area is broad enough to permit the movement of a window by a
user and still "protrude" beyond the display screen since the
entire or whole image is not recited to be displayed in the
claim. This understanding is derived from our earlier study
of the subject matter of independent claims 1 and 5 on appeal
and appellant's recognition at pages 1 and 2 of the disclosed
invention as to how the prior art figures operate. As to
claims 1, 5 and 9 on appeal, clearly, from the normal use of
the system shown in prior art Figures 1 to 4, the user may
optionally or conditionally choose to allow the display of a
protruded image from the display screen to remain or it may be
Appeal No. 95-4629
Application 07/831,953
14
slightly moved or moved in its entirety. Still, an image may
never need to be repositioned because it may never protrude
from the display screen at all as an alternative condition to
the normal usage of appellant's prior art Figures 1 to 4. In
such a case, there would be no operative condition to correct
anything, which again is within the ambit of the subject
matter of the claims on appeal.
We further observe in passing that claims 2 to 4 and 6 to
8 are respectively identical, are not argued in the briefs and
read on appellant’s prior art Figures 1 to 4 and their
corresponding specification discussion.
We believe that the examiner has provided evidence of
reasonable equivalent means performing the claimed functions,
to the extent broadly recited. The examiner’s and our own
analysis of the prior art relied upon by the examiner add
further understanding of this and the wide scope of the
claims.
Our own analysis provided more insight of the disclosed
and claimed invention than do appellant’s brief and reply
brief. The dissent would require appellant to read the claim-
Appeal No. 95-4629
Application 07/831,953
15
narrowing specification into certain portions of the claimed
invention without invoking In re Donaldson, 16 F.3d 1189, 29
USPQ2d 1845 (Fed. Cir. 1994) (in banc) and 35 U.S.C. § 112,
sixth paragraph. Our opinion points out that the claims are
much broader than a reasonable view of the corresponding
disclosure, that is, of what appellant regards as his own
invention as he disclosed it. The dissent would appear to
burden appellant with a narrow interpretation of the claims
that the record does not reflect appellant desires to invoke.
The dissent’s reference to the correction means operating
where the user intentionally wishes to have the icon image
protrude from the “visible area of the display” is only
reflective of the “second” aspect of the disclosed invention
and the subject matter of claims 5 to 9 and not of claims 1 to
4. The “visible area of the display” is not defined in the
claims as the edge of the display device as the dissent seems
to say, and it is also not recited as a means.
In view of the foregoing, the examiner's rejection of
claims 1, 2, 5 and 6 under 35 U.S.C. § 102 is affirmed as is
Appeal No. 95-4629
Application 07/831,953
16
the rejection of claims 1 to 9 under 35 U.S.C. § 103.
Accordingly, the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Appeal No. 95-4629
Application 07/831,953
17
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
CARMICHAEL, Dissenting
I dissent. The examiner has based the rejections on an
unreasonably broad interpretation of the claims.
Claims undergoing examination are given their broadest
reasonable interpretation consistent with the specification.
Appeal No. 95-4629
Application 07/831,953
18
In re Donaldson, 16 F.3d ll89, 1194, 29 USPQ2d 1845, 1850
(Fed. Cir. 1994) (in banc). A means-plus-function element is
limited to the disclosed means and equivalents. Id.; 35
U.S.C. § 112, sixth paragraph.
In the present case, appellant argues that the correction
means, as disclosed in the specification, operates where the
user intentionally wishes to have the icon image protrude from
the visible area of the display, and operates to correct the
position of the icon depending on the occurrence of a first or
second condition. Appeal Brief at 4. The examiner ignored
those limitations. That is contrary to what the Federal
Circuit intended in Donaldson.
The recited means refers to the “visible area of the
display.” The examiner relies on the Borland reference, which
has windows overlapping within the visible area of the
display. While the overlapped portion of a window becomes
invisible in Borland, it does not thereby protrude beyond the
edge of the display device as disclosed in the specification
and required by the claims.
Appeal No. 95-4629
Application 07/831,953
19
The examiner’s combination does not reach these ignored
limitations. Therefore, I would reverse.
)
) BOARD OF PATENT
JAMES T. CARMICHAEL ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Philip M. Shaw
Appeal No. 95-4629
Application 07/831,953
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