Ex Parte King et al

Board of Patent Appeals and Interferences

Oct 27, 2009

09551303 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NICK KING, DAVID WONG, PETER ALEXANDER,
CAMERON J. ESFAHANI, and DEBBIE MCDANIEL
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Appeal 2009-001174
Application 09/551,303
Technology Center 2100
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Decided: October 28, 2009
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Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
STEPHEN C. SIU Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-6, 8-13, 15, 16, 18-24, 26, and 32-58.
Claims 7, 14, 17, 25, and 27-31 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

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STATEMENT OF THE CASE

THE INVENTION
Appellants’ invention relates generally to data processing systems.
More particularly, the present invention relates to digital processing systems
which include display devices and which allow for the control of the
appearance of objects displayed on the display device. (Spec. 1, ll. 6-9).

Claims 1 and 10 are illustrative:

1. A computer readable medium storing executable computer program
instructions which when executed on a digital processing system
cause said digital processing system to perform a method comprising:

retrieving a data value representing an appearance of an enclosure
enclosing said digital processing system including a microprocessor,
wherein said data value includes a value representing at least one of a
machine type and a color of said enclosure of said digital processing
system; and

determining an appearance of a display of said digital processing
system based upon said appearance of said enclosure.

10. A digital processing system comprising:

a processor;

a display coupled to said processor;

a bus coupled to said processor;

a memory coupled to said bus, said memory storing a data value
representing an appearance of an enclosure enclosing said digital
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processing system including a microprocessor, said processor
retrieving said data value and setting an appearance of said display
based upon said appearance of said enclosure,

wherein said data value includes a value representing at least one of a
machine type and a color of said enclosure of said digital processing
system.

PRIOR ART
The Examiner relies upon the following reference as evidence in
support of the obviousness rejection:
Glaser US 6,392,671 B1 May 21, 2002

THE REJECTIONS
The Examiner rejected claims 1-6, 8-13, 15, 16, 18-24, 26, and 32-58
under 35 U.S.C. § 103(a) as unpatentable over Glaser.

APPELLANTS’ CONTENTIONS
1. Appellants contend that according to the claimed invention, a
display of a computer may be determined based on a data value representing
an appearance of an enclosure of the computer including the microprocessor.
The data value also indicates the machine type and/or color of the enclosure
of the computer including enclosing a microprocessor of the computer.
Appellants contend that these features are absent from Glaser. (App. Br. 6).
2. Appellants contend that a mouse (or a peripheral) is not a
computer and certainly does not include a microprocessor such as a CPU of
a computer. (App. Br. 7). In the event that a mouse or peripheral is
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considered to be a computer, Glaser discloses another computer system.
(App. Br. 7-8).

EXAMINER’S FINDINGS
The Examiner interprets the above-mentioned limitation (See
Appellants’ Contentions’ 1) as a system in which data describing the
appearance of an enclosure of the system (not necessarily the whole system)
is used to affect the display of the system. (Parenthesis in original). (Ans. 9)

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Have Appellants shown the Examiner erred in finding that Glaser
teaches or suggests the limitations of retrieving a data value representing an
appearance of an enclosure enclosing said digital processing system
including a microprocessor, wherein said data value includes a value
representing at least one of a machine type and a color of said enclosure of
said digital processing system, and determining an appearance of a display
of said digital processing system based upon said appearance of said
enclosure?
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PRINCIPLES OF LAW
Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
Obviousness
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellants have the burden 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). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.

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Findings of Fact
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

1. Glaser discloses initiating a desktop theme change based
on an exchanging event of any peripheral. (Col. 3, ll. 5-9)

2. Glaser discloses a mouse that includes identification
means, for example a semiconductor memory. The identification
means carries a unique identifier sufficient to identify to a computer
system each unique individual mouse. (Col. 5 ll. 27-33)

3. Glaser discloses that each pointing device can have a
particular motif and a unique identifier that corresponds to a particular
desktop theme file stored by the computer system. (Col. 5, ll. 38-43,
see also col. 3 ll. 31-37)

4. Glaser discloses a graphical user interface theme that is
associated with, or “tied to,” a peripheral that is connected to a
computer system. (Quotes in original) (Col. 3, ll. 23-25).

5. Glaser suggests small computers including computer
memory and microprocessor, being mounted in a mouse. (Col. 8, ll.
20-27)

ANALYSIS
ISSUE 1
We decide the question of whether Appellants have shown the
Examiner erred in finding that Glaser teaches or suggests the limitations of
retrieving a data value representing an appearance of an enclosure enclosing
said digital processing system including a microprocessor, wherein said data
value includes a value representing at least one of a machine type and a
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color of said enclosure of said digital processing system, and determining an
appearance of a display of said digital processing system based upon said
appearance of said enclosure. (See claim 1).
At the outset, we construe the aforementioned claim limitation to
require an enclosure that encloses the entire digital processing system (“an
enclosure enclosing said digital processing system including a
microprocessor and a display of said digital processing system”). Thus, it is
our view that the claim language requires a single, self contained system that
includes a digital processing system including a microprocessor and a
display. Based on this construction, we find that the weight of the evidence
supports the Appellants’ position.
As noted above, the Examiner contends that claim 1 is interpreted as a
system in which data describing the appearance of an enclosure of the
system (not necessarily the whole system) is used to affect the display of the
system. (See Examiner’s Findings supra). For the reasons discussed infra,
we agree with Appellants that, at best, Glaser teaches at least two enclosures
for the entire system. (App. Br. 8)
We find that Glaser suggests a first enclosure (pointing device) that
includes memory and “may” include a microprocessor. (FF 5). However,
according to Glaser, the first enclosure is attached to a second enclosure
(computer). (FF 4). The second enclosure processes the identifier stored in
the first enclosure and implements the desktop theme on a separate display.
(FF 2-3). The appearance of the first enclosure determines the displayed
desktop theme. (FF 1, 3, and 4)

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Thus, we find that the Examiner’s interpretation does not account for
an appearance (desktop theme) based on a single enclosure that encloses the
digital processing system including a microprocessor and the display,
consistent with our claim construction supra. Therefore, we agree with
Appellants that at best Glaser teaches at least two enclosures for the entire
system.
Based on the record before us, we find that Appellants have shown
error in the Examiner’s rejection of independent claim 1. Accordingly, we
reverse the Examiner’s rejection of claim 1 as well as independent claims
10, 19, 32, 41, 47, 50, and 58, each of which are similarly interpreted to
require a single enclosure which encloses the digital processing system
including a microprocessor and a display. The rejection of dependent claims
2-6, 8-9, 11-13, 15, 16, 18, 20-24, 26, and 33-40, 42-46, 48-49, and 51-57
are also reversed based on their dependence from the aforementioned
independent claims.

CONCLUSION
Based on the findings of facts and analysis above, we find that
Appellants have shown the Examiner erred in finding that Glaser teaches or
suggests the limitations of retrieving a data value representing an appearance
of an enclosure enclosing said digital processing system including a
microprocessor, wherein said data value includes a value representing at
least one of a machine type and a color of said enclosure of said digital
processing system, and determining an appearance of a display of said
digital processing system based upon said appearance of said enclosure.

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DECISION
The Examiner’s decision rejecting claims 1-6, 8-13, 15, 16, 18-24, 26,
and 32-58 is reversed.

REVERSED

pgc

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