Ex Parte Klein et al

Board of Patent Appeals and Interferences

Jan 11, 2012

10675208 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UDO KLEIN, UWE KLINGER, and MARTIN SCHOLZ
____________

Appeal 2009-005208
Application 10/675,208
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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Invention
The invention on appeal is directed to variable size user input areas in
computer user interfaces. (Spec. 1).

Illustrative Claim 1
A method of displaying a user input area, the method
comprising:

displaying a user input area within a computer user
interface, wherein the user input area corresponds to a data field
having a specified number of characters and has a size that
visually indicates to a user that the user input area will
accommodate therein visual representations of the specified
number of characters of the data field;

upon receipt of a user input specifying a character to be
included in the data field, displaying within the user input area
a visual representation of the input character in a proportional
font;

adjusting the size of the user input area based on a size of
characters included in the data field and the specified number of
characters of the data field, wherein the size of characters
included in the data field includes a size of the input character;
and

displaying the adjusted user input area having a new size
that visually indicates to the user that the user input area will
accommodate therein visual representations of a remaining
number of the specified number of characters of the data field.

(Emphasis added regarding disputed limitations).

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Rejection
Claims 1-20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Inaki (US Pat. 5,230,062), Glaser (US
Pat. 5,450,538) and Wallack (US Pat. 6,055,550).

Claim Grouping
Appellants argue claims 1-20 as a group. (Supp. App. Br. 3-7). We
select representative claim 1 to decide the appeal for this group. See 37
C.F.R. § 41.37(c)(1)(vii).

Principles of Law
“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).

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Combinability of the references
ISSUE (1)
Under §103, did the Examiner err in combining the Inaki,
Glaser, and Wallack references?

ANALYSIS
We begin our analysis by considering the threshold issue of whether
the Examiner erred in combining the cited references. We observe that
Appellants focus on the secondary Glaser and Wallack references in
contending the references have been improperly combined. (Supp. App. Br.
5-7). Appellants summarize their combinability argument in the Reply
Brief:
Applicants submit that the alleged motivation to combine the
references is merely hindsight from reviewing the present
claims. First, implementing Wallack's automatic resizing into
Glaser would completely eradicate the user's freedom to adjust
the field size. Second, modifying Glaser by Wallack's automatic
resizing would defeat a feature explicitly touted in Inaki,
namely that the user can define the size of the input field using
the cursor.
(Reply Br. 2; see also Supp. App. Br. 5-7).

We disagree. Though we are fully cognizant of the hindsight bias that
often plagues determinations of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 36 (1966), we are also mindful 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.” KSR, 550 U.S. at 416.
Here, we observe that the references relied on by the Examiner are
directed to familiar elements (e.g., well known user interface elements such
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as resizable user data entry areas and associated data fields, and input
characters having associated fonts) that we find would have been readily
combinable by an artisan according to known methods.
As pointed out by the Examiner (Ans. 13), we observe that Glaser
teaches dynamically resizing a data entry field 141 (Figs. 2 and 4) by using a
mouse that is placed over a “grabpoint” icon 147. (Col. 5, ll. 1-30).
Although Wallack teaches an auto size function, we observe that Wallack
contemplates embodiments where “the auto sizing function may be
[manually] selected through use of a button displayed anywhere on the
output display” and “[a] cursor control device, such as a mouse, may also be
used to invoke the auto sizing function . . . [or] “through any well known
means . . . .” (Col. 5, ll. 52-62). As pointed out by Appellants, Inaki also
teaches that “the user can define the size of the input field using the cursor.”
(Supp. App. Br. 6, ¶4). Given this evidence, we see no reason why the
respective manual and the automatic resizing features could not have been
used by an artisan in a complementary fashion.
To the extent that Appellants may be advancing a “teaching away”
argument (because Inaki and Glaser teach some form of manual resizing
versus the automatic resizing of Wallack), our reviewing court guides that
“the prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed …” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis
added.)
This reasoning is applicable here. We further observe that Appellants
have not rebutted the Examiner’s legal conclusion of obviousness by
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showing that the claimed combination of familiar elements produces any
new function. Appellants have not provided any factual evidence of
secondary considerations, such as unexpected or unpredictable results,
commercial success, or long felt but unmet need.
Therefore, we find Appellants’ arguments unavailing regarding the
combinability of the Inaki, Glaser, and Wallack references for essentially the
same reasons proffered by the Examiner in the Answer (pp. 5, 13-14), and as
further discussed above. Accordingly, on this record, Appellants arguments
have not persuaded us that the Examiner erred by improperly combining the
cited references under § 103.

Representative Claim 1 (argued limitations)
ISSUE (2)
Under §103, did the Examiner err in finding that the
combination of Inaki, Glaser, and Wallack would have taught
or suggested:
[L1] a proportional font; [and]

[L2] displaying the adjusted user input area having a
new size that visually indicates to the user that the user input
area will accommodate therein visual representations of a
remaining number of the specified number of characters of the
data field,

within the meaning of representative claim 1?

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Limitation L1 (a proportional font)
Regarding the claimed proportional font limitation (L1), Appellants
present the following arguments:

Applicants note that Inaki does not appear to use
proportional fonts. Rather, it appears Inaki contemplates
characters of standardized widths that can be scaled to either
full-size (where the example field holds 22 characters) or half-
size (where the field holds 44 characters).
The Examiner cited to Inaki 17:53 et seq. (describing
FIG. 24G) as allegedly teaching use of a proportional font.
Applicants respectfully disagree. Inaki's FIGS. 24A et seq.
show another example where the user is defining the sizes of
input fields with the cursor. Thus, when Inalu states "the state
of field definition is displayed" as cited by the Examiner, this
apparently means that the system has filled in dummy
characters up to the maximum field size (see FIG. 24G).
(Supp. App. Br. 4; see also Reply Br. 2).

Although the portion of Inaki pointed to by the Examiner (col. 17, l.
53; Ans. 3, last line) does not expressly teach the use of a proportional font,
we find Inaki’s express reference to “character size” (col. 17, 54) is at least
suggestive of such fonts. “A prima facie case of obviousness is established
when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art.’” In re
Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051 (CCPA 1976)).
Moreover, “‘[e]very patent application and reference relies to some
extent upon knowledge of persons skilled in the art to complement that
[which is] disclosed. . . .’” In re Bode, 550 F.2d 656, 660 (CCPA 1977)
(quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)) (underline added).
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Those persons “must be presumed to know something” about the art “apart
from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962).
Here, we find the use of proportional fonts (vs. non proportional
fonts) would have been well within the knowledge of persons skilled in the
art at the time of the invention and at least obvious to try. Our reviewing
courts guide that a combination may be obvious when there was a “finite
number of identified” solutions for solving a problem. See Bayer Schering
Pharma AG v. Barr Laboratories, Inc., 575 F.3d 1341, 1347 (Fed. Cir.
2009) (discussing KSR, 550 U.S. at 421). This reasoning is applicable here.
For these reasons, we are not persuaded by Appellants’ arguments that
representative claim 1 is patentable over the cited combination of references
because the scope of the claim encompasses the use of a proportional font.

Limitation L2
[L2] displaying the adjusted user input area having a
new size that visually indicates to the user that the user input
area will accommodate therein visual representations of a
remaining number of the specified number of characters of the
data field.
(Claim 1).
Regarding the displaying the adjusted user input area limitation (L2),
Appellants present the following contentions:
The Examiner acknowledged that Inaki does not teach
"visual indication of the change in size" or "adjusting the size of
the user input area . . . " . . . [I]t appears that the Examiner's
claim interpretation may not give appropriate (or perhaps any)
weight to the requirement in the claims that the new size of the
user input area visually indicates that the area will
accommodate the "remaining number of the specified number
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of characters". Nevertheless, Applicants agree that Inaki fails
to disclose an input field that is adjusted to a new size after user
input, wherein the new size visually indicates that the area will
accommodate the remaining number of characters.
The Examiner then cited to Glaser and Wallack to
provide the subject matter missing from Inaki.
(Supp. App. Br. 4-5).

Appellants address the teachings of Glaser, as follows:

Glaser's data entry field can apparently be resized
independently of the maximum number of characters of the data
field, and independently of any entry made in the field.
Therefore, Glaser also does not perform the visual indication
required by the present claims.
(Supp. App. Br. 5).

Appellants then address the teachings of Wallack:

Wallack, finally, discloses automatic sizing of fields for
displaying computer forms. Wallack appears to teach that based
on the size of a sample record a system can decide the column
width to use for displaying a number of records. (Wallack 3:
11-4:47.) In short, after a user selects a column to resize, the
system retrieves a sample record and reads the size of the entry
for the selected column. (Wallack 4:48-50.) The system then
resizes the column to fit the largest amount of data found in the
sample record(s). Accordingly, the size of the column cell is
chosen so that an entry that has already been made will fit
without obstruction. Wallack acknowledges that when the
column size is set based on a sample, any record that contains
more data in the field than the sample may require scrolling.
(Wallack 4:61-63.) . . . There is [] no disclosure of taking into
account a maximum number of characters that the field will
accept into the resizing. As such, the fields taught by Wallack
fail to visually indicate that the resized field will accommodate
a remaining number of characters.
(Supp. App. Br. 5-6).

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In the “Response to Arguments,” the Examiner disagrees:
The combination of the Glaser and Wallack teaches this
limitation because Glaser teaches a user input field that is
adjustable (see Galser; col. 5, lines 1-30) and Wallack teaches a
data [field] that is adjustable based on the size of characters and
the specified number of characters. (see Wallack; col. 5, lines
40-65; figure 2, steps 200 and 230; the auto size option)
Therefore[,] the combination of Glaser and Wallack teaches a
user input adjusted to a new size based on a size of characters
included in the data field and the specified number of character
the data [field].
(Ans. 13).

Appellants essentially restate their argument in the Reply Brief:
Not only does Inaki fail to disclose the visual indication
required by the present claims, but Glaser and Wallack also
does not disclose or suggest this subject matter. Glaser's data
entry field can apparently be resized independently of the
maximum number of characters of the data field, and
independently of any entry made in the field. Wallack teaches
that when the column size is set based on a sample, any record
that contains more data in the field than the sample may require
scrolling. As such, the visual indication of the present claims is
simply not taught.
(Reply Br. 2).

Based upon our review of the record, we find the weight of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness. We note that the Examiner’s rejection is
based on the combined teachings and suggestions of the references.
As pointed out by the Examiner in the rejection of claim 1 (Ans. 5),
Glaser teaches:
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Advantageously, the system permits the customization of data
input and output by enabling the user to exercise complete
control over the size of the data field.
(Col. 2, ll. 22-25).

As also pointed out by the Examiner in the rejection of claim 1:
Wallack teaches adjusting the size of the user input area
based on the size of characters included in the data field and the
specified number of characters of the data field (i.e. steps 200
and 230 in FIG. 2 et seq. of Wallack). It would have been
obvious to an artisan at the time of the invention to combine
adjusting the size of user input as taught by Wallack into the
user input area as taught by Inaki and modified by Glaser.
Said artisan would have been motivated to combine
Wallack into Inaki in order to auto size the field according to
textual data received in the fields in a computer-generated form
(i.e. col. 2 line 23 et seq. of Wallack).
(Ans. 5).

Regarding the claimed indication of a specified number of
characters in a data field, we observe that in the rejection of claim 1
the Examiner also points to Inaki at col. 10, l. 31, which describes Fig.
11C as showing an input area with a capacity of 44 characters. We
observe that adjacent Fig. 11D depicts a field for “COMPANY
NAME” with the remaining available character slots designated by a
lower case “x.” (Ans. 3).
The Supreme Court guides that the conclusion of obviousness can be
based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art, and an obviousness “analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Here, on this record, we agree with the Examiner that the combined
teachings and suggestions of the Inaki, Glaser, and Wallack references
would have at least suggested the disputed visual indication to the user that
the user input area (entry field) will accommodate visual representations of a
remaining number of the specified number of characters of the data field
(i.e., allocated memory) that corresponds to the displayed user input area.
See Bell, 991 F.2d at 783. Moreover, we are of the view that Appellants’
representative claim 1 encompasses a predictable use of prior art elements
according to their established functions. To be nonobvious, an improvement
must be “more than the predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
For essentially the same reasons set forth by the Examiner, and for the
reasons discussed above, we are not persuaded by Appellants’ arguments
that the Examiner erred in reaching the legal conclusion of obviousness.
Accordingly, based on Issues (1) and (2), we sustain the Examiner’s
obviousness rejection of representative claim 1. Claims 2-20 (not argued
separately) fall therewith. See 37 C.F.R. § 41.37(c)(vii).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-20 under § 103.

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) (2011).

ORDER
AFFIRMED

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