Ex Parte Knight et al

Patent Trial and Appeal Board

Jul 29, 2016

11585746 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111585,746 10/23/2006 Jerry Knight
111003 7590 08/02/2016
Adobe I Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AD01.P709 8151
EXAMINER
THERIAULT, STEVENB
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
docketing@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY KNIGHT and YE-JEONG KIM
Appeal2015-001847
Application 11/585,746
Technology Center 2100
Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24. 1 We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 In the Appeal Brief, Appellants identify Adobe Systems Incorporated as
the real party in interest. (App. Br. 1.)
Appeal2015-001847
Application 11/585,746
THE INVENTION
Appellants' disclosed and claimed inventions are directed to
displaying a collection of thumbnail images, and determining whether the
cursor is positioned within a region associated with one of the thumbnail
images, resulting in displaying an enlarged version of the thumbnail image.
(Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
displaying on a display device a collection of thumbnail
images in a graphical user interface, each thumbnail image
representing a distinct selectable product or service;
receiving user input moving a cursor displayed on the
display device;
in response to receiving the user input, making a
determination that the cursor is positioned within a region
associated with a first one of the thumbnail images, and while the
cursor is positioned within the region, displaying an enlarged
version of the first thumbnail image, the enlarged version having
a boundary and including an overlay confined within the
boundary of the enlarged version, the overlay
partially obscuring at least one-third of, but less
than the entire enlarged version of, the first thumbnail
image, and
displaying (i) data associated with the product or
service represented by the first thumbnail image and (ii) a
pull-down menu for performing at least one action on the
product or service represented by the first thumbnail
image, wherein the overlay is displayed without further
input beyond the user input resulting in the determination
that the cursor is positioned within the region associated
with the first one of the thumbnail images; and
removing the enlarged version and the overlay responsive
to when the cursor is no longer positioned in the region.
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Application 11/585,746
REJECTION
The Examiner rejected claims 1-24 under 35 U.S.C. § 103(a) as being
unpatentable over Horowitz et al. (US 2008/0111822 Al, pub. May 15,
2008), Matti et al. (US 2005/0216856 Al, pub. Sep. 29, 2005), and Green et
al. (US 7,975,019 Bl, issued Jul. 5, 2011). (Final Act. 3-15.)
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issues: 2
Issue One: Whether the combination of Horowitz, Matti, and Green
teaches or suggests the independent claim 1 limitations, "including an
overlay confined within the boundary of the enlarged version," and "wherein
the overlay is displayed without further input beyond the user input resulting
in the determination that the cursor is positioned within the region associated
with the first one of the thumbnail images," and similar limitations recited in
independent claims 8 and 15. (App. Br. 6-9.)
Issue Two: Whether the combination of Horowitz, Matti, and Green
teaches or suggests the claim 2 limitation, "at least one action accessible via
the pull-down menu includes checking out the electronic book," and similar
limitations recited in claims 9 and 19. (App. Br. 10-11.)
2 Rather than reiterate the arguments of Appellants and positions of the
Examiner, we refer to the Appeal Brief (filed Jul. 14, 2014); the Reply Brief
(filed Nov. 11, 2014); the Final Office Action (mailed Feb. 18, 2014); and
the Examiner's Answer (mailed Sep. 17, 2014) for the respective details.
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Application 11/585,746
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner errs. We disagree with Appellants' arguments,
and we adopt as our own ( 1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 3-15)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 14--25).
We concur with the applicable conclusions reached by the Examiner and
emphasize the following.
Issue One
In rejecting independent claim 1, the Examiner relies on the disclosure
in Horowitz of presenting multiple thumbnail video images on a computer
display, with the capability of presenting an enlarged version of a thumbnail,
resulting from a user clicking, hovering over, or otherwise selecting the
thumbnail. (Final Act. 3---6; Horowitz Abstract, Figs. 8A, 8B, 9, lOA, i-fi-132,
33, 86, 97-101, 103.) In addition, as the Examiner notes, Horowitz
discloses that the enlarged version "can further be displayed associated with
other control user interfaces such as buttons for volume control, play, pause
and stop, or any other video and/or audio manipulation buttons or user
interfaces." (Ans. 22; Horowitz i-f 101.)
The Examiner further relies on the disclosure in Matti of displaying
web page content with an overlay component covering a portion of the web
page. (Final Act. 6-7; Matti Abstract, Figs. 3, 6, i-fi-120, 22, 25.) The
Examiner also relies on the disclosure in Green of a hover control that
provides an overlay with drop down menus that display information about a
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Appeal2015-001847
Application 11/585,746
product or service. (Final Act. 7-8; Green Figs. 1, 6, col. 3, 11. 48-50, col. 4,
11. 54--59.)
Appellants argue Horowitz does not teach or suggest an overlay
confined within the boundary of the enlarged version of the thumbnail
image, nor does Horowitz teach or suggest the overlay is displayed along
with the enlarged thumbnail without further user input, as required by the
claims. (App. Br. 6-9.) In particular, Appellants argue the Examiner errs in
relying on the user interface menu illustrated in Figure 1 OA of Horowitz,
which is not confined within the boundaries of an enlarged thumbnail, and
which requires additional and separate user interaction to be displayed, over
and above that which is required to display the enlarged thumbnail. (Id.)
Although we agree with Appellants' characterization of Figure 1 OA of
Horowitz, Appellants' arguments do not take into account the entirety of the
Examiner's reliance on the disclosure of Horowitz; in addition, Appellants'
arguments are unpersuasive as they argue the Horowitz reference
individually, whereas the Examiner relies on the combination of Horowitz,
Matti, and Green as teaching or suggesting the claimed subject matter. See
In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091
(Fed. Cir. 1986). The Examiner relies, as discussed above, on the disclosure
in Horowitz of displaying an overlay in the form of buttons and other user
interfaces associated with the enlarged thumbnail. (Ans. 22;
Horowitz i-f 101.) Horowitz further discloses tool bars and text, such as titles,
overlaid on thumbnails, which disclosure at least teaches or suggests a like
overlay on an enlarged thumbnail. (Ans. 22; Horowitz Figs. 8A, 8B, i-fi-197,
98.) Moreover, we see no error in the Examiner's further reliance on the
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Appeal2015-001847
Application 11/585,746
disclosures of Matti and Green, to teach or suggest, in combination with
Horowitz, the claim limitations at issue. (Final Act. 6-8.)
In sum, we are not persuaded the Examiner errs in finding the
combination of Horowitz, Matti, and Green teaches or suggests the claimed
subject matter. (Ans. 14--24.) Appellants do not point to any evidence of
record that the resulting arrangements were "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418-19 (2007)). The Examiner's findings are reasonable because
the skilled artisan would "be able to fit the teachings of multiple patents
together like pieces of a puzzle" since the skilled artisan is "a person of
ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21. We are
persuaded the claimed subject matter exemplifies the principle, "[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.
Issue Two
Appellants argue the Examiner errs in relying on Green as teaching or
suggesting the additional limitations of claim 2 directed specifically to
electronic books. (App. Br. 10-11.) We are not persuaded the Examiner errs
in finding the disclosure in Green of interactive display elements such as
drop down menus relating to purchase, sale, or rental of various products,
including DVDs, at least teaches or suggests the electronic book limitations
of the claims. (Final Act. 9; Ans. 24--25; Green col. 5, 11. 1---6.)
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Application 11/585,746
CONCLUSIONS
For the reasons discussed above, we sustain the obviousness rejection
of claims 1, 2, 8, 9, 15, and 19 over Horowitz, Matti, and Green. We also
sustain the obviousness rejections of claims 3-7, 10-14, 16-18, and 20-24
over Horowitz, Matti, and Green, which rejections are not argued separately
with particularity. 3 (App. Br. 9.)
DECISION
We affirm the Examiner's rejection of claims 1-24.
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
3 Claims 8-14 are directed to "A computer program product, encoded on a
tangible program carrier .... " In the event of further prosecution, we leave
to the Examiner to decide whether to reject claims 8-14 as being directed to
nonstatutory subject matter under 35 U.S.C. § 101. Appellants'
Specification does not define computer readable storage medium to exclude
transitory media. Consequently, the claimed medium encompasses
transitory media, which is not patent eligible. See Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential).
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