Ex Parte Moscatelli et al

Patent Trial and Appeal Board

Apr 19, 2017

11948806 (P.T.A.B. Apr. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/948,806 11/30/2007 Adriana Moscatelli P26030US1/63266-7260US 3448
61725 7590 04/21/2017
Morgan T ewis; Rr Rnrkins T T P / AT
EXAMINER
1400 Page Mill Road
Palo Alto, CA 94304-1124
ORR, HENRY W
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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):
padocketingdepartment@morganlewis.com
vskliba @ morganlewis. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIANA MOSCATELLI and
JOHN SANGIOVANNI
Appeal 2015-001090
Application 11/948,806
Technology Center 2100
Before JAMES B. ARPIN, DANIEL N. FISHMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of a rejection of claims 1,
2, 4—16, and 19—21.1 Claims 3, 17, and 18 were previously cancelled. App.
Br. 2. We heard Oral Argument on March 14, 2017, and a transcript of that
hearing will be added to the record in due course. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
May 9, 2014); Appellants’ Reply Brief (“Reply Br.,” filed October 28,
2014); the Final Office Action (“Final Act.,” mailed September 11, 2013);
the Examiner’s Answer (“Ans.,” mailed August 28, 2014); and the originally
filed Specification (“Spec.,” filed November 30, 2007).
Appeal 2015-001090
Application 11/948,806
THE INVENTION
The invention relates to a graphical user interface (“GUI”) for
displaying content tiles and provides techniques to add tiles to the displayed
GUI. Spec. Abstract. Responsive to a user input, the GUI displays available
tiles and selects one of the available tiles for insertion on the displayed GUI
at a designated location. Id. The selected tile is inserted at the designated
location on the GUI, and the tile previously at the designated location is
moved to a delete directory. Id.
Claim 1, reproduced below, is illustrative with disputed limitations in
italics:
1. A method for adding tiles to a graphical user interface
display comprising:
displaying with an application having a graphical user
interface (GUI) a plurality of content tiles in a grid format, each
tile corresponding to content stored on a plurality of different
web sites;
selecting a predefined key on an input device to indicate
and to display available tiles not included within the grid of
content tiles;
in response to selection of the predefined key, displaying
the available tiles;
selecting one of the displayed available tiles;
designating a location on the display of the plurality of
content tiles where to place the selected one of the displayed
available tiles;
inserting the selected tile into the display with the
plurality of tiles at the designated location; and
upon the selected tile being placed at the designated
location, deleting a tile previously at the designation location on
the display and placing the deleted tile into a delete directory.
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Appeal 2015-001090
Application 11/948,806
THE REJECTIONS
Claims 1, 2, 4—16, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Santoro et al. (US 2003/0020671 Al; pub. Jan. 30,
2003) (“Santoro”), Flynt et al. (US 2007/0082707 Al; pub. Apr. 12, 2007)
(“Flynt”), and Davis et al. (US 2002/0083064 Al; pub. June 27, 2002)
(“Davis”). Final Act 2—7.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Santoro, Flynt, and Hedges (US 2009/0183083 Al; pub. July 16, 2009).
Final Act. 7—9.
ISSUE
Appellants’ arguments present the dispositive issue: Has the
Examiner erred by finding the proposed combinations disclose the above-
identified disputed limitations of independent claim 1?
Appellants raise additional issues in the Briefs. We are persuaded of
Examiner error with regard to the above-identified issue discussed infra,
which is dispositive as to the rejections of all claims. Therefore, we do not
reach the additional issues.
ANALYSIS
Claims 1, 2, 4^16, 19, and 20
The Examiner finds Flynt, in the proposed combinations, discloses a
tile manager that allows a user to add or delete available tiles to one or more
user profiles in response to user input and the user may then select a profile
for display of the tiles therein. Final Act. 3^4 (citing Flynt || 39-41, 48).
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Appeal 2015-001090
Application 11/948,806
Thus, the Examiner finds Santoro in combination with Flynt renders obvious
the above-identified disputed limitations. Id.
Appellants acknowledge that paragraphs 39-41 of Flynt disclose a tile
manager for constructing one or more user profiles, each of which comprises
a number of tiles selected by the user for the corresponding profile. App. Br.
7. However, Appellants argue selecting a new profile in Flynt switches all
tiles displayed on a GUI based on the selected profile, i.e., replacing all
presently displayed tiles (corresponding to a first profile) with a new set of
tiles (corresponding to the second profile). Id. Thus, Appellants contend the
combination “does not teach a process in which a selection of an available
tile and a designation of a location (on the display of the plurality of tiles) is
followed by an insertion of the selected tile into the display with the plurality
of tiles.” Id.
The Examiner explains that two profiles in Flynt could differ by only
one tile, and, thus, replacement of one such profile with the other is broadly
interpreted by the Examiner as inserting a new tile with the other tiles
common to the two profiles (e.g., inserting the one different tile into the set
of tiles that make up the presently displayed profile). Ans. 11. Based on
this broad interpretation, the Examiner maps the above-identified disputed
limitations of claim 1 to the merging of tiles when one profile’s set of tiles is
replaced on the GUI display by the tiles of another profile where the profiles
have all but one tile in common. Id. at 11—12.
Appellants argue, and we agree, that “[t]he ‘Examiner’s position’
presents a scenario that simply has not been described in the cited section of
Flynt” and particularly points out that, in Flynt, “there is no description that
the profiles have tiles in common.” Reply Br. 4. The Examiner’s rejection
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Appeal 2015-001090
Application 11/948,806
and explanation in the Answer appear to be based on speculation regarding
what could be done in Flynt, but fails to identify any teaching in, or
suggestion based on, the disclosures of Flynt. As noted by Appellants:
That is insufficient, as obviousness cannot be sustained based on
mere assumptions. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (“[Rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.”) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Id. “The Patent Office has the initial duty of supplying the factual basis for
its rejection. It may not. . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). We find the Examiner’s
assertions regarding what could be done in Flynt appear to be based on
speculation and, thus, do not provide the needed rational underpinning for an
obviousness rejection.
For the above reason, we are persuaded that the Examiner erred, and,
thus, we do not sustain the Examiner’s rejection of independent claim 1.
Independent claims 10 and 15 recite similar functions and were rejected for
essentially the same reasons as claim 1 (Final Act. 6—7), and Appellants
present essentially the same arguments as for claim 1 (App. Br. 8—11).
Thus, for the same reasons relied on with respect to claim 1, we are
persuaded the Examiner erred in rejecting independent claims 10 and 15 and
all dependent claims (claims 2, 4—9, 11—14, 16, 19, and 20), and we do not
sustain the rejection thereof.
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Appeal 2015-001090
Application 11/948,806
Claim 21
Independent claim 21 is similar to independent claim 1. The
Examiner relies on Santoro and Flynt for the same disclosures as in rejecting
claim 1—replacing Davis with Hedges in the proposed combination for
disclosure of the recited use of a “delete directory.” Final Act. 7—9; Ans.
20—24. Appellants present essentially the same arguments as for claim 1
noting neither Hedges nor Davis is relied upon to cure the above-identified
deficiency of Santoro and Flynt. App. Br. 13—14; Reply Br. 7—9. For the
same reasons relied upon with respect to claim 1, we are persuaded the
Examiner erred, and we do not sustain the rejection of claim 21.
DECISION
For the above reasons, we reverse the Examiner’s decision rejecting
claims 1, 2, 4—16, and 19—21.
REVERSED
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