Ex Parte Muir

Patent Trial and Appeal Board

Nov 22, 2013

11831660 (P.T.A.B. Nov. 22, 2013)

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.
11/831,660 07/31/2007 David J. Muir CA920070034US1 (061) 4778
46320 7590 11/25/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
LEGGETT, ANDREA C.
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
11/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID J. MUIR
____________

Appeal 2011-012165
Application 11/831,660
Technology Center 2100
____________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
the placement of a help message in a graphical user interface. The Examiner
has rejected the claims for anticipation and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellant identifies International Business Machines Corporation as the
Real Party in Interest (App. Br. 2).
Appeal 2011-012165
Application 11/831,660

2
STATEMENT OF THE CASE
Claims 1-20 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claims 1 and 10 are illustrative of the claims on appeal,
and read as follows (emphasis added):
1. A method for pointing help in a graphical user interface
(GUI), the method comprising:
receiving a help event in association with a GUI control
in the GUI rendered for an application executing in a computer
with at least one processor and memory;
generating a help message for placement in a portion of
the GUI statically configured to present different help
messages; and,
visually coupling the GUI control with the help message
through pointing help visually rendered in the GUI separately
from the help message and the GUI control and comprising an
image in the form of an arrow.

10. A computer data processing system configured for
pointing help in a supported graphical user interface (GUI), the
system comprising:
an application GUI provided by an application executing
in a host computing platform with at least one processor and
memory;
a plurality of GUI controls; and,
pointing help visually rendered in the GUI in a separate
window superimposed over the application GUI visually
coupling with an image in the form of an arrow, a selected one
of the GUI controls to one of a statically positioned help
message in the application GUI and another of the GUI
controls impacted by a state change in the selected one of the
GUI controls.

Appeal 2011-012165
Application 11/831,660

3
The Examiner has rejected the claims as follows:
I. claims 10 and 11 under 35 U.S.C. § 102(b) as being anticipated
by Grillo2;
II. claims 1, 2, 5, 8, 9, 12, 13, 16, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Grillo in view of Rossi3;
III. claims 3, 4, 14, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Grillo in view of Rossi and further in view of Cohen4;
IV. claims 6, 7, 17, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Grillo in view of Rossi and further in view of Cohen and
further in view of Chailleux.5

I. Anticipation by Grillo
The Examiner takes the position that Grillo disclosed all the elements
of claim 10, including “a selected one of the GUI controls to one of a
statically positioned help message.” (Ans. 5.) The Examiner finds that “the
help balloon images are statically displayed meaning that each help balloon
is predefined to be selected and displayed in relation to the particular GUI
function or control it corresponds to.” (Id. at 19-20.)
Appellant contends that in Grillo
[T]he help balloons are strategically positioned to describe the
functionality of every (or most) of the active elements (see
abstract). This means that the help balloons for different
elements are located differently . . . [while in the] claimed
invention, all help messages (irrelevant for which element) are
displayed within the fixedly located help message bar 130A.

2 Pete Grillo et al., US 6,717,589 B1, issued Apr. 6, 2004.
3 Robert A. Rossi, Jr., et al., US 7,346,846 B2, issued Mar. 18, 2008.
4 Gary B. Cohen et al., US 2006/0080607 A1, published Apr. 13, 2006.
5 Alexandre Chailleux, US 2007/0266324 A1, published Nov. 15, 2007.
Appeal 2011-012165
Application 11/831,660

4
(Reply Br. 3; see also App. Br. 8.) According to Appellant “in the present
invention, all help messages are shown to be in the same location regardless
of the location of the GUI control for which a help message is generated”
(App. Br. 8).
Claim 10 recites “the application GUI visually coupling with an image
in the form of an arrow, a selected one of the GUI controls to one of a
statically positioned help message in the application GUI.” The claim
provides that the help message is “one of a statically positioned help
message” implying that more than one message can be fixed or stationary in
the GUI. “[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)). “Moreover, limitations
are not to be read into the claims from the specification.” In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989)). Our reviewing court has repeatedly warned against
confining the claims to specific embodiments described in the specification.
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
Accordingly, we interpret the claim to encompass more than one fixedly
positioned help message.
We are not persuaded by Appellant’s argument. Grillo disclosed an
on-screen help mode as shown in Fig. 4B, depicted below:
App
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12165
/831,660
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Appeal 2011-012165
Application 11/831,660

6
According to the Appellant “the pointing arrow of a help balloon is
part of the help balloon and thus is not separate from the help message and
the GUI controls as in the present invention” (App. Br. 8). We are not
persuaded by Appellant’s contention that claim 10 requires the help balloon
to be separate from the arrow. Specifically, the claim language recites
“pointing help visually rendered in the GUI in a separate window
superimposed over the application GUI visually coupling with an image in
the form of an arrow,” we find nothing in this claim language that would
indicate that the arrow has to be separate from the help message. Grillo
disclosed that “[b]y providing a balloon to described [sic] the functionality
of every (or most) of the active elements, a user is provided with a quick
framework or ‘skeleton’ view of the meaning and operation of the various
elements in the display” (Grillo, col. 3, ll. 16-20). In Fig. 4B of Grillo,
depicted above, the balloons have two functions in one they provide
information while at the same time functioning as an arrow to direct the
information to a particular feature of the GUI. We find that the Appellant
has not established that Grillo does not anticipate the claimed invention.
Accordingly, we affirm the Examiner’s anticipation rejection of claim
10. Appellant does not raise additional arguments for claim 11 (see App. Br.
6-9), therefore, this claim falls with claim 10. See 37 C.F.R.
§ 41.37(c)(1)(ii).

II.-IV. Obviousness over Grillo in view of Rossi
There are three obviousness rejections (II.-IV.), all are premised, in
whole or in part, on the teachings of Grillo and Rossi in combination
Appeal 2011-012165
Application 11/831,660

7
together, or in combination with Cohen or Chailleux, so we will discuss
them together.
The Examiner takes the position that Grillo disclosed most of the
claimed elements but recognizes that Grillo “does not teach: [an arrow
rendered] separately from the help message and the GUI control.” (Ans. 7.)
The Examiner relies on Rossi for the teaching of “visually coupling the GUI
control with the help message through pointing help visually rendered in the
GUI separately from the help message and the GUI control.” (Id.)
(emphasis omitted.)
Appellant contends that Grillo “does not disclose statically positioning
the help message and visually rendering the pointing help in the GUI
separately from the help message and the GUI control” (App. Br. 10). The
combination with Rossi does not remedy this deficiency because in Rossi the
“help message can be displayed anywhere on the see-through panel, not at a
fixed location.” (Id. at 11.)
Claim 1 requires “generating a help message for placement in a
portion of the GUI statically configured to present different help messages,”
this limitation indicates that there is only one place for presenting multiple
help messages. During prosecution, claims are given the broadest
reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We interpret the claim to
require a fixed location in the GUI for displaying different help messages.
Based on the facts and evidence presented, we find that the Appellant
has the better position. Rossi’s Fig 2 is reproduced below:
App
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12165
/831,660
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Appeal 2011-012165
Application 11/831,660

9
Appellant contends that “the help balloons [of Grillo] for different
elements are located differently . . . . In comparison, in the Appellant’s
claimed invention, all help messages (irrelevant for which element) are
displayed within the fixedly located help message bar 130A.” (Reply Br. 3.)
We agree with the Appellant that the Examiner has not explained how the
combination of Grillo and Rossi provides for the display of different help
messages in a single fixed or stationary display. The Examiner is relying on
Grillo for the stationary (static) placement of the help messages (Ans. 20).
However, as discussed above (I.) each balloon help message of Grillo is
located in a different portion of the GUI. Thus, Grillo does not teach a
single location for the display of all help messages. The Examiner has not
pointed to any evidence in Rossi that would indicate that the help messages
are displayed in stationary or static location in the GUI. Because the
Examiner has not adequately explained why one of ordinary skill would
have been motivated to use a stationary help box for the display of different
help messages we agree with the Appellant’s position that the Examiner has
not met their burden of presenting a prima facie case. See In re Rijckaert, 9
F.3d 1531, 1532 (Fed. Cir. 1993). We agree with Appellant’s position that
Rossi does not overcome the deficiencies of Grillo by placing the help
message into a fixed position on the GUI.
Accordingly, we reverse the rejection of the claims that rely on the
combination of Grillo and Rossi. The Examiner also failed to establish that
Cohen alone or in combination with Chailleux makes up for the deficiency
in the combination of Grillo and Rossi. Therefore, we reverse the rejections
based on the combination of Grillo, Rossi, and Cohen alone or in
combination with Chailleux.
Appeal 2011-012165
Application 11/831,660

10

SUMMARY
We affirm the rejection of claims 10 and 11 under 35 U.S.C. § 102(b)
as being anticipated by Grillo.
We reverse the rejection of claims 1, 2, 5, 8-9, 12, 13, 16, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Grillo in view of Rossi.
We reverse the rejection of claims 3, 4, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Grillo in view of Rossi and further in
view of Cohen;
We reverse the rejection of claims 6, 7, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Grillo in view of Rossi and further in
view of Cohen and further in view of Chailleux.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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