Ex Parte Niittynen et al

Board of Patent Appeals and Interferences

Apr 21, 2010

11042220 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANU NIITTYNEN and ARI TOLONEN
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Appeal 2009-0086111
Application 11/042,220
Technology Center 2100
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Decided: April 21, 2010
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
DEBRA K. STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed January 25, 2005. (Br. 1.) The real party in interest is Nokia
Corporation of Espoo Finland. An oral hearing was held in this appeal on
April 14, 2010.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 24. (Br. 2.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
As depicted in Figures 1 and 3 of Appellants’ Drawings, Appellants
invented a method for allowing a user to modify the properties (e.g. shape,
size, color) of a three dimensional (3D) object (100) displayed in an
electronic device while the device is in idle mode. (Spec. para. [0005],
[0017].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of arranging a view on an electronic
device, comprising:

presenting a three-dimensional object on a display of the
electronic device while the electronic device is in an idle mode,
the three-dimensional object including a view being viewable to
a user, the three-dimensional object being modifiable by the
user while the electronic device remains in the idle mode.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Goh US 5,678,015 Oct. 14, 1997
Kirbas US 6,449,498 B1 Sep. 10, 2002
Noesgaard US 7,113,809 B2 Sep. 26, 2006
Smith US 7,134,095 B1 Nov. 07, 2006
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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 3, 4, 6 through 9, 11, 12, 14 through 17 and 19
through 24 stand rejected as being unpatentable under 35 U.S.C. § 103(a)
over the combination of Goh and Noesgaard.
2. Claims 2, 10 and 18 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over the combination of Goh, Noesgaard, and Smith.
3. Claims 5 and 13 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over the combination of Goh, Noesgaard, and Kirbas.

Appellants’ Contentions
Appellants contend that Goh and Noesgaard are not properly
combined, and that the proffered combination does not teach or suggest a
user-modifiable 3D object within a device in an idle mode, as recited in
independent claim 1. (Br. 8-13.) According to Appellants, Goh discloses
modifying the contents that appear in the 3D object, as opposed to
modifying the object itself. (Id. at 8-9.) Further, Appellants argue that
Noesgaard does not cure the noted deficiencies of Goh since it does not
teach modifying the screen saver when the computer is in an idle mode. (Id.
at 10-11.) Additionally, Appellants argue that the Examiner failed to
provide sufficient rationale for combining the teachings of Goh and
Noesgaard. Therefore, Appellants submit that the Examiner erred in
rejecting claim 1 as being unpatentable over the proffered combination. (Id.
at 12-13.)
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Examiner’s Findings
The Examiner finds Goh’s disclosure of modifying the contents of a
3D object teaches modifying the object itself since Appellants’ claim
indicates that the 3D object includes a view which consists of content being
presented to the user. (Ans. 12-13.) Further, the Examiner finds
Noesgaard’s disclosure of a user that changes the content (e.g. color) of a
screen saver in an idle state complements Goh’s disclosure to teach or
suggest the disputed limitations. (Id. at 13.) Additionally, the Examiner
provides as rationale for the proffered combination that Noesgaard’s
teaching would have reduced the amount of information shown on the Goh’s
object thereby reducing the amount of power consumed therein. (Id. at 14.)
Therefore, the Examiner concludes that the combination of the cited
references is proper since it would have led one of ordinary skill in the art to
alter information displayed in the 3D object when the computer is in an idle
state. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that Goh
and Noesgaard are properly combined to teach or suggest a user modifying a
3D object in an electronic device, which is in an idle mode, as recited in
independent claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

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Goh
1. Goh discloses a computer system having a plurality of
dimensional graphical user interface for displaying the contents of a plurality
of workspaces in a more effective manner. In particular, a user can
selectively map each workspace to a polygonal surface to selectively display
thereon a desired workspace. (Abst., col. 5, ll. 12-20.)
2. As shown in Figure 6, Goh discloses that the user can
simultaneously display up to six workspaces, one on each side of a rotating
cube. All six sides are simultaneously visible to the user. (Col. 4, ll. 27-34.)
3. The user can subsequently edit one or more windows in the cube.
(Col. 6, ll. 25-28.)

Noesgaard
4. As shown in Figure 1, Noesgaard discloses a wireless terminal
(e.g. a portable phone) having a screen saver where a user can edit certain
properties in order to display desired items in the screen saver when the
terminal is in an idle state. (Abst., col. 3, ll. 35-49.)
5. Noesgaard discloses allowing the user to edit the screen saver
to provide a limited amount of information or change color information
while the terminal is in an idle state. Noesgaard indicates that this approach
offers the benefit of reducing the amount power consumed by the terminal
while the user has access to desired information. (Col. 4, ll. 4-9.)
6. Noesgaard defines an idle state as a state where a user enters no
information to any applications on the computer for a predetermined period
of time. (Col. 2, ll. 5-7.)

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IV. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(citation omitted).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citation omitted). The Court reaffirmed principles
based on its precedent 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.” Id. at 416. The operative question in this
“functional approach” is thus “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 415, 417.
The Court further instructs that “[o]ften it will be necessary for a court
to look to interrelated teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason for combining the known
elements in a the fashion claimed by the patent at issue.” Id. at 418.
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Additionally, the Court instructs that “‘[R]ejections 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’… however, the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. (citation
omitted) (emphasis added).

V. ANALYSIS
Claims 1, 3, 4, 6-9, 11, 12, 14-16 and 19-23
Independent claim 1 requires, inter alia, a three-dimensional object
being modifiable by a user while an electronic device containing the object
is in an idle mode. (Br. 15, Claims App’x.)
We first consider the scope and meaning of the phrase “three
dimensional object being modifiable by a user” which must be given the
broadest reasonable interpretation consistent with Appellants’ disclosure, as
explained in In re Morris, 127 F.3d 1048 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating
that “claims must be interpreted as broadly as their terms reasonably
allow.”). Appellants’ Specification states:
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In one embodiment of the present invention, the user is
also provided with the ability to modify the three-dimensional
object 100. For example, the user can change the shape, color
or size of the three-dimensional object 100. In another
embodiment, the user can customize the content appearing on
the three-dimensional object 100. For example, the user can
choose the applications or features that appear on various
portions of the three-dimensional object 100, as well as
customizing how an application or feature appears to the user.
In these instances, the three-dimensional object 100 serves as a
true active user interface object for use by the user when the
device at issue is in an idle mode.

(Spec. para. [0017]) (emphasis added.)
Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005).
Upon reviewing Appellants’ Specification, we find the phrase “three
dimensional object being modifiable by a user” relates to the first
embodiment set forth hereinabove wherein the user modifies the actual
object. We note nonetheless that while the cited portions of Appellants’
Specification set forth two different embodiments, they are not mutually
exclusive. Since the claim does not preclude the second embodiment, and
we are not at liberty to read limitations from the Specification into the claim,
we must therefore broadly but reasonably construe the disputed claim
limitation in this appeal. We find that the 3D object includes the contents
thereof. Consequently, by modifying the contents of the 3D object, the user
is modifying the 3D object itself since the contents are an integral part of the
object.
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As set forth in the Findings of Fact section, Goh discloses that a user
edits a multi-dimensional object having a plurality of surfaces by selectively
mapping a desired workspace to each of the object surfaces to thereby
display up to six distinct workspaces on the multi-dimensional object. (FF
1-3.) Next, Noesgaard discloses that a user edits a screen saver for a mobile
device by checking off the properties of desired applications in the mobile
device to be displayed on the screen saver while the mobile device is in an
idle state. (FF 4-5.)
We agree the Examiner that the disclosures of Goh and Noesgaard are
properly combined to reasonably teach or suggest the disputed limitation. In
particular, consistent with our claim interpretation above, we find that Goh’s
disclosure teaches that a user edits a multi-dimensional object by selectively
mapping on each face thereof a distinct workspace. Further, we find that
Noesgaard’s disclosure complements Goh’s by teaching that a user edits a
screen saver for a mobile device by picking off the properties of applications
in the device in order to display certain items in the screen saver while the
mobile device is an idle state. We thus find that one of ordinary skill in the
art would have readily appreciated that the combination of Goh and
Noesgaard discloses known elements that perform their ordinary functions to
predictably result in a user editing a multi-dimensional object in a mobile
device by picking off properties of applications of the in the mobile device
to be displayed on the different surfaces of the multi-dimensional object
while the mobile device is idle. See KSR, 550 U.S. at 418-419.
Further, as set forth in the Principles of Law section above, while it is
often necessary for an Examiner to identify a reason for combining the
familiar elements obtained from the prior art in establishing a prima facie
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case of obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some kind of a rational underpinning to substantiate the obviousness
rejection, such a conclusion is proper. In this case, the Examiner provided
more than just a mere conclusion of obviousness. The Examiner noted on
page 4 of the Answer that “it would have been obvious to a person of
ordinary skill in the art to include modifying the object [in] an idle mode.
The motivation would have been to alter information displayed on the three-
dimensional application while the computer is in [an] idle mode.” In our
view, such a statement suffices as an articulated reason to establish the prima
facie case of obviousness.
Further, even if such a reason for combining the known elements of
the references relied upon were not provided in this instance, we find that a
person of ordinary skill in the art would be readily apprised of such a
rationale since a predictable system ensues from the proffered combination.
As noted above, the case law allows the Examiner to look to the state of the
prior art including the knowledge of the ordinarily skilled artisan to surmise
such a reason for combining the known elements of the prior art.
Consequently, we reiterate that once a person of ordinary skill in the art
recognizes that the combination of certain known elements performing their
ordinary functions yields no ore than a predictable result, the ordinarily
skilled artisan will ipso facto be apprised of the reason for combining such
elements.
It follows that Appellants have not shown that the Examiner erred in
concluding that the combination of Goh and Noesgaard renders claim 1
unpatentable.
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Appellants argue the patentability of the claims 1, 3, 4, 6-9, 11, 12,
14-16 and 19-23 as a single group by arguing the rejection of claim 1. In
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we consider the grouped
claims on appeal as falling with representative claim 1.

Claims 2, 5, 10, 13, and 18
In regards to the above claims, Appellants argue that neither Smith
nor Kirbas cures the deficiencies of Goh and Noesgaard, as argued for claim
1. (Brief 13-14.) As discussed above, we find no such deficiencies in the
Goh and Noesgaard combination for these secondary references to cure. It
follows that Appellants have not shown error in the Examiner’s rejection of
these claims.

VI. CONCLUSION OF LAW
Appellants have not established that the Examiner erred in rejecting
claims 1 through 24 as being unpatentable under 35 U.S.C. § 103(a).

VII. DECISION
We affirm the Examiner's rejection of claims 1 through 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)(1)(iv) (2009).

AFFIRMED

Vsh
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