Ex Parte Tapiola et al

Patent Trial and Appeal Board

Mar 29, 2017

13614699 (P.T.A.B. Mar. 29, 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.
13/614,699 09/13/2012 Antti Tapiola 004770.02344 9213
72165 7590 03/31/2017
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT 004770
1100 13TH STREET
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
LEE, JUSTIN S
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
PTO-72165 @bannerwitcoff.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTTI TAPIOLA and JUSSI HAKUNTI
Appeal 2016-002798
Application 13/614,699
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
NATHAN A. ENGELS, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—17 and 19, which constitute all
the claims pending in this application. Claim 18 has been canceled. Final
Act. 1—2; App. Br. 4.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants’ Specification (“Spec.”), filed Sept. 13, 2012
(claiming benefit of EPO 11181421.6, filed Sept. 15, 2011); Appeal Brief
(“App. Br.”) filed July 27, 2015; and Reply Brief (“Reply Br.”) filed Jan. 4,
2016. We also refer to the Examiner’s Answer (“Ans.”) mailed Nov. 2,
2015, and Final Office Action (Final Rejection) (“Final Act.”) mailed Mar.
16, 2015.
Appeal 2016-002798
Application 13/614,699
Appellants ’ Invention
The invention concerns graphical user interfaces (GUIs), apparatuses
displaying GUIs, and methods enabling selections of objects in GUIs. The
method described highlights an object on the GUI in the direction of cursor
movement (by a user) and, if the user does not select the highlighted object,
a different object (on the GUI) in the direction of cursor movement (while
cursor movement continues) is highlighted if the cursor movement speed is
below a threshold speed. Spec. 1:4—7; 2:10-5:31; Abstract.
Representative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A method, comprising:
causing display of information content comprising objects
on a graphical user interface;
activating a predictive cursor function in response to
identifying a predetermined action from a user;
receiving a cursor movement action from the user, wherein
a movement speed of the cursor is lower than a threshold value;
determining a cursor position on the graphical user
interface;
highlighting on the graphical user interface a closest object
in a direction of the cursor movement action in relation to the
cursor position; and
based on the user not selecting the closest object in the
direction of the cursor movement action, highlighting a next
object on the graphical user interface in the direction of the
cursor movement action while the cursor movement action
continues in the direction of the cursor movement action and the
movement speed of the cursor is lower than the threshold value.
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Application 13/614,699
Rejections on Appeal
1. The Examiner rejects claim 9 under 35 U.S.C § 101 as being
directed to non-statutory subject matter.
2. The Examiner rejects claims 1—17 and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Sweeney et al. (US 2011/0138324 Al,
published June 9, 2011) (“Sweeney”), Robertson (US 2006/0288314 Al,
published Dec. 21, 2006) and Chmielewski et al. (US 2011/0066981 Al,
published Mar. 17, 2011) (“Chmielewski”).
ISSUES
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issues before us follow:
1. Did the Examiner err in rejecting claim 9 as being as being
directed to non-statutory subject matter?
2. Did the Examiner err in finding that Sweeney, Robertson, and
Chmielewski collectively would have taught or suggested that responsive to
(based on) “the user not selecting the closest object in the direction of the
cursor movement action, highlighting a next object... in the direction of the
cursor movement action while the cursor movement action continues . . . and
the movement speed of the cursor is lower than the threshold value” within
the meaning of Appellants’ claim 1 and the commensurate limitations of
claims 9 and 10?
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Application 13/614,699
ANALYSIS
The 35 U.S.C. § 101 Rejection
The Examiner finds Appellants’ independent claim 9 to be directed to
non-statutory subject matter because Appellants’ Specification describes
transmission media comprising non-statutory transitory signals and
“[mjerely amending the term computer-readable medium to computer-
readable device makes no difference in that device” (Final Act. 2). See Ans.
6—7. Appellants contend that “the term device such as a computer as it is
used in Appellant's specification does not encompass a transitory signal”
(App. Br. 9). See App. Br. 8—9. We agree.
Appellants revised claim 9 to expressly disclaim media and, in
particular, transitory media such as signals. App. Br. 8—9. Appellants’
disclosure in their Specification of transmission media comprising non-
statutory transitory signals (see Final Act. 2; Ans. 6—7) is irrelevant to the
current analysis of the recited computer-readable device.
Consequently, we are constrained by the record before us to find that
the Examiner erred in rejecting claim 9 as being directed to non-statutory
subject matter. Thus we reverse the Examiner’s § 101 rejection of claim 9.
The 35 U.S.C. § 103 Rejection of Claims 1—17 and 19
Appellants argue claims 1—17 and 19 together as a group. See App.
Br. 4—8. Appellants do not separately argue independent claims 1, 9, and 10,
or dependent claims 2—8, 11—17, and 19 with respect to the obviousness
rejection. See App. Br. 8. Accordingly, we select independent claim 1 as
representative of Appellants’ arguments and grouping with respect to claims
1-17 and 19. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/614,699
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 3—7) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 2—
6) in response to Appellants’ Appeal Brief. We concur with the findings and
conclusions reached by the Examiner, and we provide the following for
emphasis.
Appellants contend that Sweeney, Robertson, and Chmielewski do not
teach the disputed features of representative claim 1. See App. Br. 4—8;
Reply Br. 2—A. Specifically, Appellants contend the Examiner shifted the
basis of the rejection in the Advisory Action (see Adv. Act. 2 (mailed May
22, 2015)) and that the combination of Sweeney, Robertson, and
Chmielewski as described in the Advisor Action would have changed the
principle of operation of Sweeney. App. Br. 5, 7—8. Appellants further
contend that the Sweeney, Robertson, and Chmielewski combination does
not teach the recited features of highlighting an object and utilizing “the
same criterion” again “to determine whether to highlight a next object when
the user did not select the first object. Such dual-level decision procedure is
not suggested in any of the” (App. Br. 6) cited prior art. See App. Br. 5—6;
Reply Br. 3. Similarly, Appellants contend that Robertson does not describe
utilizing the continued movement of the cursor in determining whether or
not to highlight a new object. Reply Br. 3 Appellants also contend it would
not have been obvious to combine Sweeney, Robertson, and Chmielewski in
the manner proposed by the Office because the combination would “service
no purpose” (App. Br. 7) in that Sweeney separately describes highlighting
and selecting, Chmielewski describes activating (selecting) a menu based on
cursor speed being below a threshold, such that cursor movement below a
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Application 13/614,699
speed threshold triggers selection of a highlighted object and it is
unnecessary to highlight the next object — that is the first object (nearest
object) is always selected when the cursor speed is below the threshold. See
App. Br. 6—7; Reply Br. 3^4.
We agree with the Examiner and find Appellants’ contentions
unpersuasive of Examiner error. Initially, Appellants misconstrue the
Examiner’s rejection, particularly with respect to the Advisory Action, and
simply argue each of the references individually without addressing what the
combination of Sweeney, Robertson, and Chmielewski would have
suggested to one of ordinary skill in the relevant art at the time of the instant
invention.
We find the Examiner did not shift the basis of the rejection or present
a new or different rejection in the Advisory Action. See Adv. Act. 2 (mailed
May 22, 2015). Rather, the Examiner simply explained that Sweeney alone
would have at taught or suggested each feature of claim 1 with some obvious
(common sense or obvious to try) design variations. These findings and
conclusions are in addition to the rejection provided in the Final Office
Action and do not change that rejection. Appellants’ arguments directed to
the Advisory Action need not be further addressed.
The Examiner finds that it was known to highlight a predicted target
(an object) in a GUI, closest to a cursor, based on a cursor’s direction of
motion (a cursor movement vector) as taught by Sweeney. See Final Act 4—
6; Ans. 4—5 (citing Sweeney 38, 50, 57; Figs. 2A, 4A, 4B). That is,
Sweeney was cited for the limited purpose of teaching or suggesting
highlighting an object in a GUI closest to a cursor based on a cursor
movement. The Examiner also finds that it was known to highlight a new
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(next) object in a GUI — e.g., the next closest object — based on a user not
selecting a first object and the cursor’s movement vector or direction of
motion as taught by Robertson. See Final Act 4—6; Ans. 4—5 (citing
Robertson || 31, 33; Figs. 8, 9A—9C). The Examiner further finds that it
was known to highlight an object in a GUI based on a cursor’s movement
speed being below a threshold as taught by Chmielewski. See Final Act 5—
7; Ans. 5 (citing Chmielewski 171; Figs. 2, 3, 6—7A). That is, Chmielewski
was cited for the limited purpose of teaching or suggesting highlighting an
object in a GUI when a cursor’s movement speed is below threshold.
To the extent Appellants present new arguments for the first time in
their Reply Brief— that Robertson does not describe utilizing the continued
movement of the cursor in determining whether or not to highlight a new
object — Appellants do not provide a compelling explanation for why these
arguments were not previously presented. Therefore, these arguments are
waived. See Ex parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010)
(informative opinion) (absent a showing of good cause, the Board is not
required to address an argument newly presented in the reply brief that could
have been presented in the principal brief on appeal); 37 C.F.R. §41.41(b)(2)
(same). Even so, we find that Robinson implies that the highlighting of the
second object is based on continued cursor movement in that the
highlighting determination is based on the cursor’s movement. Logic
dictates that if the cursor movement were to stop or change direction, then
the highlighting determination would be made using a different vector.
Appellants’ arguments do not take into account what the combination
of Sweeney, Robertson, and Chmielewski would have suggested to one of
ordinary skill in the art —
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The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference;. .. Rather, the test is what the
combined teachings of the references would have suggested to
those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
We find that it would have been well with the skill of one skilled in
the art to combine the known techniques {supra) of highlighting a predicted
target in a GUI based on a cursor movement vector as taught by Sweeney,
highlighting a new object in a GUI based on a user not selecting a first
object and the cursor’s movement vector as taught by Robertson, and
highlighting an object in a GUI based on a cursor’s movement speed being
below a threshold as taught by Chmielewski. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill” (citations
omitted)). We are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellants’ invention. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) {citingKSR, 550
U.S. at 418).
Thus, Appellants do not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1. For these same
reasons, Appellants do not persuade us of error in the Examiner’s
obviousness rejection of independent claims 9 and 10, or dependent claims
2—8, 11—17, and 19, not separately argued with particularity {supra).
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Accordingly, we affirm the Examiner’s obviousness rejections of claims 1—
17 and 19.
CONCLUSIONS
Appellants have shown that the Examiner erred in rejecting claim 9
under 35U.S.C§ 101 as being as being directed to non-statutory subject
matter.
Appellants have not shown that the Examiner erred in rejecting claims
1-17 and 19 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1—17 and 19.
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
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