Ex Parte Tseng et al

Patent Trial and Appeal Board

Oct 30, 2017

13224139 (P.T.A.B. Oct. 30, 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.
13/224,139 09/01/2011 Erick Tseng 079894.0333 8814
91230 7590 11/01/2017
Raker Rntts; T T P /Faeehnnk Tne
EXAMINER
2001 ROSS AVENUE PARKER, JEANETTE J
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
ptomaill @bakerbotts.com
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICK TSENG and ROSE YAO
Appeal 2017-005243
Application 13/224,139
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ application relates to the management of virtual tabs in a
Web browser. Spec. 11. The browser maintains, in memory, a table of tab
entries for visited domains, where each entry includes a history of pages
visited within the particular tabbed domain. Spec. 124. In order to navigate
the tabs, a user can select an address bar in the interface of the browser,
which causes the browser to display a list of addresses corresponding to the
tabbed domains. See Spec. Tflf 30, 32, 36. The user can then select an
Appeal 2017-005243
Application 13/224,139
address from the list to open a tab displaying a page within the domain
corresponding to the selected address. See Spec. 137. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method comprising:
by a handheld computing device with an integrated
touchscreen, providing for presentation a graphical user interface
of a web browser, the graphical user interface comprising a user-
selectable address bar and one or more tabs for displaying web
pages, wherein a domain is associated with each of the tabs,
wherein each of the tabs is associated with a browsing history of
addresses, and wherein, for each of the tabs, each address in the
browsing history for the tab has a domain matching the domain
associated with the tab;
by the integrated touchscreen, receiving a user input
selecting the address bar;
by the handheld computing device, in response to the user
input, automatically and without further user input providing for
display a set of addresses, wherein each of the displayed
addresses is user-selectable through the integrated touchscreen;
by the integrated touchscreen, receiving a touch input
identifying a selected one of the displayed addresses; and
by the handheld computing device, opening, in response
to the received touch input, one of the tabs to display a web page
for the selected address, wherein the opened tab is associated
with a domain matching a domain of the selected address.
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Application 13/224,139
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vale US 2002/0116528 A1 Aug. 22, 2002
Melton US 2008/0046840 A1 Feb. 21,2008
Vaughan US 2009/0171930 A1 July 2, 2009
Sauve US 2010/0011313 A1 Jan. 14, 2010
Moore US 2010/0115451 A1 May 6, 2010
Martino US 2012/0216124 A1 Aug. 23, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1—20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1, 6, 10, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sauve, Melton, and Vaughan.
Claims 2—5, 7, 11—14, 16, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sauve, Melton, Vaughan, and Martino.
Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sauve, Melton, Vaughan, and Vale.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sauve, Melton, Vaughan, Vale, and Moore.
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ANALYSIS
The Written Description Rejection
The Examiner finds Appellants have not shown written description
support for the limitation “integrated touchscreen,” recited explicitly or by
dependency in each of claims 1—20. Final Act. 2—3. Appellants contend
Figure 2C and the Specification, paragraphs 22, 25, and 56, provide proper
written description support for the “integrated touchscreen” limitation. App.
Br. 10. We agree with Appellants.
Appellants’ Specification provides “mobile device 130 maybe
implemented in a variety of different hardware and computing systems,”
where one example computing platform 902 includes a controller 904. Spec.
1 53. Further:
Controller 904 may [be] connected to an input structure 914 and
display 911 may be provided together, such as in the case of a
touchscreen where a touch sensitive mechanism is provided in
conjunction with the display 911.
Spec. 1 56 (emphasis added). Thus, the Specification contemplates an
embodiment where a mobile device includes a touchscreen as an input
structure, i.e., an “integrated touchscreen.” Accordingly, we find the
Specification “reasonably conveys to those skilled in the art that
[Appellants] had possession of the claimed subject matter,” namely, “a
handheld computing device with an integrated touchscreen,” at the time of
filing. See Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010).
We, thus, find the Examiner erred in rejecting claims 1—20 as failing
to comply with the written description requirement.
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Application 13/224,139
The Indefiniteness Rejection
The Examiner finds claims 1—20 are indefinite because the limitation
“integrated touchscreen” does not have written description support, and,
therefore, the meaning of “integrated touchscreen” is unclear. Final Act. 3.
Appellants contend the Specification provides ample description such that
one of ordinary skill in the art would have understood an “integrated
touchscreen” to be a “touchscreen that is integrated with the handheld
computing device.” App. Br. 10—11. We agree with Appellants.
We find the meaning of “integrated touchscreen” would have been
clear to one of ordinary skill in the art, particularly in light of Appellants’
Specification. To wit, the Specification describes an example input structure
914 of a computing device that could be “a touchscreen where a touch
sensitive mechanism is provided in conjunction with the display 911.” Spec.
| 56. “Controller 904 may receive instruction signals from input structure
914 and control the operation of display 911.” Spec. 1 57. Thus, a
“touchscreen” is a touch sensitive mechanism for providing instruction
signals to a controller of a computing device for controlling the operation of
a display. The fact that the claimed touchscreen is “integrated” simply
means that it is part of the claimed “handheld device,” and we find this
would have been clear to one of ordinary skill in the art.
We, thus, find the Examiner erred in rejecting claims 1—20 as
indefinite.
The Obviousness Rejections
Regarding independent claim 1, Appellants contend Melton fails to
teach displaying tabs, where “each of the tabs is associated with a browsing
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Application 13/224,139
history of addresses,” because Melton’s panel of icons representing Web
pages are not tabs. App. Br. 12. Appellants also contend Vaughan fails to
teach displaying addresses responsive to user input, where “each of the
displayed addresses is user-selectable through the integrated touchscreen,”
because Vaughan’s collection of suggestions are not user-selectable through
an integrated touchscreen; rather, Vaughan requires clicking on interface
elements with a mouse or other pointing device, instead of using a
touchscreen. App. Br. 12—13. Further, Appellants contend Sauve fails to
teach “receiving a touch input identifying a selected one of the displayed
addresses” because Sauve discloses making selections via keyboard, clicking
through tabs, or hovering a pointer over a thumbnail, instead of using a
touchscreen. App. Br. 13. We are not persuaded by Appellants’ arguments.
First, the Examiner relies on Sauve for teaching the claimed “tabs.”
Final Act. 5. Accordingly, Appellants’ argument that Melton fails to teach
the “tabs” limitation is unavailing. Second, the Examiner relies on Melton
for teaching the claimed “integrated touchscreen.” Final Act. 6.
Accordingly, Appellants’ arguments that Vaughan and Sauve fail to teach
the “integrated touchscreen” limitation is also unavailing. The test for
obviousness is not “that the claimed invention must be expressly suggested
in any one or all of the references. 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). The shortcoming
of Appellants’ arguments is their focus on the individual references instead
of considering the combined teachings of the references as applied by the
Examiner. Moreover, Appellants have not shown that it would have been
“uniquely challenging or difficult for one of ordinary skill in the art” to
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combine the respective teachings of the references, which all relate to the
field of Web browsers. Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550
U.S. 398,419-20 (2007)).
We are, therefore, not persuaded the Examiner erred in rejecting claim
1, and claims 2—20 not specifically argued separately, as obvious.
CONCLUSIONS
Under 35 U.S.C. § 112, first paragraph, the Examiner erred in
rejecting claims 1—20 for failing to comply with the written description
requirement.
Under 35 U.S.C. § 112, second paragraph, the Examiner erred in
rejecting claims 1—20 as being indefinite.
Under 35 U.S.C. § 103(a), the Examiner did not err in rejecting claims
1—20 as obvious.
DECISION
For the above reasons, we affirm the Examiner’s decision to reject
claims 1—20, because at least one ground of rejection has been affirmed for
each claim. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of
a claim on any of the grounds specified constitutes a general affirmance of
the decision of the examiner on that claim, except as to any ground
specifically reversed”).
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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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