Robert M. Chinn et al.

Patent Trials and Appeals Board

Jul 8, 2020

13595213 - (D) (P.T.A.B. Jul. 8, 2020)

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.
13/595,213 08/27/2012 Robert M. Chinn 27753-50036D1 8414
132324 7590 07/08/2020
F&P, LLP
2712 Augustine Drive
Suite 240
Santa Clara, CA 95054
EXAMINER
PILLAI, NAMITHA
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. CHINN, PAVEL CISLER,
PATRICK E. MCCLAUGHRY, MARCEL MWA VAN OS,
and BAS ORDING
Appeal 2018-008893
Application 13/595,213
Technology Center 2100
BEFORE ST. JOHN COURTENAY III, DENISE M. POTHIER, and
BETH Z. SHAW, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2018-008893
Application 13/595,213

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1,2 appeals from the
Examiner’s decision to reject claims 1–3, 6, 8–11, 22–24, 26, and 28–48.3
Claims 4, 5, 7, 12–21, 25, and 27 have been canceled. Appeal Br. 15, 17.
We REVERSE.
CLAIMED SUBJECT MATTER
A search utility is used to provide a path description for search results
and to produce a list of search results. Spec. 9:5–6, 9:23–25, Figs. 1–4.
When a user selects a search result (e.g., “‘AppleEvents2000.txt’
document”), a search result path (e.g., 510) is displayed (e.g., 520) and may
include path elements (e.g., 530–560, 465). Id. at 10:10–22, Fig. 5. “A set
of elements, such as, for example, a path, a directory list, a playlist, and a
listing of information associated with a file or a song, may be truncated so
that a partial set may be generated and displayed.” Id., Abstract. This
“partial set may be beneficial when the space allotted for display of the set is
small” and “[a] truncated, yet meaningful, portion is determined for the
selected data element, the portion fitting within the display space size.” Id.;
see id. at 1:27–2:2, 11:6–14, Figs. 8–15.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple, Inc.
Appeal Br. 3.
2 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
October 27, 2017, the Appeal Brief (Appeal Br.) filed May 10, 2018, the
Examiner’s Answer (Ans.) mailed July 20, 2018, and the Reply Brief (Reply
Br.) filed September 19, 2018.
3 The Examiner states “[c]laims 1-3, 6, 8-11, 22-24, 26, 28-38 are rejected.”
Final Act. 2; see id. at 1 (box 7). However, the rejections also include
claims 39 and 41–48. See id. at 2–10.
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The disclosure further describes “techniques for providing a user with
more information about a path.” Id. at 15:13–14. For example, a displayed
path element (e.g., 1930) can be “expanded to show the full name of path
element 1930, which is ‘AppleInternal’” by hovering over the path element
with a mouse. Id. at 15:19–20; see id. at 15:16–29, Figs. 19–20.
Independent claim 1 is reproduced below:
A method comprising:
receiving a request to display a path to a target data
element, wherein the path includes a first path element and a
second path element;
in response to receiving the request to display the path,
displaying, on an electronic display, a representation of the path
that includes a truncated representation of the first path element
and a representation of the second path element, wherein a
determination to display the truncated representation of the first
path element is made based on relative importance of the first
path element and the second path element, wherein the first
path element includes a string of characters and the truncated
representation of the first path element that is displayed
includes less than all the characters included in the string of
characters;
while displaying the representation of the path, rece1vmg
a user input at a location corresponding to the truncated
representation of the first path element; and
in response to receiving the user input, displaying an
expanded representation of the first path element on the
electronic display.

Appeal Br. 14 (Claims App.).
Appeal 2018-008893
Application 13/595,213

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Day US 6,249,782 B1 June 19, 2001
Shahine US 6,624,831 B1 Sept. 23, 2003
Moehrle US 2003/0227491 A1 Dec. 11, 2003
Horvitz US 7,386,801 B1 June 10, 2008 (filed
May 21, 2004)
Mike Mike, Truncating Long File Names and Displaying an Ellipses (July
29, 1999),
https://www.codeguru.com/cpp/misc/misc/fileanddirectorynaming/article.
php/c339/Truncating-Long-File-Names-and-Displaying-an-Ellipses.html
(“Mike”)

OBVIOUSNESS REJECTION OVER DAY, MIKE, AND MOEHRLE
Claims 1–3, 6, 8–11, 22–24, 26, 28–32, 34–38, 41–43, and 45–48 are
rejected under 35 U.S.C. § 103(a)4 as being unpatentable over Day, Mike,
and Moehrle. Final Act. 2–9. The Examiner found that Day teaches many
of claim 1’s limitations. Id. at 2 (citing Day 1:29–32, Figs. 2, 4A). The
Examiner turned to Mike in combination with Day to teach receiving a
request to display data with a first element and second element in a path in
truncated form. Id. at 2–3 (citing Mike, “Output of Example”). The
Examiner additionally turned to Moehrle, in combination with Day and
Mike, to teach receiving a user input at a location corresponding to the

4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Changes to § 103 apply to
applications filed on or after March 16, 2013. Because the instant
application has an effective filing date before March 16, 2013, we refer to
the pre-AIA version of § 103.
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Application 13/595,213

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truncated representation of a path element and expanding the path element as
claim 1 recites. Id. at 3 (citing Moehrle ¶ 15).
Among other arguments, Appellant contends Moehrle teaches rolling
over an active link causes a sibling menu to be displayed. Appeal Br. 10.
Specifically, Appellant “submits that sibling menu items are not part of the
‘first path element.’ Indeed, they are not part of the ‘path’ at all. Rather,
they represent alternative paths to other data elements.” Id.

ISSUE
Under § 103, has the Examiner erred by determining that Day, Mike,
and Moehrle collectively would have taught or suggested “in response to
receiving the user input, displaying an expanded representation of the first
path element on the electronic display”?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
rejection. Day teaches displaying a representation of a path with path
elements (e.g., “My summer vacation in the sun with my dog.html”) in
Figure 4A and truncated representation of a path element of this path (e.g.,
“My summer vacation in t#69.html”) in Figure 4D. Day 7:49–55, 8:38–49,
Figs. 4A, D. Similarly, Mike teaches truncating a path name using ellipses.
See Mike 2 (“Output of Example”). But, neither of these references teaches
the disputed “displaying an expanded representation of the first path element
on the electronic display” in claim 1. See Final Act. 3.
As for this “expanded representation” limitation, the Examiner
contends Moehrle teaches this recitation. Id. (citing Moehrle ¶ 15).
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Moehrle teaches “[r]olling over a given active link triggers the display of
sibling menu items on the level associated with the given active link.”
Moehrle ¶ 15 (emphases added). As such, the sibling menu items discussed
in Moehrle represent menu items that have a common parent—the noted
active link5—and thus are associated with the given active link (id.), which
may be considered a path element. But, the Examiner has not explained on
the record sufficiently how these sibling menu items taught by Moehrle
represent the active link itself or the recited “path element” in claim 1. See
Final Act. 3.
In the Examiner’s Answer, the Examiner contends that
One of reasonable skill in the art would understand the concept
of using user interaction to expand the path to show an
expanded representation of a first path element. This teaching is
clearly taught in Moehrle’s expansion of the Active Path. . . .
[T]he expansion in Moehrle results in an expansion of the path
element to show a representation of the path element in an
expanded fashion.

Ans. 3. However, other than noting Moehrle’s Figure 2A, which does not
show expanding a representation of a path element in response to receiving
an input (see Moehrle ¶ 9), the Examiner provides no supportive evidence
for these statements and conclusion. See Ans. 3.
Although not relied upon by the Examiner, we reproduce Moehrle’s
Figure 5C below.

5 The active link is part of the Active Path emphasized by Appellant. Appeal
Br. 10 (quoting Moehrle ¶ 40); Reply Br. 2 (same).
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Moehrle, Fig. 5C; see also Appeal Br. 9 (reproducing the same). Figure 5C
shows Active Path 100, which contains active links 102a–102d, and items
12b1 through 12b4 show sibling menu items associated with active link
102b that results when a user rolls over active link 102b. Moehrle ¶¶ 34, 37,
40, Fig. 5C. The sibling menu items (e.g., 12b1–12b4) discussed in Moehrle
and shown above, represent menu items associated with the noted active
link. Id. ¶ 15. Moehrle further states “active link 102-b corresponds to
menu item 12-b selected from level 10-b.” Id. ¶ 37, Figs. 5A, C. Yet, the
Examiner has not (1) relied upon this figure to reject the claims or (2)
explained whether or not rolling over active link 102b and displaying menu
item 12b specifically6 would teach or suggest “an expanded representation

6 The Specification’s Figure 21 shows an alternative technique allowing a
user to view an entire path temporarily. Spec. 16:6–13, Fig. 21.
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of the first path element” recited in claim 1. Nor will we speculate in this
regard in the first instance on appeal.7
Based on the record, we therefore are constrained to determine the
proposed combination does not teach or suggest “in response to receiving
the user input, displaying an expanded representation of the first path
element on the electronic display” in claim 1.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claim 1, (2) independent claims 22 and 29,
which recite commensurate limitations, and (3) dependent claims 2, 3, 6, 8–
11, 23, 24, 26, 28, 30–32, 34–38, 41–43, and 45–48 for similar reasons.
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 33, 39, and 44 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Day, Mike, Moehrle, and Horvitz (Final Act. 9); claim 34
is rejected under 35 U.S.C. § 103(a) as being unpatentable over Day, Mike,
Moehrle, and Shahine (id. at 10). For these rejections, the Examiner has not
relied upon Horvitz or Shahine to teach or suggest the noted deficiencies in
Moehrle. See id. at 9–10. Accordingly, for reasons similar to those above,
Appellant has persuaded us of error of these rejections the based on the
record before us.

7 Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02 [R-11.2013].

Appeal 2018-008893
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CONCLUSION
Based on this record, the rejections of claims 1–3, 6, 8–11, 22–24, 26,
28–39, and 41–48 are not sustained.
Claim 40 was not rejected.8
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 8–
11, 22–24,
26, 28–32,
34–38, 41–
43, 45–48
103 Day, Mike,
Moehrle
1–3, 6, 8–
11, 22–24,
26, 28–32,
34–38, 41–
43, 45–48
33, 39, 44 103 Day, Mike,
Moehrle, Horvitz
33, 39, 44
34 103 Day, Mike,
Moehrle, Shahine
34
Overall
Outcome
1–3, 6, 8–
11, 22–24,
26, 28–39,
41–48

REVERSED

8 The Examiner does not indicate the status of claim 40 on the Final Action
Summary page or in the Final Action. Therefore, the status of claim 40 is
unclear on appeal. For claims of undetermined status, the Board has no
adverse decision to review.