Ex Parte Belisle et al

Patent Trials and Appeals Board

Mar 26, 2019

13875128 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/875, 128 05/01/2013 Melissa J. Belisle
65656 7590 03/28/2019
KILPATRICK TOWNSEND & STOCKTONLLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
90911-Pl5134US1-851136 5551
EXAMINER
KUMAR, ANIL N
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELISSA J. BELISLE and FRANCES S. SEGAL
Appeal2017-007830
Application 13/875, 128
Technology Center 2100
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
BELISLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
all pending claims, namely, claims 1-33. App. Br. 1, 17. We have
jurisdiction under 35 U.S.C. § 6(b). Appellants elected to waive the hearing
attendance scheduled in a paper filed March 4, 2019. Therefore, we decide
this appeal on Brief.
We affirm-in-part.
1 Appellants identify APPLE INC. as the real party in interest. App. Br. 3.
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Application 13/875, 128
STATEMENT OF THE CASE
The Claimed Invention
Appellants' invention generally relates to "a computing device
displaying content related to the functionality of control elements of a user
interface within a moveable interactive element." Spec. ,r 1.
An exemplary embodiment includes a moveable interactive element
(e.g., a pop-up box) that can be dragged and moved onto control elements
( e.g., graphical user interface elements like buttons and icons) to display
information about the functionality of the control elements, allowing a user
to learn about what a particular control element does without selecting it.
Spec. ,r,r 19-21; Abstract. Upon receiving an initial touch input, the
moveable interactive element is displayed in the user interface. Id. The
interactive element may be dragged onto a control element and may become
associated with that control element. Spec. ,r,r 20, 21. Content related to the
functionality of the control element may be determined and displayed within
the interactive element. Spec. ,r 21.
The Claims
Appellants argue patentability of claims 1-33 using six separate
groups of claims as follows:
Group I: Claims 1, 3, 6, 11, 13, 16, 21, 23, 26, and 31-33 2
Group II: Claims 2, 12, and 22
Group III: Claims 4, 14, and 24
2 Appellants included dependent claims 8, 9, 18, 19, 28, and 29 in Group I
(see App. Br. 17); however, because each of these claims depends from one
of dependent claims 7, 17, and 27, we reallocated these claims to Group V.
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Group IV: Claims 5, 15, and 25
Group V: Claims 7-9, 17-19, and 27-29
Group VI: Claims 10, 20, and 30
For each of Groups I-VI, Appellants argue the grouped claims together as a
set. See App. Br. 17. We select claims 1, 2, 4, 5, 7, and 10 as representative
of the claims in Groups I-VI, respectively. Any claim not argued separately
will stand or fall with our analysis of the rejection of these selected claims.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal of Group I:
1. A computer-implemented method, comprising:
displaying, by a computing device, one or more control elements
of a user interface;
receiving initial touch input;
in response to the initial touch input, displaying an interactive
element in the user interface;
receiving further touch input corresponding to dragging the
interactive element onto a control element;
associating the interactive element with the control element;
determining content related to the functionality of the control
element; and
displaying the content within the interactive element.
Claim 2, reproduced below, is representative of the claimed subject
matter on appeal of Group II:
2. The method of claim 1, further comprising:
receiving further touch input corresponding to dragging the
interactive element associated with the control element to a
region of the user interface associated with no control elements;
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disassociating the interactive element from the control element;
and
removing the interactive element from the user interface.
Claim 4, reproduced below, is representative of the claimed subject
matter on appeal of Group III:
4. The method of claim 1, wherein the initial touch input
corresponds to a selection of a help element displayed in the user
interface.
Claim 5, reproduced below, is representative of the claimed subject
matter on appeal of Group IV:
5. The method of claim 1, wherein the initial touch input
corresponds to an initiation of an application.
Claim 7, reproduced below, is representative of the claimed subject
matter on appeal of Group V:
7. The method of claim 1, wherein determining the content
related to the functionality of the control element comprises
retrieving the content from a data table.
Claim 10, reproduced below, is representative of the claimed subject
matter on appeal of Group VI:
10. The method of claim 1, further comprising:
displaying an affordance element within the interactive element
while the content related to the functionality of the control
element is displayed;
receiving touch input corresponding to a selection of the
aff ordance element;
determining reference information related to the functionality of
the control element; and
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displaying the reference information in the user interface.
References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Michelman
Jeong
Kwon
US 2005/0246664 Al
US 2011/0087981 Al
US 2012/0194428 Al
Rejections
Nov. 3, 2005
Apr. 14, 2011
Aug. 2, 2012
The Examiner made the following rejections of the claims on appeal:
Claims 1-30 stand rejected under 35 U.S.C. § 103 as obvious over
Michelman and Jeong. Final Act. 3-11.
Claims 31-33 stand rejected under 35 U.S.C. § 103 as obvious over
Michelman, Jeong, and Kwon. Final Act. 11-12.
ANALYSIS 3
Group!
(Claims 1, 3, 6, 11, 13, 16, 21, 23, 26, and 31-33)
Appellants argue (A) Michelman and/or Jeong do not teach "in
response to the initial touch input, displaying an interactive element in the
user interface" as recited in claim 1; (B) Michelman and/or Jeong do not
teach "determining content related to the functionality of the control
3 Throughout this Decision, we have considered Appellants' Appeal Brief
filed July 27, 2016 ("App. Br."); the Examiner's Answer mailed
November 3, 2016 ("Ans."); the Final Office Action mailed July 30, 2015
("Final Act."); and Appellants' Specification filed May 1, 2013 ("Spec.").
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element" as recited in claim 1; and (C) there is no motivation to combine
Michelman and Jeong. See App. Br. 18-25. We find Appellants' arguments
unpersuasive.
Michelman is generally directed to "methods and systems relating to
various ways of selecting an item presented on a display and performing an
operation on the selected item." Michelman ,r 5. Michelman discloses
"a user interface element can be moved about a user interface to select a
displayed item," and"[ o ]nee the proper item or items are selected, an area
on the user interface element can be activated to perform an operation on the
selected item or items" (Michelman ,r 5), as illustrated in part by Figures 3
and 4, reproduced below.
FIG. 3 r!G.4
r ' i \
.. ·
I,. ' . B ....• ~... " ' • Ii,
x.;;~.:-···" )1~-·
: I
1
-., ________________ ----- ------ --------------------------------- __________________ ,)
Figure 3 of Michelman shows a display region showing various
displayed items, and Figure 4 of Michelman shows the display region of
Figure 3 and a user interface element for selecting a displayed item.
Michelman ,r,r 14, 15. More specifically, Figure 3 depicts "a display
area 300 of a user interface, such as a window in a computer's graphical user
interface," with four items 304, 306, 308, and 312 shown. Id. ,r 51. In
Figure 4, "a user interface element 422 is shown and has been moved about
the display area to select the item 412, which is depicted as highlighted to
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indicate it has been selected." Id. ,r 52. "Upon activation of the area 428, an
operation is performed on the selected item 412." Id.
For purposes of moving the user interface element 422 about the
display area, Michelman discloses: "The user interface element 102 [ or 422]
can be moved in a variety of ways. . . . The pointing device used to move
the element 102 can be any of a number of devices, such as a mouse,
trackball, or keypad." Michelman ,r 3 2 ( emphasis added).
In addition, relevant to understanding how the user interface element
422 appears in the transition from Figure 3 to Figure 4 above, Michelman
discloses "receiving an indication that a particular function is to be
performed on a displayed item," and "responsive to receiving the indication
that a particular function is to be performed on the displayed item,
displaying a moveable displayed user interface element [422] for
performing the particular function and configured to be dragged by a
graphical pointer .... " Michelman, Claim 51 ( emphases added).
Jeong is generally directed to a method for "removing an icon
displayed on a mobile terminal" (Jeong ,r 3), such as a smartphone, as
illustrated in Figure 6B, reproduced below.
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.FlG. 68
Figure 6B of Jeong illustrates a method of removing an icon in a
mobile terminal. Jeong ,r,r 24, 106. More specifically, "if the user selects
[by touch] the weather widget 212 and drags the weather widget 212 to the
menu area 220 [not shown here], the menu area may change to a removing
area 220-1," i.e., "a remove icon .... " Jeong ,r 108. Upon dragging
weather widget 212 to a "predetermined vicinity of the removing area, such
as the border," the weather widget is removed. Jeong ,r 109.
(A) "in response to the initial touch input, displaying
an interactive element in the user interface"
Appellants argue Michelman and/ or Jeong do not teach "in response
to the initial touch input, displaying an interactive element in the user
interface" as recited in claim 1. App. Br. 18-22.
The U.S. Supreme Court has held the relevant inquiry in an
obviousness analysis is whether the Examiner has set forth "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval inKSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007)). The
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test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413,425 (CCPA 1981); In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)
("[A] reference must be considered not only for what it expressly teaches,
but also for what it fairly suggests."). One of ordinary skill can use his or
her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
device. See KSR, 550 U.S. at 418 ("[A] court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ."). Furthermore, "if 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." See id. at 417.
Thus, a claim is obvious where it "'simply arranges old elements with
each performing the same function it had been known to perform' and yields
no more than one would expect from such an arrangement." See KSR, 550
U.S. at 417; In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) ("Because
the applicants merely substituted one element known in the art for a known
equivalent, this court affirms [the rejection for obviousness].").
Here, the Examiner explains "Michelman is only relied upon to teach
'initial input"' (Ans. 15), not initial "touch" input, as "Jeong is relied upon
for this teaching" (Ans. 14). The Examiner finds that the displaying of a
moveable displayed user interface element 422 in Figure 4 of Michelman, as
compared to Figure 3, "cannot be arrived at without some 'user input', albeit
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by 'hovering' or even 'booting up procedure', as the [ A ]ppellant[ s]
acknowledge[]." Ans. 15. The Examiner similarly finds:
Michelman clearly teach[ es] ... an exemplary operation of a user
interface element by using Figs. 3--4 (P 49-52). The [E]xaminer
further points out that these two adjacent figures must be
intentional to make any sense of the explanation, and the
[S]pecification clearly explains the steps based on Figs[.] 3--4 "to
select an item and perform an operation on the selected item".
Final Act. 13. The Examiner further finds:
[T]he factual enquires of the claimed invention is within the
scope and content of [the] combination of Michelman and Jeong
and the differences between the claimed invention and modified
Michelman is ascertained to be minimal and furthermore the
level of ordinary skill in art at the time (2013) is deemed to be
reasonable to deduce the novelty claimed by the [ A ]ppellant[ s].
Ans. 15.
Appellants argue the user interface element 422 of Michelman is
"already displayed in the user interface" in Figure 4, and Michelman does
not disclose "how user interface element 422 is initially displayed, let alone
that it is displayed 'in response to the initial touch input', as required by the
claims." App. Br. 20; see App. Br. 22 ("Examiner merely points to a
difference between FIG. 3 and FIG. 4 and concludes that affirmative input
(e.g., a touch or click) was necessary to explain the transition."); App. Br. 21
("Examiner has entirely failed to assert or articulate how the selection of an
item using an already displayed user interface element 422 in Michelman
necessarily corresponds to a 'touch input' that causes the user interface
element 422 to be initially displayed."). But Michelman (and Jeong) must
be considered not only for what they expressly teach, but also for what they
fairly suggest. Burckel, 592 F .2d at 1179. We agree with the Examiner's
reasoning discussed above, and find that Michelman's Figures 3--4 and
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related disclosure would at least fairly suggest to a skilled artisan an "initial
input" causing the display of an interactive element, particularly where that
interactive element subsequently is moved by dragging it in the displayed
area with a pointing device. See Ans. 14--15; Michelman ,r 32.
Moreover, we find Michelman goes well beyond fairly suggesting this
"initial input." Although not specifically cited by either the Appellants or
Examiner, 4 published claim 51 of Michelman discloses "how user interface
element 422 is initially displayed," namely, by "receiving an indication
[(i.e., initial input)] that a particular function is to be performed on a
displayed item," and "responsive to receiving the indication that a particular
function is to be performed on the displayed item, displaying a moveable
displayed user interface element [422] for performing the particular function
and configured to be dragged by a graphical pointer .... " Michelman,
Claim 51 ( emphases added).
(B) "determining content related to the
functionality of the control element"
Appellants argue Michelman and/or Jeong do not teach "determining
content related to the functionality of the control element," as recited in
claim 1. App. Br. 22-24. More specifically, Appellants argue (1) "[a]
determination is an active step," ( 2) that " [ t] his interpretation is consistent
with its plain meaning, which is to 'learn or find out (something) by getting
information,'" and (3) Michelman "fails to disclose an active determination
of the selected item's name." App. Br. 23. Appellants argue "Michelman
4 But see Final Act. 2 ("Although the specified citations are representative
of the teachings of the art and are applied to specific limitations within the
individual claim, other passages and figures may apply as well.").
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merely displays information about a selected item, and provides no
disclosure regarding how this information is ascertained," and proffers this is
not an "active determination step." App. Br. 23.
The Examiner finds Michelman teaches "determining content related
to the functionality of the control element" through its disclosure that "a text
box 136" is included within the exemplary user interface element 132, and
that "[ s ]uch an arrangement can be particularly useful, for example, in
displaying information about a selected item ... (e.g., the selected item's
name) .... " Final Act. 14 (citing Michelman ,r 41). The Examiner
disagrees with Appellants' construction of "determining," finding it includes
new language, namely, "'is an active step,"' which is not in the claims.
Ans. 16. Rather, the Examiner construes the plain meaning of
"'determining"' to encompass "the dynamic act of displaying the name of
the selected item, [which] involves [a] 'determination' of which item is
selected and where the item's name field is stored and further determining
where exactly on the screen to display the name." Ans. 16.
We agree with the Examiner's reasoning discussed above, and find
Appellants' arguments unpersuasive. As for the limitation "determining,"
this is used as a verb, and as such is used to describe an action, so we find no
additional meaning imbued into "determining" by construing it to be "an
active step." For purposes of analysis here, we accept as reasonable
Appellants' definition of" determining," namely, to learn or find out
something by getting information (but note that contemporaneous
dictionaries offer several variants of this definition, including defining
"determining" as meaning to bring about as a result). See App. Br. 23.
Nevertheless, we find the Examiner's cited Michelman disclosure, namely,
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the dynamic act of displaying the selected item's name, at least fairly
suggests finding out information about the selected item by getting that
information from some source (i.e., "determining content related to the
functionality of the control element").
Furthermore, although Appellants argue Michelman provides no
disclosure regarding "how" the selected item's name is ascertained, this is
not claimed----claim 1 provides no limitation on "how" content is determined
("by getting information" provides no meaningful limitation on "how").
See App. Br. 23, 30 (claim 1). Moreover, both Appellants' Specification and
Michelman disclose displaying a "name" of a selected or associated control
element or item, i.e., content related to the functionality of a control element.
Cf Spec. ,r 21 ("a name or identifier of the control element"), with
Michelman ,r 41 ("a selected item's name"). However, Appellants provide
no explanation for why Appellants' display of a name using a computer
results from "determining" that content, but that Michelman's display of a
name using a computer does not, or more precisely, does not fairly suggest
doing so. Accordingly, as stated above, we find Michelman teaches and
suggests the "determining" limitation.
(C) "no motivation to combine" Michelman and Jeong
Appellants argue the Examiner's proffered statement of motivation to
combine Michelman and Jeong is conclusory and based on improper
hindsight. App. Br. 24--25. Appellants also argue it would not have been
obvious to modify Michelman to include touch input, because touch screens
existed before the filing date of Michelman and Michelman did not integrate
touch input into his invention. Id.
The Examiner finds:
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[I]t would have been obvious to one having ordinary skill in the
art at the time to combine the teachings of Jeong, in Michelman
in order to provide explicit touch based initial input. Motivation
to combine comes from Michelman who clearly anticipates [(i.e.,
contemplates)] the need for touch input (The pointing device
used to move the element 102 can be any of a number of devices,
such as a ... keypad, P32) ....
Final Act. 4--5. The Examiner further finds:
Michelman clearly points out the potential alternatives (Having
described and illustrated the principles of our invention with
reference to illustrated embodiments, it will be recognized that
the illustrated embodiments can be modified in arrangement and
detail without departing from such principles, P 107). Hence, [to]
one skilled in the art, and having [been] presented with
Michelman' s directive to potential alternatives, combining the
"touch input" feature, which was ubiquitous at the time, cannot
possibly be construed as a hindsight.
Ans. 17.
Regarding the proposed combination of references and teachings,
contrary to Appellants' assertions, we find the Examiner has set forth a
reasoned rationale to combine the teaching of Michelman and Jeong-to
provide explicit touch-based initial input. Final Act. 4--5; see also In re
Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) ("The normal desire of
artisans to improve upon what is already generally known can provide the
motivation to optimize variables ... for use in a known device."). The
Examiner finds (1) Michelman discloses initially moving user interface
element 102 or 422 "in a variety of ways" and that the chosen pointing
device used to move the element 102 can be "any of a number of devices,
such as a mouse, trackball, or keypad," where a keypad contemplates touch
input (Final Act. 3--4 (citing Michelman ,r,r 32, 50-52)); (2) Jeong discloses
receiving initial "touch" input, wherein the preliminary removing signal is a
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touch and drag input (Final Act. 4 (citing Jeong ,r,r 11, 44)); and
(3) Michelman's teaching of multiple types of user input would have
motivated the skilled artisan to combine Jeong's "touch input" feature,
"which was ubiquitous at the time," with Michelman to employ touch input
directly through a user interface ( e.g., screen) rather than through touching a
keypad (Final Act. 4--5, Ans. 17). Thus, we find the Examiner has provided
articulated reasoning with rational underpinning for the proposed
combination. See KSR, 550 U.S. at 418.
Furthermore, Appellants' admission that "touch screens were invented
and implemented well before the filing date of Michelman" (App. Br. 25),
goes more to support obviousness here than not. As discussed above, the
Examiner finds Michelman teaches "initial input" and moving a user
interface element in a "variety of ways," and relies on Jeong to teach initial
"touch" input. See Final Act. 3-5. The Examiner effectively concludes, and
we agree, that substituting Jeong's touch input for Michelman's disclosed
variety of input means would have been obvious to the skilled artisan at the
time Appellants filed the Specification. See KSR, 550 U.S. at 416 ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results."); In re Fout,
675 F.2d 297,301 (CCPA 1982) ("Express suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.").
For the reasons discussed supra, we are unpersuaded of Examiner
error as to the rejection of Group I claims as obvious. Accordingly, we
sustain the Examiner's rejection of claims 1, 3, 6, 11, 13, 16, 21, 23, 26, and
31-33.
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Group II
(Claims 2, 12, and 22)
To remove an interactive element from the user interface, claim 2
recites, in relevant part, "dragging the interactive element associated with
the control element to a region of the user interface associated with no
control elements." Appellants argue Jeong fails to teach this aspect of
claim 2 because "to remove the selected icon from the user interface [in
Jeong], the selected icon is dragged onto another icon having functionality
(i.e., a control element)." App. Br. 26.
In response, the Examiner finds Jeong teaches the removal of an
interface item by dragging and dropping the interface item to a designated
area on the user interface. Ans. 17-18 (referring to Jeong, Fig. 6B, 220-1).
We disagree.
Jeong states:
[I] f the user selects the weather widget 212 and drags the weather
widget 212 to the menu area 220, the menu area may change to
a removing area 220-1. In other words, the icons displayed in
the menu area [220] will now display a remove icon (FIG. 6B).
The removing area refers to the remove icons displayed in the
menu area.
Jeong ,r 108 (emphases added). We find this disclosure in Jeong teaches
dragging an interactive element associated with a control element to a region
of a user interface associated with another control element, i.e., removal
area/icon 220-1, not to a region associated with no "control element."5
5 Appellants' Specification states that "a 'control element' may refer to a
graphical user interface element that is displayed within a user interface by a
computing device and that is associated with a particular functionality," and
to "any other graphical user interface element that is displayed in a user
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Accordingly, on the present record, we are constrained to find the
Examiner has not provided sufficient technical reasoning or evidence to
show Michelman and Jeong further teach "receiving further touch input
corresponding to dragging the interactive element associated with the control
element to a region of the user interface associated with no control
elements" ( emphasis added), as recited in the Group II claims. Therefore,
we do not sustain the Examiner's rejection of claims 2, 12, and 22.
Group III
(Claims 4, 14, and 24)
The Group III claims require "wherein the initial touch input
corresponds to a selection of a help element displayed in the user interface."
In rejecting claim 4, inter alia, the Examiner finds Michelman teaches
an initial touch input corresponds to the selection of a help element. Final
Act. 6. In particular, the Examiner relies on Figure 7 A of Michelman that
illustrates a graphical element (700) comprising buttons (720, 722), wherein
button (722) corresponds to a "help button." Final Act. 6 (citing Michelman
,r 60; see also Michelman, Fig. 7 A).
Appellants argue that the help button (722) is displayed only after the
user interface element (700) is already being displayed. App. Br. 26-27. In
other words, "[t]he selection of the help button 722 does not cause the user
interface element to be displayed." App. Br. 26-27.
In response, the Examiner instead relies on Figures 5 and 6 of
Michelman, and finds "Michelman clearly teaches activating or invoking a
interface, associated with a functionality, and that can be selected ( or
otherwise interacted with) by a user." Spec. ,r 24 (emphases added).
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user interface when a display element is selected .... " Ans. 18 ( citing
Michelman ,r,r 54--55 ("Various user interface elements for performing
operations on the list can be invoked by activating the appropriate area in the
display area 502 (e.g., 'Delete Column')."); Figs. 5---6).
Importantly, Appellants' Specification broadly defines a "help
element" as referring to any "graphical user interface element that is
displayed within a user interface by a computing device and that causes an
interactive element ... to be displayed in the user interface in response to
user interaction." Spec. ,r 25. In other words, Appellants' so-called "help"
element need not be explicitly described as a "help" feature or even
necessarily provide "help" per se. We are mindful that limitations are not to
be read into the claims from the Specification, but give claim terms, like
"help element," their broadest reasonable interpretation consistent with the
Specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) ( during prosecution, an application's claims are given their
broadest reasonable scope consistent with the specification); In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As explained by the
Examiner, Michelman teaches selecting broadly defined "help elements,"
such as "Delete Column," "Add Video," "Format Column," and the like
depicted in Michelman's Figure 6, to invoke the display of interactive
elements, such as user interface element 622. See Michelman ,r,r 54--55;
Ans. 18.
Appellants do not respond to the Examiner's findings as articulated in
the Answer.
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For the reasons discussed supra, we are unpersuaded of Examiner
error as to the rejection of Group III claims as obvious. Accordingly, we
sustain the Examiner's rejection of claims 4, 14, and 24.
Group IV
(Claims 5, 15, and 25)
The Group IV claims require "wherein the initial touch input
corresponds to an initiation of an application."
Appellants argue, in Michelman's Figure IA, "the user interface
element 102 ( compared by the Examiner to the claimed interactive element)
is already being displayed" in Figure IA, and therefore, Michelman does not
teach an interactive element being displayed in response to initiation of an
application (as the initial touch input). See App. Br. 27-28. The Examiner
responds, "Michelman clearly teaches selecting [an] item and activating
operation," and refers to Michelman's Figure 4, which shows a user
interface element 422 selecting item 412 and providing an area 428 that can
be activated to perform an operation on the selected item 412. Ans. 18-19.
The Examiner's cited Michelman disclosure here essentially teaches
displaying an interactive element in a user interface and using a feature
thereof for initiation of an application, but the Group IV claims require the
opposite, namely, initiation of an application to cause displaying an
interactive element in a user interface.
Accordingly, on the present record, we are constrained to find the
Examiner has not provided sufficient technical reasoning or evidence to
show Michelman and Jeong further teach "wherein the initial touch input
corresponds to an initiation of an application," as recited in the Group IV
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claims. 6 Therefore, we do not sustain the Examiner's rejection of claims 5,
15, and 25.
Group V
(Claims 7-9, 17-19, and 27-29)
The Group V claims require "wherein determining the content related
to the functionality of the control element comprises retrieving the content
from a data table."
Appellants argue:
Michelman discloses that items to be selected can be columns in
a table, and that various operations can be performed on the
columns. However, content related to these operations is not
retrieved from a data table, as is required by the claims. The
Examiner appears to be merely comparing any table m
Michelman to the claimed data table. This is clear error.
App. Br. 28. The Examiner responds:
The teachings [of] "[i]f the items are in columns in a table, the
operations can be 'modify,' 'rename,' 'delete,' 'format,' 'add,'
or 'move' operations"' [(Michelman ,r 48)], can only be
interpreted as retrieving contents to modify or rename from the
table, which the [E]xaminer believes reads on the claim
language.
6 We do not opine herein on whether the Examiner's rejection of the
Group III claims would also apply to the Group IV claims, and leave it to the
Examiner to further consider this issue in any further prosecution on the
merits ( e.g., consideration may include whether, under the broadest
reasonable interpretation of claim terms, any meaningful difference exists
between "initiation of an application" and "selection of a help element").
Although the Board is authorized to reject claims under 37 C.F.R.
§ 4I.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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Ans. 19. We find that retrieving content (data) to modify or rename from
the table does not teach retrieving content from a data table related to the
functionality of a control element-the data in columns in the table in
Michelman paragraph 48 is not disclosed as providing information about the
functionality of any control element.
Accordingly, on the present record, we are constrained to find the
Examiner has not provided sufficient technical reasoning or evidence to
show Michelman and Jeong further teach "wherein determining the content
related to the functionality of the control element comprises retrieving the
content from a data table," as recited in the Group V claims. Therefore, we
do not sustain the Examiner's rejection of claims 7-9, 17-19, and 27-29.
Group VI
(Claims 10, 20, and 30)
Appellants argue:
Dependent claims 10, 20 and 30 recite, inter alia, "determining
reference information related to the functionality of the control
element". As noted above, ... a determination is an active step.
Although paragraph [0041] of Michelman provides that
"information about a selected item" can be displayed, no active
determination of reference information related to the
functionality of the control element is provided by Michelman.
App. Br. 29 ( emphasis added). We find Appellants' arguments here
concerning "no active determination" unpersuasive for the same reasons we
found such arguments unpersuasive in connection with the Group I claims,
as discussed above.
For the reasons discussed supra, we are unpersuaded of Examiner
error as to the rejection of Group VI claims as obvious. Accordingly, we
sustain the Examiner's rejection of claims 10, 20, and 30.
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DECISION
We affirm the Examiner's obviousness rejection of Groups I, III,
and VI claims, namely, claims 1, 3, 4, 6, 10, 11, 13, 14, 16, 20, 21, 23, 24,
26, and 30-33.
We reverse the Examiner's obviousness rejection of Groups II, IV,
and V claims, namely, claims 2, 5, 7-9, 12, 15, 17-19, 22, 25, and 27-29.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2015).
AFFIRMED-IN-PART
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