Ex Parte Hochmuth et al

Patent Trial and Appeal BoardOct 26, 2012

11020982 (P.T.A.B. Oct. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROLAND M. HOCHMUTH and JOHN MARKS ____________________ Appeal 2010-005730 Application 11/020,982 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, DAVID M. KOHUT, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005730 Application 11/020,982 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a Non-Final Rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a computer display control system and method. Abst. 21. Claims 1 and 23, reproduced below, are illustrative of the claimed subject matter: 1. A computer display control system, comprising: an input module adapted to receive a user input corresponding to a composited desktop display, the composited desktop display displaying at least two active desktops corresponding to at least two different computers, the input module adapted to automatically determine to which of the desktops the user input corresponds. 23. A computer display control system, comprising: an input module adapted to receive a user input corresponding to a composited desktop display, the composited desktop display overlaying at least two different computer desktops such that the at least two different computer desktops are active in the composited desktop display, the input module adapted to identify to which of the at least two different computer desktops the user input corresponds. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lumelsky Anderson US 5,351,067 US 7,010,755 B2 Sep. 27, 1994 Mar. 7, 2006 Appeal 2010-005730 Application 11/020,982 3 REJECTIONS 1 The Examiner made the following rejection: Claims 1-30 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over Anderson and Lumelsky. Ans. 3. OPINION Appellants’ Contentions 2 1. Appellants contend that the Examiner erred in rejecting independent claims 1, 10 and 18 as unpatentable under 35 U.S.C. § 103(a) as being obvious over Anderson and Lumelsky because the references singularly and collectively fail to teach or suggest the composited desktop display displaying at least two active desktops corresponding to at least two different computers. App. Br. 3-6. 2. Appellants contend that the Examiner erred in rejecting independent claim 23 as unpatentable under 35 U.S.C. § 103(a) as being obvious over Anderson and Lumelsky because the combination of references fails to teach or suggest (i) two different computer desktops or (ii) that the input module is adapted to identify to which of the at least two different computer desktops user input corresponds. App. Br. 7-10. 1 Appellants collectively argue claims 1, 10 and 18 (App. Br. 5-6; Reply Br. 2-3) and separately argue independent claim 23 (App. Br. 7-10; Reply Br. 3- 5) and dependent claims 2, 3, 5 and 16 (App. Br. 10-12); dependent claims 4, 6-9, 11-15, 17, 19-22 and 24-30 are not argued separately (App. Br. 10). 2 As our resolution of this contention 1 is dispositive of the outcome of the appeal of the rejection of claims 1, 10 and 18, we do not address Appellants’ other contentions of error with regard to those claims or the claims dependent therefrom. Appeal 2010-005730 Application 11/020,982 4 Issues on Appeal 3 Based on Appellants’ arguments in the Appeal Brief (App. Br. 6-8) and the Reply Brief (Reply Br. 1-4), the issues presented on appeal are: 1. Did the Examiner err in concluding that the combination of Anderson and Lumelsky teaches or suggests the composited desktop display displaying at least two active desktops corresponding to at least two different computers as required by claims 1, 10 and 18? 2. Did the Examiner err in concluding that the combination of Anderson and Lumelsky teaches or suggests (i) two different computer desktops or (ii) that the input module is adapted to identify to which of the at least two different computer desktops user input corresponds as required by claim 23? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We concur with Appellants’ conclusions that the Examiner erred in finding that Anderson and Lumelsky disclose or suggest a composited desktop display displaying at least two active desktops corresponding to at least two different computers as required by claims 1, 10 and 18. However, we disagree with Appellants’ conclusions with regard to contention 2 above in connection with claim 23 and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken in connection with claim 23 and, in that regard, concur with the conclusions reached by the Examiner. 3 See fn. 2. Appeal 2010-005730 Application 11/020,982 5 Claims 1, 10 and 18 The Examiner has taken the position “that Anderson et al. in view of Lumelsky et al. is replete with teachings ‘the composited desktop display displaying at least two active desktops corresponding to at least two different computers’ and ‘the input module adapted to automatically determine to which of the desktops the user input corresponds’ ... ’, especially when the reference as a whole, is taken into consideration.” Ans. 9. The Examiner further cites to Figures 3 and 6 and col. 2, ll. 20-36 and 46-52 of Anderson for disclosing at least two different computers. Ans. 3-4 and 9. However, our review of the Anderson fails to reveal the Examiner’s basis for the disclosure of the desktops corresponding to at least two different computers. While Anderson discloses a composited display displaying at least two virtual desktops (see, e.g. Anderson Abst., Fig. 6, and col. 2, ll. 20-36), the Examiner does not provide sufficient evidence, nor do we find, that Anderson’s virtual desktops correspond to different computers. To the contrary, Anderson describes a problem of the prior art as providing a confusingly cluttered desktop when multiple application windows are created so that virtual desktops are provided to expand the size of the desktop. Anderson, col. 1, ll. 32-36. Thus, Anderson suggests partitioning one large desktop (i.e., a desktop of one computer) into a number of smaller virtual desktops but does not otherwise teach or suggest that the desktops correspond to different computers. We therefore agree with Appellants that the Examiner has erred by failing to provide persuasive evidence of how Anderson discloses the composited desktop display displaying at least two active desktops corresponding to at least two different computers as required by claims 1, 10 Appeal 2010-005730 Application 11/020,982 6 and 18. Since this issue is dispositive of our reversal of the Examiner's rejection of those claims and dependent claims 2-9, 11-17 and 19-22, we need not address Appellants’ other arguments pertaining to other errors alleged in connection with the rejection of claims 1-22. Claim 23 In connection with contention 2 above, Appellants argue that, inter alia, Figs. 5-7 “fails to teach or suggest that these virtual desktops are two different computer desktops.” App. Br. 8. We disagree. When construing claim terminology during prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of any definition by Appellants’ Specification, we construe the phrase “computer desktop” to include an on-screen area constituting a computer simulation of the top of a desk. Therefore we conclude that the “different computer desktops” of claim 23 are not limited to desktops of different computers but only require that a single computer displays at least two desktops that contain different information. In view of our construction of claim 23, we agree with the Examiner that Anderson discloses different computer desktops. See, e.g., Ans. 9 citing to Anderson’s Fig. 6 and col. 2, ll. 46-52. Furthermore, in view of our construction, Appellants’ argument that “the virtual desktops taught by Anderson correspond to desktops of a single computer, and not to at least two different computer desktops” (Reply Br. 4) is not commensurate with Appeal 2010-005730 Application 11/020,982 7 the scope of claim 23 which, unlike claims 1, 10 and 18, does not require multiple computers. We further agree with the Examiner and find that Anderson teaches or suggests that the input module is adapted to identify to which of the at least two different computer desktops user input corresponds. See Ans. 9-10 citing to Figure 3 of Anderson and quick switch buttons 311- 316. CONCLUSIONS Appellants have persuaded us of error in the Examiner’s determination that the cited references teach or suggest a composited desktop display displaying at least two active desktops corresponding to at least two different computers as recited by independent claims 1, 10 and 18. Accordingly, we will not sustain the Examiner’s rejection of those claims or of 2-9, 11-17 or 19-22 dependent therefrom. Appellants have not persuaded us of error in the Examiner’s determination that the cited references teach or suggest (i) two different computer desktops or (ii) that the input module is adapted to identify to which of the at least two different computer desktops user input corresponds as recited by independent claim 23. Accordingly, we will sustain the Examiner’s rejection of claims 23 and of claims 24-30 dependent therefrom and not separately argued. DECISION The rejection of claims 1-22 are reversed. The rejection of claims 23-30 are sustained. Appeal 2010-005730 Application 11/020,982 8 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED-IN-PART ke