Ex Parte Horiuchi

Patent Trial and Appeal Board

Jun 27, 2014

11673693 (P.T.A.B. Jun. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/673,693 02/12/2007 Yoshio Horiuchi JP920050174US1 3236
75949 7590 06/27/2014
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
TILLERY, RASHAWN N
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
06/27/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YOSHIO HORIUCHI1
__________

Appeal 2012-002629
Application 11/673,693
Technology Center 2100
__________

Before ERIC B. GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
an apparatus for notifying a user of updates to overlapping windows on a
display. The claims have been rejected as being directed to nonstatutory
subject matter and as being obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

1 According to Appellant, the Real Party in Interest is International Business
Machines Corporation (App. Br. 2).
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Application 11/673,693

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STATEMENT OF THE CASE
In conventional multi-window systems, “[w]hen a plurality of
windows are displayed in an overlapping manner, . . . a user can perform
operations only on the topmost, active window,” and if the contents of a
lower window are updated, a user cannot check the updated contents if the
lower window is hidden (Spec. 1, ¶ 3).
The Specification discloses a control apparatus by which,
when display contents of any of the plurality of windows 14
displayed in an overlapping manner are updated, [an] update
notification window 16 having the displayed update notification
18 is displayed. . . . Accordingly, even when display contents of
the window 14 which is displayed in an overlapping manner
and thereby hidden are updated, it enables the user to recognize
the update.
(Id. at 7, ¶ 28.)
Claims 1-6 and 9-25 are on appeal.2 Claim 1, 11, and 20 are
illustrative and read as follows:
1. A control apparatus for controlling display on a display apparatus
displaying a plurality of windows in an overlapping manner, comprising:
a detection unit for detecting that contents to be displayed on at least
one of the plurality of windows are updated; and
an update notification unit for displaying an update notification
including information identifying a window having updated display contents
on an update notification window provided common to the plurality of
windows, in response to the detection of an update of the display contents by
the detection unit.

2 The Examiner has stated that claims 7 and 8 would be allowable if
rewritten in independent form (Office Action mailed Mar. 30, 2011, page 9).
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11. A computer program product for controlling display on a display
apparatus displaying a plurality of windows in an overlapping manner
comprising:
a computer usable storage medium having computer usable program
code embodied therewith, the computer usable program code comprising:
computer usable program code configured to detect that contents to be
displayed on at least one of the plurality of windows are updated; and
computer usable program code configured to display an update
notification including information identifying a window having updated
display contents on an update notification window provided common to the
plurality of windows, in response to the detection of an update of the display
contents.

20. A control apparatus for controlling display on a display apparatus
displaying a plurality of windows in an overlapping manner, comprising:
a detection unit for detecting that content to be displayed on at least
one of the plurality of windows has been updated; and
an update notification unit for displaying an update notification on
said display apparatus, said update notification including an identification of
which of said plurality of windows contains content for which an update has
been detected by said detection unit.

The claims stand rejected as follows:
Claims 11-15 under 35 U.S.C. § 101 on the basis that these claims are
nonstatutory because they encompass a propagation medium (Ans. 4);
Claims 20-25 under 35 U.S.C. § 101 on the basis that these claims are
nonstatutory because they encompass software per se (Ans. 5);
Claims 1-5 and 9-25 under 35 U.S.C. § 103(a) as obvious based on
Karstens3 and Cheung4 (Ans. 5); and

3 Karstens, US 2006/0005142 A1, Jan. 5, 2006.
4 Cheung et al., US 7,523,397 B2, Apr. 21, 2009.
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Claim 6 under 35 U.S.C. § 103(a) as obvious based on Karstens,
Cheung, and Sims5 (Ans. 10).
I.
The Examiner has rejected claims 11-15 under 35 U.S.C. § 101 as
being nonstatutory “because the computer usable storage medium as defined
in the specification could be a propagation medium (see paragraphs [0020]
and [0021]). Propagation mediums are non-statutory.” (Ans. 4.) The
Examiner noted that “an amendment to the claims . . . excluding
transmission mediums, such as non-transitory” would overcome the
rejection (id.).
Appellant argues that “[t]he term ‘storage media’ would not include
any embodiments in which the medium is merely a propagation medium, as
opposed to a medium that actually stores data” (App. Br. 11). Appellant
argues that, although “the specification define[s] computer usable or
computer readable media broadly . . . , the term at issue in the claims is not
‘computer usable media,’ but is ‘computer usable storage medium.’
Appellant does not believe that the specification defines ‘computer usable
storage medium’ as including transitory or propagation media.” (Id. at 11-
12.) Appellant argues that “[w]hile it may be true that data is maintained in
a propagation medium during transmission, that should be irrelevant. The
question is whether a propagation medium would be considered by one of
skill in the art to be a ‘storage medium.’” (Reply Br. 4.)

5 Sims, US 2005/0278654 A1, Dec. 15, 2005.
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We agree with the Examiner that the broadest reasonable
interpretation of the claims encompasses a propagation medium, which is
nonstatutory subject matter. “If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
The plain meaning of “storage medium” is a medium that stores
program code; i.e., a medium that maintains the program code for a period
of time. As Appellant has conceded, data is maintained—that is, stored—in
a propagation medium during transmission of the data. Thus, a propagation
medium is a “storage” medium in the broadest reasonable sense of the term.
As the Examiner noted, if Appellant does not intend for the claim language
to encompass transitory media, the rejection can be overcome by amending
the claims to recite “non-transitory” media or the equivalent.
Claims 12-15 have not been argued separately and therefore fall with
claim 11. 37 C.F.R. § 41.37(c)(1)(vii).
II.
The Examiner has rejected claims 20-25 as nonstatutory on the basis
that “the control apparatus as defined in the specification could be merely
software (see paragraph [0024]. The apparatus must be tied to some
hardware element.” (Ans. 5.)6

6 As Appellant has pointed out (App. Br. 13-14), paragraph 24 of the
Specification does not support the Examiner’s reasoning. However, another
part of the Specification states that “various aspects of the present invention
may take the form of an entirely hardware embodiment, [or] an entirely
software embodiment (including firmware, resident software, micro-code,
etc.)” (Spec. 4, ¶ 19).
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Appellant argues that “[s]oftware alone could not perform the
functionality of controlling a display as recited in the claims. Only an
appropriately programmed machine can met [sic] the language of claims 20
and 24.” (App. Br. 14.)
Appellant’s position is supported by the Specification, which states:
The program installed on the computer 1900 to cause the
computer 1900 to function as the control apparatus 20 contains
a plurality of window management unit modules, a detection
unit module, a update notification unit module, [etc.]. These
programs or modules are executed by the CPU 2000 to cause
the computer 1900 to function as a plurality of the window
management units 22, the detection unit 24, the update
notification unit 26, [etc.].
(Spec. 17, ¶ 60, emphasis added.) This description is consistent with
Appellant’s position that the “detection unit” and “update notification unit”
recited in claim 20 are more than mere software.
The Examiner argues that “software alone could in deed [sic] perform
the functionality of controlling a display because that is precisely what
software does. . . . Appellant is claiming a program from [sic, for]
controlling a machine. Nowhere in Appellant’s claim language is there
explicitly claimed a machine.” (Ans. 12.)
The Examiner does not, however, cite any evidence or provide any
evidence-based technical reasoning to support his position that the control
apparatus defined by claim 20 could be nothing more than software. “[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability. . . . After
evidence or argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of evidence
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with due consideration to persuasiveness of argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner has not shown, by a preponderance of the evidence,
that claim 20 encompasses a purely software embodiment, and therefore has
not shown that claim 20 encompasses non-statutory subject matter. The
rejection of claims 20-25 under 35 U.S.C. § 101 is reversed.
III.
The Examiner has rejected claims 1-5 and 9-25 as obvious based on
Karstens and Cheung, and has rejected claim 6 as obvious based on
Karstens, Cheung, and Sims. The same issue is dispositive for both
rejections.
The Examiner finds that Karstens discloses a control apparatus
comprising the detection unit and update notification unit recited in claim 1,
but does not disclose that the update notification includes information
identifying a window having updated contents (Ans. 5-6). The Examiner
finds that Cheung discloses a notifications manager user interface for
managing notifications from different sources and concludes that it would
have been obvious to include Cheung’s notification manager in Karstens’
user interface “to allow [a] user to better manage the various kinds of
notifications and alerts that are presented to a user on a display” (id. at 6).
Appellant argues that “neither of the cited references teaches or
suggests the claimed ‘detection unit for detecting that contents to be
displayed on at least one of the plurality of [overlapping] windows are
updated,’” as recited in claim 1 (App. Br. 15, alteration added by Appellant).
Appellant argues that Karstens instead teaches “displaying an alert to the
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user that the focus is about to change from one window to another” (id.),
which is different from detecting an update to a hidden window because
there may be many changes in the contents of an underlying
window that do not result in a change of focus to that window.
Karsten’s [sic] system would not detect these content changes
like the claimed “detection unit.” Similarly, not every “non-
user initiated focus change” need necessarily result from a
change in the content of a particular window.
(Id. at 17.) Appellant also argues that “Cheung does not remedy this
deficiency of Karsten and was cited for a different purpose” (id.).
We agree with Appellant that the Examiner has not shown that
Karstens discloses “a detection unit for detecting that contents to be
displayed on at least one of the plurality of windows are updated,” as
required by claim 1. Karstens addresses the following type of problem:
a user . . . edits a document in a first application window, and
conducts an on-line chat session in a second application
window. While the first application window has the input
focus, the operating system delivers all keystrokes to that
application process. If an instant message arrives for the
second application window, however, the operating system may
change the input focus from the first window to the second
window unbeknownst to the user.
(Karstens 1, ¶ 3.) If the user is unaware of the focus change, he may
inadvertently provide input intended for the application window to the on-
line chat window (id.).
Karstens avoids this problem by providing a “controller [ ] configured
to detect an operating system generated message indicating a focus change
from a first window to a second window. Once detected, the controller is
configured to inhibit user input for a predetermined time.” (Id. at 1, ¶ 4.)

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That is,
[w]hen focus monitor 30 detects that [the] operating system has
placed a focus change on message queue 32, it proceeds to
“look” for messages indicating user input from keyboard 18 or
other user input device in message queue 32. Focus monitor 30
then discards the user input messages for a predetermined time.
(Id. at 2, ¶ 21.)
Thus, rather than detecting an update in a hidden window and
notifying the user of the update, as recited in claim 1, Karstens detects
messages indicating that the operating system is about to shift the focus from
the currently active window to another window and then inhibits user input
for a certain amount of time. The focus monitor can also alert the user to the
impending focus change by, e.g., displaying a dialog (id. at 3, ¶ 26), but as
Appellant has pointed out, detecting a focus change and detecting an update
to a window are not the same thing: “Karsten[s] is teaching the monitoring
of a different event than that claimed” (App. Br. 17).
The Examiner argues that “the alert of a focus change implies that
there are contents to be displayed on a window that is not the window of
primary focus and the focus change is brought upon by the ‘updating’ of that
window” (Ans. 13). We disagree. It is true that in the specific example of
an application and an on-line chat discussed by Karstens, a focus change
would coincide with an update of the chat window, but Karstens’ focus
monitor does not detect the update of the chat window; it “detects that [the]
operating system has placed a focus change on message queue 32” (Karstens
2, ¶ 21).
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That is, when an instant message is received, the communications
driver may call an API in the operating system indicating the arrival of the
message (id. at 2, ¶ 19).
Operating system 28 may then generate and place two messages
on message queue 32. The first is a message for [application]
process 34 indicating that it will lose the input focus. The
second is a message for [instant message] process 36 indicating
that it is receiving the input focus. Of course, the associated
text of the instant message for process 36 is also placed on
message queue 32.
(Id.)
Importantly, however, the focus monitor does not detect the text of the
incoming instant message; i.e., the update to the chat window. Rather,
“[f]ocus monitor 30 begins by looking at the message queue 32 . . . for one
or more messages indicating a change in focus. . . . These messages may,
for example, be WM_KILLFOCUS or WM_SETFOCUS messages as sent
by WINDOWS to the application processes 34, 36.” (Id. at 2, ¶ 23.) Thus,
Karstens’ focus monitor detects only whether the operating system is about
to change the focus to a different window, not whether the window being
given the focus has updated contents.
In summary, the Examiner’s finding that Karstens discloses “a
detection unit for detecting that contents to be displayed on at least one of
the plurality of windows are updated,” as required by claim 1, is not
supported by the evidence.
Claims 11 and 20, the only other independent claims, also require
detecting updated contents on one of a plurality of windows. We therefore
reverse the rejection of claims 1-5 and 9-25 under 35 U.S.C. § 103(a) as
obvious based on Karstens and Cheung. The rejection of claim 6 based on
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Karstens, Cheung, and Sims relies on the same erroneous fact-finding
(Ans. 10-11) and is reversed for the reason discussed above.
SUMMARY
We affirm the rejection of claims 11-15 under 35 U.S.C. § 101 as
encompassing non-statutory subject matter.
We reverse the rejection of claims 20-25 under 35 U.S.C. § 101 as
encompassing nonstatutory subject matter.
We reverse the rejection of claims 1-5 and 9-25 under 35 U.S.C.
§ 103(a) based on Karstens and Cheung.
We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) based on
Karstens, Cheung, and Sims.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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