Ex Parte Kodama et alDownload PDFPatent Trial and Appeal BoardNov 30, 201612329486 (P.T.A.B. Nov. 30, 2016) Copy Citation 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. 12/329,486 12/05/2008 Noboru Kodama JP920072027US1 (710.090) 8891 58127 7590 12/01/2016 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 EXAMINER LOWENBERGER, AARON J ART UNIT PAPER NUMBER 2173 MAIL DATE DELIVERY MODE 12/01/2016 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 NOBORU KODAMA and HIDETOSHI MORI _____________ Appeal 2016-003093 Application 12/329,486 Technology Center 2100 ______________ Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 25, 26, 28–32, 34–38, and 40–42. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-003093 Application 12/329,486 2 BACKGROUND Claim 25 recites the following: 25. A method comprising: storing a plurality of help information records in a memory of a device, the plurality of help information records comprising: a first help information record and at least one subsequent help information record; displaying an application window on a display device; displaying the first help information record in a help window on the display device including image position information representing a position of image operation information within the help window; acquiring event information generated by an input operation at a user interface associated with a user operating an application displayed in the application window; and displaying, in the help window, the at least one subsequent help information record including image position information representing a position of image operation information within the help window in response to the acquired event information. App. Br. 22 (Claims App’x). The Examiner rejected claims 25, 26, 28–32, 34–38, and 40–42 under 35 U.S.C. § 103(a) as unpatentable over Watson et al. (US 2009/0094552 A1; published Apr. 9, 2009) and Adkins et al. (US 2006/0053372 A1; published Mar. 9, 2006). Final Act. 3–9. Appeal 2016-003093 Application 12/329,486 3 ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments, and we disagree with Appellants that the Examiner erred. To the extent consistent with the analysis below, we adopt the Examiner’s findings, reasoning, and conclusions set forth in the Final Rejection and Answer. Appellants have waived arguments Appellants failed to timely raise or properly develop. See 37 C.F.R. §§ 41.37(c)(1)(iv), 41.41(b)(2); In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011). Claims 25, 26, 29–32, 34–38, and 40–42 Appellants contend the Examiner erred because Watson does not teach or suggest the “acquiring event information” and “displaying . . . at least one subsequent help information record” limitations as recited in claim 25. See App. Br. 17–18; Reply Br. 19–20. According to Appellants, “Watson is not concerned with displaying help information records, including ‘image position information,’ for the active user interface or the ‘application,’ as claimed.” App. Br. 18; Reply Br. 20. Appellants further argue that Adkins does not fill this gap because “Adkins does not teach the use of help windows but rather favors ‘displaying a partial graphical overlay on top of an actual, non-simulated graphical user interface of the computer program.’” App. Br. 18–19 (citing Adkins ¶ 31); Reply Br. 20–21. We find Appellants’ arguments unpersuasive. The Examiner found that Watson’s guided transition user interface 106 including a thumbnail image 112 that is a graphical representation of second user interface 124 satisfies “a first help information record in a help window.” See Ans. 3–4 (citing Watson ¶¶ 26, 55); Watson Fig. 1. We agree with the Examiner. Appeal 2016-003093 Application 12/329,486 4 Watson discloses that the guided transition user interface “may be used . . . as a set of help instructions,” Watson ¶ 55, and may include elements that “draw a user’s attention and prepare the user for interacting with the second user interface 124,” Watson ¶ 26. See Ans. 3–4. One such element of Watson’s guided transition user interface 106 is highlighted box 114. The highlighted box 114 satisfies the “image position information” element because the box indicates a portion of a thumbnail image 112 that corresponds to a portion of second user interface 124. See Ans. 3–4 (citing Watson ¶¶ 26, 55). The Examiner’s findings are consistent with the written description, which discloses that “image position information refers to images representing a position of the image operation information within the window frame 27.” See Spec. 28:14–15; Fig. 6. Further, contrary to Appellants’ arguments, the claims do not recite or require displaying help information records “for the active user interface or the ‘application.’” App. Br. 18; Reply Br. 20. Although the claims are interpreted in light of the specification, “limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). The Examiner additionally found, and we agree, that Adkins teaches the “acquiring” limitation by monitoring user input during execution of a script with step-by-step instructions in a user interface window. See Final Act. 5 (citing Adkins ¶ 36); Adkins, Abstract. The Examiner then found Adkins teaches “displaying . . . the at least one subsequent help information record . . . in response to the acquired event information” by displaying, in response to user-input, a second instruction step overlaid in a certain position in the user interface window. See Final Act. 5–6 (citing Adkins Fig. 12B; ¶¶ 106, 109). The Examiner concluded that combining Adkins’s and Appeal 2016-003093 Application 12/329,486 5 Watson’s teachings would have taught or suggested the final “displaying” limitation as a whole. See Final Act. 5–6. Appellants have not persuaded us that the Examiner’s findings and conclusion are erroneous. To the extent Appellants attack Watson and Adkins individually without addressing the Examiner’s combination, see Final Act. 3–6; Ans. 3–6, Appellants’ arguments are unpersuasive because “one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellants further argue “the proposed combination would appear to make Watson unfit for its stated purpose.” App. Br. 19; Reply Br. 21. Appellants assert that because “Watson is directed to focusing a user’s attention given the start or launch of a different user interface. . . [,] Watson . . . would have no reason to place [Adkins’s] ‘partial graphical overlay’ on [Watson’s] first user interface.” App. Br. 19; Reply Br. 21. We find Appellants’ arguments unpersuasive. As an initial matter, we find that Appellants have characterized Watson too narrowly. Although Watson does discuss focusing a user’s attention given the start or launch of a different user interface, see Watson ¶ 9, we find that Watson is more broadly directed to the use of a guided transition user interface for transitioning between user interfaces. See Watson, Abstract. In any event, we disagree with Appellants that there would be no reason to place Adkins’s partial graphical overlay on Watson’s first user interface. To the contrary, Adkins’s partial graphical overlay would be beneficial to Watson’s invention, as it would provide additional “help” to the user, e.g., instructions on how to use the current user interface or guidance on transitioning to another user interface. See Adkins, Figs. 12A–E. Appeal 2016-003093 Application 12/329,486 6 Lastly, Appellants argue “the Office has not provided a reasoned explanation for why one of ordinary skill would have made the proposed combination.” App. Br. 19; Reply Br. 21. Appellants assert “the Office has not explained what type of information could or would be overlaid . . . or where the overly [sic] would be placed,” “given that Watson teaches a transition between user interfaces.” App. Br. 19; Reply Br. 21. According to Appellants, “Adkins does not account for this, as it eschews the help window format entirely.” App. Br. 19; Reply Br. 21. We find Appellants’ arguments unpersuasive. Contrary to Appellants’ arguments, the Examiner did provide a reasoned explanation for combining Watson and Adkins, reasoning that “[o]ne would have been motivated to make such a combination because Adkins teaches that it provides a powerful and effective learning technique that is efficient and cost-effective . . . and because it would allow for broadening the teachings of Watson to apply to multi-step processes.” Final Act. 6; see also Ans. 6. Further, the Examiner found, and we agree, that “[o]ne of ordinary skill in the art would understand that it would be advantageous to apply the sequential, multistep help taught by Adkins to the guidance window taught by Watson.” Ans. 5–6. In our view, the details of applying Adkins’s plural help information records to Watson’s single help window in order to achieve plural help windows would have been within the “inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (holding that an obviousness analysis “may include recourse to logic, judgment, and common Appeal 2016-003093 Application 12/329,486 7 sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”). For the above reasons, Appellants have not persuaded us the Examiner erred in finding that the combination of Watson and Adkins teaches or suggests claim 25. Accordingly, we sustain the Examiner’s rejection of independent claim 25, as well as the rejection of claims 26, 29– 32, 34–38, and 40–42, which stand or fall together with claim 25. See App. Br. 17; Reply Br. 19. Claim 28 Claim 28 recites “wherein the image operation information relates to an operation object with respect to the application window.” App. Br. 23 (Claims App’x). Appellants argue that “claim 28 further clarifies that the image operation information refers back to ‘the’ application window, and is not information meant for assisting in operation of another or second user interface, as taught by Watson.” App. Br. 20; Reply Br. 23. Appellants also argue that [i]f the Office interprets “the second user interface” of Watson as “the” application Window, then the Office cannot plausibly allege that the following limitation . . . is taught or suggested, . . . “acquiring event information generated by an input operation at a user interface associated with a user operating an application displayed in the application window.” Reply Br. 23 (citation omitted). We find Appellants’ arguments unpersuasive. First, simply asserting that claim 28’s “image operation information . . . is not information meant for assisting in operation of another or second user interface” is insufficient to establish the Examiner erred. Cf. 37 C.F.R. § 41.37(c)(1)(iv) (“A Appeal 2016-003093 Application 12/329,486 8 statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); Lovin, 652 F.3d at 1357 (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). The Examiner provided sufficient findings and reasoning to support the Examiner’s rejection of claim 28, see Final Act. 3–7, and Appellants’ unsupported assertions have not persuaded us the Examiner erred. In particular, the Examiner found, and we agree, that the thumbnail image 112, including highlighted box 114, of Watson’s guided transition user interface 106 satisfies the language of claim 28. See Final Act. 7 (citing Watson, Fig. 1, ¶ 26). More specifically, thumbnail image 112, including highlighted box 114, comprises image information representing the operation of second user interface 124, which the Examiner interprets as “the application window.” See Final Act. 7; Ans. 7. Accordingly, Watson’s thumbnail image 112 satisfies “image operation information [that] relates to an operation object with respect to the application window.” See Final Act. 7 (citing Watson, Fig. 1, ¶ 26); Ans. 7. Next, Appellants’ argument that Watson does not teach or suggest the “acquiring event information” limitation is unpersuasive because the argument attacks Watson individually, yet the Examiner found Adkins teaches this limitation, see Final Act. 5 (citing Adkins ¶ 36), and concluded a combination of Watson’s and Adkins’s disclosures would have taught or suggested the claimed invention as a whole. See Final Act. 3–7; Ans. 3–7; Keller, 642 F.2d 413, 426 (CCPA 1981). Appeal 2016-003093 Application 12/329,486 9 For the above reasons, we sustain the Examiner’s rejection of claim 28. DECISION For the above reasons, we affirm the rejection of claims 25, 26, 28– 32, 34–38, and 40–42. 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation