Ex Parte Kodama et al

Patent Trial and Appeal Board

Nov 30, 2016

12329486 (P.T.A.B. Nov. 30, 2016)

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.
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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.

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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.
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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
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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.
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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
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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
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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).
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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