Ex Parte Margiloff et al

Patent Trial and Appeal BoardOct 31, 2012

10766964 (P.T.A.B. Oct. 31, 2012)

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. 10/766,964 01/29/2004 William A. Margiloff E03.001/U 4330 28062 7590 10/31/2012 BUCKLEY, MASCHOFF & TALWALKAR LLC 50 LOCUST AVENUE NEW CANAAN, CT 06840 EXAMINER ORR, HENRY W ART UNIT PAPER NUMBER 2175 MAIL DATE DELIVERY MODE 10/31/2012 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 WILLIAM A. MARGILOFF, ANTHONY M. RISICATO, and KEITH M. DALLARA ____________________ Appeal 2010-003814 Application 10/766,964 Technology Center 2175 ____________________ Before DEBRA K. STEPHENS, JOHN G. NEW, and JUSTIN BUSCH, Administrative Patent Judges. Per curium. DECISION ON APPEAL Appeal 2010- 003814 Application 10/766,964 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a Final Rejection of claims 1-4, 13-16, and 21. We have jurisdiction under 35 U.S.C. § 6(b). Claims 5-12 and 17-20 have been canceled. We AFFIRM. Introduction According to Appellants, the invention relates to a method and apparatus for an improved toolbar with functionality that may be manipulated in response to an indication from a user. (Abstract). STATEMENT OF THE CASE Exemplary Claim(s) Claim 1 is an exemplary claim and is reproduced below: 1. A method of facilitating use of a graphical user interface searchbar, comprising: initially displaying to a user a web page along with a web browser search bar, the web browser search bar including: (i) an initial set of toolbar buttons and (ii) a search feature user input portion usable to enter a search term to be transmitted to a remote search engine via a communication network, wherein the initial set of tool bar buttons is displayed to the user without displaying to the user a subsequent set of toolbar buttons in the searchbar; receiving a single indication from the user, the single indication being received via one of the initial set of toolbar buttons in the searchbar; and Appeal 2010- 003814 Application 10/766,964 3 responsive to said receiving of the single indication from the user, replacing the initial set of toolbar buttons with the subsequent set of toolbar buttons in the searchbar such that (i) the initial and subsequent sets of toolbar buttons are not simultaneously displayed to the user in the searchbar and (ii) the search feature user input portion remains displayed to the user along with the subsequent set of toolbar buttons. References Weber US 2004/0061720 A1 Apr. 1, 2004 Oren US 7,222, 303 B2 May 22, 2007 Chen US 2007/0192725 A1 Aug. 16, 2007 Rejections (1) Claims 1-4 and 13-16 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over Oren and Chen. (2) Claim 21 stands rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over Oren, Chen, and Weber. GROUPING OF CLAIMS Based upon Appellants’ arguments, we select representative claim 1 to decide this appeal for the group consisting of claims 1-4 and 13-16. (See Br. 5-7). Based upon Appellants’ arguments, we address claim 21 separately. (See Br. 7-8). Appeal 2010- 003814 Application 10/766,964 4 We accept Appellants’ grouping of the claims. We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009). ISSUE 1 35 U.S.C. § 103(a): claims 1-4 and 13-16 Appellants assert their invention is not obvious over Oren and Chen because the combination does not teach or suggest: (1) a search feature user input portion usable to enter a search term to be transmitted to a remote search engine via a communication network, wherein the initial set of tool bar buttons is displayed to the user without displaying to the user a subsequent set of toolbar buttons in the searchbar; (2) receiving a single indication from the user, the single indication being received via one of the initial set of toolbar buttons in the searchbar; and (3) responsive to said receiving of the single indication from the user, replacing the initial set of toolbar buttons with the subsequent set of toolbar buttons in the searchbar such that …the search feature user input portion remains displayed to the user along with the subsequent set of toolbar buttons as recited in claim 1. (Br. 5-7). Appeal 2010- 003814 Application 10/766,964 5 Specifically, Appellants contend Chen teaches “a scroll left (or scroll right) control symbol on a toolbar can be used to shift toolbar buttons.” (Br. 5). Instead, Appellants argue “the scroll control symbol itself would not be removed as a result of being selected . . . .” (Id.) (emphasis in original). In addition, Appellants argue the Examiner has not provided sufficient explanation of why one of ordinary skill in the art would have been motivated to combine the scroll control of Chen into the system of Oren absent impermissible hindsight. (Br. 6-7). Issue 1a: Has the Examiner erred in finding the combination of Oren and Chen teaches or suggests the invention as recited in claim 1? Issue 1b: Did the Examiner improperly combine Oren and Chen? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ assertions and conclusions (see Br. 5-7). We adopt as our own the findings and reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief (see Ans. 3-5 and 8-13). However, as outlined infra, we highlight and address specific findings and arguments regarding claim 1 for emphasis. The Examiner has articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the technique of Chen into the system of Oren. (Ans. 5 and 13). Appellants have not presented sufficient argument or evidence to persuade Appeal 2010- 003814 Application 10/766,964 6 us the Examiner erred in finding an ordinary artisan would have been motivated to use the scroll control of Chen in Oren’s system. Further, we are not convinced incorporating scroll control into Oren’s system used impermissible hindsight. Instead, we find an ordinary artisan would have possessed the skills and knowledge to incorporate the known technique of scroll control into the Oren system and incorporating scroll control would have been incorporating a known technique. Accordingly, the Examiner did not err in finding the combination of Oren and Chen teaches or suggests: (1) a search feature user input portion usable to enter a search term to be transmitted to a remote search engine via a communication network, wherein the initial set of tool bar buttons is displayed to the user without displaying to the user a subsequent set of toolbar buttons in the searchbar; (2) receiving a single indication from the user, the single indication being received via one of the initial set of toolbar buttons in the searchbar; and (3) responsive to said receiving of the single indication from the user, replacing the initial set of toolbar buttons with the subsequent set of toolbar buttons in the searchbar such that . . . the search feature user input portion remains displayed to the user along with the subsequent set of toolbar buttons as recited in independent claim 1 and claims 2-4 and 13-16, not separately argued. Therefore, the Examiner did not err in rejecting claims 1-4 and 13- 16 under 35 U.S.C. § 103(a) for obviousness over Oren and Chen. Appeal 2010- 003814 Application 10/766,964 7 ISSUE 2 35 U.S.C. § 103(a): claim 21 Appellants assert their invention is not obvious over Oren, Chen, and Weber because Appellants do not understand the Examiner’s reasoning for the combination. (Br. 7-8). Specifically, Appellants contend nothing in Weber or the other references would lead one of ordinary skill in the art to create a toolbar as recited. (Br. 8). Issue 2: Has the Examiner improperly combined Oren, Chen, and Weber? ANALYSIS We find the Examiner has articulated reasoning with a rational underpinning as to why an ordinary artisan would incorporate the techniques of Weber and Chen into the system of Oren. (Ans. 5, 8, 13, and 14). Appellants have not presented persuasive evidence or argument as to show error in the Examiner’s finding. We disagree that the Examiner’s reasoning is not “understandable.” Accordingly, the Examiner did not err in finding the combination of Oren, Chen, and Weber teaches or suggests the invention as recited in claim 21. Therefore, the Examiner did not err in rejecting claim 21 under 35 U.S.C. § 103(a) for obviousness over Oren, Chen, and Weber. Appeal 2010- 003814 Application 10/766,964 8 DECISION The Examiner’s rejection of claims 1-4 and 13-16 as unpatentable under 35 U.S.C. § 103(a) as being obvious over Oren and Chen is affirmed. The Examiner’s rejection of claim 21 as unpatentable under 35 U.S.C. § 103(a) as being obvious over Oren, Chen, and Weber is affirmed. 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) (2011). AFFIRMED ke