Ex Parte Matthews et al

Patent Trial and Appeal Board

Aug 17, 2017

12972611 (P.T.A.B. Aug. 17, 2017)

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.
12/972,611 12/20/2010 David Matthews 331081-US-NP 1243
69316 7590 08/21/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
BASOM, BLAINE T
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
08/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MATTHEWS, MATTHEW WORLEY,
NILS SUNDELIN, and TSZ YAN WONG
Appeal 2017-005460
Application 12/972,611
Technology Center 2100
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JOHNNY A. KUMAR, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21—40. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
Claim 21 is illustrative:
21. A computer-implemented method comprising:
receiving a first selection of a first application for parallel presentation
in an immersive environment fully occupying an available display area of
one or more displays associated with a computing device;
responsive to the first selection, determining an amount of space of a
primary region of the immersive environment to allocate for display of the
first application;
Appeal 2017-005460
Application 12/972,611
responsive to the first selection, causing content of the first
application to be displayed in the space of the primary region allocated for
display of the first application;
receiving a second selection of a second application for parallel
presentation with the first application in the immersive environment on the
one or more displays associated with the computing device;
responsive to the second selection, determining an amount of space of
a nonprimary region of the immersive environment to allocate for display of
the second application, the amount of space of the non-primary region to
allocate for the display determined based on a predefined size requirement;
responsive to the second selection, causing selected content of the
second application to be displayed in the space of the non-primary region
allocated for display of the second application, the selected content of the
second application based on the predefined size requirement and the selected
content being less than content of the second application that would be
displayed in the space of the primary region allocated for display, the
selected content of the second application fully occupying the non-primary
region, the content of the first application fully occupying the primary
region, and the non-primary region and the primary region fully occupying
the immersive environment; and
enabling interaction with the second application through the non­
primary region of the immersive environment and with the first application
presented in the primary region of the immersive environment.
THE REJECTIONS1
Claims 21 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent No. 5,889,517 issued March 30, 1999 to
Ueda et al. ("Ueda"), over U.S. Patent Application Publication No.
2009/0106691 Al published April 23, 2009 to Ballard et al. ("Ballard"), and
1 Throughout this opinion, we refer to (1) the Final Rejection mailed June
22, 2015 (“Final Act.”); (2) the Appeal Brief filed February 22, 2016
(“Br.”); and (3) the Examiner’s Answer mailed September 22, 2016
(“Ans.”).
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Application 12/972,611
also over U.S. Patent Application Publication No. 2005/0044058 A1
published February 24, 2005 to Matthews et al. ("Matthews").
Claims 22—27, 30, and 33 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ueda, Ballard and
Matthews, which is described above (see e.g.[,] the rejection for claim 21),
and also over U.S. Patent No. 5,880,725 to Southgate et al. ("Southgate").
Claims 28 and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over combination of Ueda, Ballard, Matthews, and Southgate,
which is described above, and also over U.S. Patent Application Publication
No. 2006/0015820 Al published January 19, 2006 to Wood ("Wood").
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over combination of Ueda, Ballard, Matthews, and Southgate, which is
described above, and also over U.S. Patent Application Publication No.
2007/0180401 Al published August 2, 2007 to Singh et al. ("Singh").
Claims 34 and 35 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the U.S. Patent to Ueda, which is cited above, and
also over the U.S. Patent Application Publication to Ballard, which is also
cited above.
Claims 36,37, 39, and 40 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ueda and Ballard,
which is described above, and also over U.S. Patent No. 5,880,725 issued
March 9, 1999 to Southgate et al. ("Southgate").
Claim 38 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ueda, Ballard, and Southgate, which is
described above, and also over U.S. Patent No. 7,484,182 B2 issued January
27, 2009 to Smith et al. ("Smith").
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Appeal 2017-005460
Application 12/972,611
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 21
under 35 U.S.C. § 103(a) because:
Referring to Figs. 1, 1A, and 5 of Ueda it is clear that the windows
displayed in areas 110 and 120 do not fully occupy the available
display area, and in fact are surrounded by some sort of other framing
interface that occupies a substantial portion of the available display
area shown.
Br. 14 (emphasis added).
2. Appellants also contend that the Examiner erred in rejecting claim
21 under 35 U.S.C. § 103(a) because:
While Fig. 2 of Ballard appears to show a display area substantially
occupied by various windows, the windows shown are all generated
by a single application ...
Br. 15 (emphasis added).
3. Appellants also contend that the Examiner erred in rejecting claim
23 under 35 U.S.C. § 103(a) because:
Ueda states “in any multi-window control system described
above, the display control device includes a calculating device
for calculating the area per window of the inactive windows on the
basis of both the number of inactive windows and the area of the
second display area” (Ueda, column 1 lines 56-60). Clearly the area
per window of Ueda is being defined by the system of Ueda itself, not
by the applications that are to be presented within said system. This
technique of calculating area per window is a fundamental
operating principle of the system of Ueda. As such, modifying Ueda
with any reference, let alone Southgate, to cause the areas per window
to be defined by the applications that are to be presented by the
system of Ueda instead of being calculated by the system itself is
improper. “If the proposed modification or combination of the
prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
sufficient to render the claims prima facie obvious.”
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Appeal 2017-005460
Application 12/972,611
Br. 17 (emphasis added).
Issue on Appeal
Did the Examiner err in rejecting claims 21—40 as being obvious
because the references fail to teach or suggest the claim limitations at issue?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Final Office Action from which
the appeal is taken (Final Act. 2—26); and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 24—32) in response to the
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner. We highlight the following.
As to Appellants’ above contention 1, the Examiner relies upon
Ballard, rather than Ueda for the “fully occupying” teaching recited in claim
21. Ans. 25 (citing Ballard, paragraph 0030 and Fig. 2). Appellants’
arguments regarding Ueda’s alleged shortcomings in this regard (Br. 16) do
not show nonobviousness where, as here, the rejection is based on the cited
references’ collective teachings of Ueda, Ballard, and Matthews (Final Act.
3-7). See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As to Appellants’ above contention 2, the Examiner finds, and we
agree, Ballard explicitly teaches multiple applications. Ans. 25—26. (citing
Ballard, 1 [0002]).
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Application 12/972,611
As to Appellants’ above contention 3, the Examiner finds, and we
agree:
Ueda’s system would still function, i.e. display active windows
in a first area and inactive windows in a second area, if the area per
window was instead based on requirements specified by the
applications like taught by Southgate. The proffered modification
of Ueda with Southgate would not require a substantial reconstruction
and redesign of Ueda’s system. The system would still calculate the
area required to display each of the inactive windows, but would base
the calculations on parameters provided by the applications instead of
on the number of inactive windows and the size of the second display
area. Consequently, the Examiner respectfully maintains that
the proposed modification of Ueda with Southgate is proper.
Ans. 26.
In addition, we find no evidence in the record before us that the
combination of Ueda’s teachings with those of Southgate would change
Ueda’s principle of operation. In summary, we find combining the
respective reference teachings in the manner proffered by the Examiner
would have merely resulted in “the predictable use of prior art elements
according to their established functions,” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007); see also Ans. 8. We find the Examiner provided
sufficient articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness. See KSR, 550 U.S. at 418; see also
Ans. 8. We are further mindful that the skilled artisan would “be able to fit
the teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR,
550 U.S. at 420-21.
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Application 12/972,611
This reasoning is applicable here. Accordingly, on this record, we are
not persuaded the Examiner erred by combining the cited references under §
103.
Regarding claims 30, 31, 34, and 40, although Appellants raise
additional arguments for patentability (Br. 18—28), we find that the
Examiner has established the references teach or suggest the claim
limitations by a preponderance of the evidence and sufficiently rebutted in
the Answer each of the arguments. Ans. 27—32. For dependent claims 22,
and 24—29, Appellants rely on the arguments presented for claim 21. Br. 18.
For dependent claims 32 and 33, Appellants rely on the arguments presented
for claim 30. Br. 23. For dependent claims 35—39, Appellants rely on the
arguments presented for claim 34. Br. 26—27. Therefore, we adopt the
Examiner’s findings and underlying reasoning, which are incorporated
herein by reference.
We observe that no Reply Brief is of record to rebut such findings,
including the Examiner’s responses to Appellants’ arguments.
Consequently, Appellants have failed to show error in the Examiner’s
rejections of claims 21—40.
DECISION
The Examiner’s decision rejecting 21—40 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)(l)(iv).
AFFIRMED
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