Ex Parte Ouzts et al

Patent Trial and Appeal Board

Dec 31, 2012

09982337 (P.T.A.B. Dec. 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.
09/982,337 10/18/2001 Todd Ouzts MFCP.88143 6724
45809 7590 12/31/2012
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT CORPORATION)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
STEVENS, ROBERT
ART UNIT PAPER NUMBER
2142
MAIL DATE DELIVERY MODE
12/31/2012 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 TODD OUZTS, PHILIP FORTIER and CHRIS J. GUZAK
____________

Appeal 2010-000961
Application 09/982,337
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
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Application 09/982,337

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STATEMENT OF THE CASE
Appellants are appealing claims 1, 5-7, 9-12 and 15-20. Appeal Brief
2 (amended March 4, 2009). We have jurisdiction under 35 U.S.C. § 6(b)
(2012).
We affirm-in-part.

Introduction
The invention is directed to “a method and a computer system, and,
more particularly, a computer system and method that allows [sic] the
content of a collection of items to be graphically represented in a way that
provides an indication of the content without opening the container holding
the contents.” Specification 1.

Illustrative Claims
1. A method for use on a computer having a graphical
operating environment, comprising:

providing a collection of items within a container, the
container having an outer appearance;

enumerating the items that exist within the container;

determining whether a graphical preview can be
generated for each enumerated item;

generating a list of items for which a graphical preview
can be generated;

selecting, from the generated list, a desired number of
items to display on the outer appearance based upon a sort
criteria, wherein the sort criteria selects the items based upon
those items which were most recently modified in some way;
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displaying graphical previews for the selected items on
the outer appearance of the container, wherein the graphical
previews are not folders, and the graphical previews are
generated by a thumbnail extractor based on extensions
associated with the selected items; and

locating the graphical previews on the outer appearance
in a desired location, thereby enabling a computer user to more
easily identify the contents of the container without opening the
container.

9. A method in a computer system for displaying a
collection of content items within a container, comprising:

displaying a background appearance for the collection of
content items;

determining if any of the collection of content items can
be graphically represented;

if any of the collection of content items can be
graphically represented, sorting the content items that can be
graphically represented based on a sort criteria and displaying
on said background appearance graphical previews for the
sorted content items that can be graphically represented, and

displaying a textual message in addition to the
background appearance and the graphical previews, without
displaying the entire collection of content items.

Rejections on Appeal
Claims 9-12, 15, 18 and 19 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Baecker (U.S. Patent 5,586,237; issued December
17, 1996), Scott (U.S. Patent Number 6,545,687 B2; issued April 8, 2003
Appeal 2010-000961
Application 09/982,337

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and Gill (U.S. Patent Number 6,947,959 B1; issued September 20,
2005). Answer 4-8.
Claims 1, 5-7, 16, 17 and 20 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Baecker, Scott, Gill and Hatanaka (U.S. Patent
Number 5,680,558; issued October 21, 1997). Answer 8-12.

Issues on Appeal
Do Baecker, Scott and Gill, either alone or in combination disclose
“sorting content items that can be graphically represented based on a sort
criteria to display the sorted content items on a background appearance for
collection of content items” as recited in claim 9?
Do Baecker, Scott, Gill and Hatanaka, either alone or in combination
disclose “generating a list of items for which a graphical preview can be
generated” and “selecting, from the generated list, a desired number of items
to display on the outer appearance based upon a sort criteria, wherein the
sort criteria selects the items based upon those items which were most
recently modified in some way” as recited in claim 1?

ANALYSIS
The Examiner interprets the claim 1 limitation “locating the graphical
previews . . . to more easily identify the contents of the container without
opening the container” as “pertain[ing] to a system in which displays
representations of folders contents on against a background appearance.”
Answer 12-13. The Examiner, based upon his interpretation, finds that
“Baecker teaches showing icons on the outer appearance, of an insider
representation of an icon, and is supplemented by Scott who further teaches
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a system that displays a hierarchy of thumbnails encompassed in a
grouping.” Id. at 13-14 (reference numbers omitted). The Examiner
supplements the teachings of Baecker and Scott with Gill’s disclosure of “a
system used for displaying a plurality of thumbnails on a background
appearance.” Id. at 14. The Examiner relies upon Hatanaka to disclose a
system that extracts reduced size images from items and further teaches that
the extraction process recognizes file extensions in order to direct it to the
correct thumbnail for a given format. Id. at 14-15. The Examiner
supplements the combination of Baecker, Scott and Gill with the teachings
of Hatanaka. Id.
The Examiner further finds that Gill teaches a system for displaying a
plurality of thumbnails on a background appearance similar to that of
Baecker and Scott. Id. at 15. Appellants argue that Gill teaches a query
interface that formulates search criteria for digital assets and that the query
interface is not an outer appearance of a container or folder wherein the
outer appearance presents graphical previews as claimed. Appeal Brief 20.
We find Appellants’ arguments to be persuasive. Looking at figure 20 of
Gill, it is evident that Gill does not disclose a folder or container wherein a
plurality of thumbnails is displayed as claimed. See Answer 15. We agree
with Appellants’ contentions that Gill’s query palette is a “results interface
that displays the result of the query, which includes thumbnail images.”
Appeal Brief 20. Neither Baecker, Scott or Hatanaka addresses Gill’s
deficiencies therefore we do not sustain the Examiner’s rejection of claim 1,
as well as, those claims dependent therefrom.
However, we agree with the Examiner’s findings in regard to claim 16
and therefore sustain the Examiner’s rejection of claim 16, as well as, those
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claims dependent therefrom. Claim 16 does not require a container per se,
but indicates that a “background appearance rendering component” can be
used with a container or file. “An intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).

Appellants argue with respect to claim 9 that:
The cited portions of Gill teach a query interface that
allows a user to formulate search criteria for digital assets
and a “query palette,” which displays results of the query.
The search criteria specified by the user may include a last
date of modification. Nothing in Gill fairly teaches or
suggests sorting a collection of content items that can be
graphically represented, where the collection of content
items are stored within a container.

Appeal Brief 12.
We do not find Appellants’ arguments to be persuasive because
although it is evident that Gill does not disclose a folder or container,
wherein a plurality of thumbnails is displayed as claimed, as stated above,
claim 9 does not require a folder or container. Claim 9 is directed to sorting
and displaying content and the limitation “within a container” is only found
in the preamble without any support within the body of the claim. A
preamble is generally not accorded any patentable weight where it merely
recites the purpose of a process or the intended use of a structure, and where
the body of the claim does not depend on the preamble for completeness but,
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instead, the process steps or structural limitations are able to stand alone. See
In re Hirao, 535 F.2d 67, 70, 190 USPQ 15, 17-18 (CCPA 1976) and Kropa
v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Therefore
we agree with the Examiner’s findings and sustain the Examiner’s rejection
of claim 9, as well as those claims dependent therefrom.
However, we agree with Appellants’ arguments in regards to claim 15
because the claim requires a container or folder having a background
appearance and as stated above, we find that Gill does not disclose such a
feature. Therefore we reverse the Examiner’s rejection of claim 15, as well
as those claims depending therefrom.

DECISION
The rejections of claims 1, 5-7, 15, 17 and 19 are reversed.
The rejections of claims 9-12, 16, 18 and 20 are 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

Vsh