Ex Parte Pandita et al

Patent Trial and Appeal BoardDec 31, 2012

10924683 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUNIL PANDITA, DIRIE HERZI, and MATTHEW G. PAGE ____________ Appeal 2010-001715 Application 10/924,683 Technology Center 2600 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The invention enhances user control of a Basic Input/Output System (BIOS) by providing “a display configuration dialog box that presents available display configurations for selection.” Spec. 13, Abstract of the Disclosure. Appeal 2010-001715 Application 10/924,683 2 Claim 1 is illustrative, with a key disputed limitation emphasized: 1. An information handling system comprising: a processor operable to run applications that generate information; plural display processing units, each display processing unit operable to communicate the information for presentation at one or more display devices; a keyboard controller operable to accept inputs from a keyboard; a BIOS interfaced with the processor, the display processing units and the keyboard controller, the BIOS operable to initiate one of plural display configurations of the display processing units to present the information; and a display configuration engine interfaced with the BIOS and operable to retrieve the plural configurations, to present available of the plural configurations in a dialog box communicated through one or more of the display processing units, and to communicate to the BIOS a display configuration selected at the dialog box for initiation by the BIOS: wherein the available display configurations comprise at least one configuration having an integrated display and at least one configuration having an external display connected by a cable. The Examiner relies on the following references as evidence of unpatentability: Ono Ogura Kizaki US 2003/0067446 A1 US 2004/0095292 A1 US 2004/0178968 A1 Apr. 10, 2003 May 20, 2004 Sep. 16, 2004 Sall US 6,859,219 B1 Feb. 22, 2005 Appeal 2010-001715 Application 10/924,683 3 Gibson US 2005/0120308 A1 June 2, 2005 Ciolac US 6,970,173 B2 Nov. 29, 2005 THE REJECTIONS The Examiner rejected claims 1-3, 7, 8, 10, 13, 15-17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Kizaki and Sall.1 The Examiner rejected claims 4, 9, and 11 under § 103(a) as unpatentable over Kizaki, Sall, and Ono. The Examiner rejected claims 6 and 18 under § 103(a) as unpatentable over Kizaki, Sall, and Ogura. The Examiner rejected claim 12 under § 103(a) as unpatentable over Kizaki, Sall, Ono, and Gibson. The Examiner rejected claim 14 under § 103(a) as unpatentable over Kizaki, Sall, and Gibson. The Examiner rejected claims 5 and 20 under § 103(a) as unpatentable over Kizaki, Sall, and Ciolac. ISSUE Based upon our review of the record, the arguments proffered by Appellants, and the findings of the Examiner, we address the following issue: 1 Throughout this opinion, we refer to the Appeal Brief filed August 4, 2009 (“App. Br.”), the Examiner’s Answer mailed October 30, 2009 (“Ans.”), and the Reply Brief mailed November 16, 2009 (“Reply Br.”). We note the Answer’s “Evidence Relied Upon” section (p. 2) lists only Kizaki and Sall, but the “Grounds of Rejection” section clearly presents the rejections over the six prior art references mentioned in this opinion. Appeal 2010-001715 Application 10/924,683 4 Under § 103, has the Examiner erred in determining that it would have been obvious to modify Kizaki’s BIOS setup menu so as to display only available display configurations for selection?2 ANALYSIS As reflected by the emphasized language of reproduced claim 1, Appellants argue that Kizaki and Sall fail to suggest a display configuration engine that presents “available of the plural configurations in a dialog box.” App. Br. 3-4. The Examiner determined that this feature is met by an obvious modification of Kizaki’s BIOS setup menu in view of Sall’s reconfiguration screen. Ans. 4. Before turning to Appellants’ particular arguments, we address Kizaki, Sall, and the proposed modification below. 2 In view of the Examiner’s findings and Appellants’ arguments, discussed infra (see pp. 7 and 9), the Examiner and Appellants clearly view the independent claims as restricting the presented available display configurations to only connected monitors. However, the independent claims do not explicitly restrict the presented available configurations to only connected monitors. Nonetheless, to facilitate prosecution by addressing this issue as raised before us, we treat the independent claims as implicitly having the agreed upon limitation. Appeal 2010-001715 Application 10/924,683 5 Kizaki Kizaki’s Figures 3 and 6 are reproduced below. Kizaki’s Figure 3, reproduced above left, is a diagram depicting the cited BIOS setup menu. Kizaki’s Figure 6, reproduced above right, is a perspective view of the cited laptop and a connected Digital Visual Interface (DVI) monitor. As illustrated, Kizaki’s BIOS setup menu lists permutations of a laptop’s integrated Liquid Crystal Display (LCD) monitor (143) and connectable DVI and RGB monitors. Kizaki, ¶¶ [0043-44]. Selecting a permutation instructs the BIOS to initialize the corresponding monitors. Id. In the illustrated example, only the DVI monitor (145) is connected. Kizaki, Fig. 6. Nonetheless, the menu lists permutations of the unconnected RGB monitor. Kizaki, Fig. 3. Appeal 2010-001715 Application 10/924,683 6 Sall Sall’s Figures 1 and 3 are reproduced below. Sall’s Figure 3, reproduced above left, is a diagram of the cited reconfiguration screen. Sall’s Figure 1, reproduced above right, is a perspective view of the cited laptop. As illustrated, Sall’s reconfiguration screen lists session options for a laptop’s primary monitor (102) and auxiliary monitors (104, 106, 108). Sall, col. 4, ll. 8-40. The reconfiguration screen is presented when the laptop senses that an auxiliary monitor has been enabled. Sall, col. 3, ll. 46-67. Selecting the “single session” option (302) instructs the system to display a single image across the viewable monitors. Sall, col. 4, ll. 10-25. Selecting the “multiple session” option (304) instructs the system to display multiple images respectively on the viewable monitors, i.e., one image per monitor. Sall, col. 4, ll. 26-40. According to Sall, “additional reconfiguration screens would be displayed to allow the computer user to select which display devices will display which session/application.” Sall, col. 4, ll. 28-32. Sall also contemplates: Appeal 2010-001715 Application 10/924,683 7 [A]dditional reconfiguration options could be included in reconfiguration screen 300 of FIG. 3, such as a reconfiguration option that allows the computer user to configure computer 110 to display one image across two display devices, while displaying a second image on a third display device. Sall, col. 4, ll. 45-50. Examiner’s Findings and Determinations The Examiner finds that Kizaki’s menu does not present configurations of only “available (currently connected)” monitors. Ans. 5. The Examiner determined, however, that “[i]t would have been obvious … to present the available configurations in a dialog box, as taught by Sall[.]” Ans. 4-5. The Examiner clarifies: Kizaki teaches configurations that “could be used”. Since the appellant has argued previously that the present specification has defined “available” as specifically meaning for attached displays, Sall has been used by the examiner to teach presenting “available” (for attached displays) configurations. Ans. 12. We agree with the Examiner’s findings and determinations. Kizaki’s laptop presents a menu of display configurations for both connected and unconnected monitors. Sall’s laptop senses the connected monitors and then presents a reconfiguration screen of display configurations for only connected monitors. The Examiner proposes to: modify Kizaki’s BIOS setup so as to likewise sense the connected monitors; and modify Kizaki’s menu so as to likewise present only display configurations for connected Appeal 2010-001715 Application 10/924,683 8 monitors. Given that Kizaki’s and Sall’s systems sense connected monitors3 and present a menu/screen of user-selectable display configurations, the modification constitutes a “mere application of a known technique [i.e., Sall’s sensing and then presenting of ‘available’ monitors] to a piece of prior art ready for the improvement [i.e., Kizaki’s BIOS setup and menu].” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).4 Such modifications are prima facie obvious. Id. Appellants’ Arguments Appellants argue: “Kizaki’s Figure 3 discloses only a setup menu that determines how a system is setup to present information at a display on startup. . . . No action is taken for a selection made in Kizaki until the system is activated.” Reply Br. 1. As best we can discern, Appellants contend that Kizaki’s and Sall’s cited teachings are disparately directed to startup and post-startup processes, respectively. Cf., Kizaki, ¶¶ [0032] and [0034]; Sall, col. 4, ll. 1-3. Appellants’ argument is not persuasive. Kizaki and Sall are mutually directed to a menu/screen for user selection of a system’s display 3 Kizaki also teaches a sensing of connected monitors. Namely, if the menu’s “Automatic Selection” option is selected, the BIOS setup senses the connected monitors and then initializes the connected monitor of highest priority. Kizaki, ¶ [0045]. 4 Note that, for many common choices, consumers are presented a pared down list of only presently available options; e.g., a sold out menu item is erased from a restaurant chalkboard. Thus, the modification of Kizaki’s menu also constitutes a common sense improvement. See KSR, 550 U.S. at 421 (“Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”). Appeal 2010-001715 Application 10/924,683 9 configurations. See supra, pp. 5-6. Based on this similarity, the proposed modification calls for merely sensing and then presenting available configurations in a menu of one system (Kizaki’s laptop) in view of the sensing and then presenting of available configurations in a reconfiguration screen of another system (Sall’s laptop). Appellants have not submitted any evidence that, despite the systems’ noted similarities and the modification’s apparent simplicity; Kizaki’s and Sall’s systems are nonetheless too different to collectively suggest the modification. See e.g., KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellants further argue that neither Kizaki’s menu nor Sall’s reconfiguration screen presents only available display configurations. For example, Appellants contend that “Kizaki does nothing more than present all of the different types of display configurations that could be supported by a computer, not the available display configurations.” App. Br. 3; see also Reply Br. 1. And, Appellants further contend that “Sall merely asks how to use a newly detected display.” App. Br. 4; see also Reply Br. 1. Appellants’ arguments are not persuasive, for two reasons. First, Appellants’ arguments address the at-issue subject matter only in view of Kizaki and Sall individually. The arguments do not address the proposed modification of Kizaki’s system in view of Sall, which is plainly asserted as suggesting the at-issue subject matter. “[O]ne cannot show non- obviousness by attacking references individually where, as here, the Appeal 2010-001715 Application 10/924,683 10 rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted). Second, contrary to Appellants’ contentions, Sall’s reconfiguration screen does not merely “ask[] how to use a newly detected display” (App. Br. 4), but rather allows the user to reconfigure all viewable monitors. More particularly, the included single-session option configures “the display devices to provide single session/application support.” Sall, col. 4, ll. 10-13 (emphasis added). If the included multiple-session option is selected, then a next reconfiguration screen prompts the user “to select which display devices will display which session/application.” Sall, col. 4, ll. 28-32 (emphasis added). Alternatively, the first reconfiguration screen (e.g., screen 300 of Sall’s Figure 3) can be modified so as to allow the user “to display one image across two display devices, while displaying a second image on a third display device.” Sall, col. 4, ll. 45-50 (emphasis added). Given the above teachings, the Examiner reasonably inferred that only viewable monitors are presented by Sall’s reconfiguration screen. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom” (citation omitted).). If non- viewable monitors were presented, then the user could undesirably assign an image or parts of an image to a hidden monitor and there would be little if any purpose to sensing which monitors are viewable. Appeal 2010-001715 Application 10/924,683 11 CONCLUSION For the foregoing reasons, Appellants have failed to establish a reversible error with respect to independent claim 1. Though Appellants have separately addressed independent claims 10 and 19, the respective arguments are substantively identical to those presented for claim 1.5 Thus, Appellants have failed to establish a reversible error with respect to claims 10 and 19, as well. Appellants have not addressed the remaining dependent claims therefore the claims are rejected for the same reasons as stated above. Accordingly, we affirm the rejections of claims 1-20. ORDER The Examiner’s decision rejecting claims 1-20 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). AFFIRMED llw 5 Appellants argue that “[i]n addition to the reasons set forth above with respect to Claims 1 and 10, Claim 19 is allowable as it recites commanding presentation of information from the displays associated with the selected display configuration.” App. Br. 4. We decline to consider this general allegation of patentability. See 37 C.F.R. §41.37(c)(1)(iv).