Ex Parte Satterfield et al

Patent Trial and Appeal Board

Aug 2, 2017

11402299 (P.T.A.B. Aug. 2, 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.
11/402,299 04/11/2006 Jesse Clay Satterfield 14917.0336US01/315266.01 4865
27488 7590 08/04/2017
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
GREENE, SABRINA LETICIA
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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):
US PT027488 @ merchantgould .com
u sdocket @ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE CLAY SATTERFIELD, CHRISTOPHER T. PEARO,
JENSEN M. HARRIS, and RODRIGO TARRATS
Appeal 2016-007769
Application 11/402,2991
Technology Center 2100
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 13, 18, 20—22, 26, 27, 29, 31—42, which constitute all the
claims pending in this application.2 Claims 1—12, 14—17, 19, 23—25, 28, and
1 Appellants identify Microsoft Technology Licensing, LLC as the real party
in interest. Br. 2.
2 The Examiner erroneously indicates claims 17, 24, 25, 28, and 30 as
pending. See Final Act. 1, 2, 9-11; Ans. 2, 9-11. The claims before us on
appeal are as presented in the last set of claims entered by the Examiner.
See Amendment filed Dec. 15, 2014, pp. 2—13.
Appeal 2016-007769
Application 11/402,299
30 were previously canceled. Br. 67—73. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm, but designate our affirmance as a new ground of rejection
and further institute a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
THE INVENTION
Appellants’ invention is directed to a user interface element near a
button that provides an identification of the button’s associated functionality.
Abstract.
Claim 13 is illustrative of the subject matter on appeal and is
reproduced below:
13. A computer readable storage medium on which is stored
computer executable instructions which, when executed by a
computing device, cause the computing device to provide contextually
relevant information about a focused-on user interface control, the
instructions causing the computing device to:
display, on an output device, a user interface, the user interface
containing a toolbar that extends horizontally across the user interface,
the toolbar containing multiple user interface controls, the user
interface controls including a first user interface control, the first user
interface control associated with a functionality;
receive an indication of a focus on the first user interface
control in response to receiving input from the user to position a user-
controlled pointer over the first user interface control for a
predetermined time period;
display, upon receiving the indication of the focus on the first
user interface control, an informational user interface element in a
separate graphical window, wherein the informational user interface
element comprises a title field, a shortcut field, a description field, an
image field, and a footer field, wherein the title field comprises a
name of the functionality associated with the first user interface
control, wherein the shortcut field comprises a keyboard shortcut for
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invoking the functionality associated with the first user interface
control, wherein the description field comprises a textual multi-word
statement beyond the name of any of the controls explaining an effect
of what occurs in response to selecting the first user interface control,
wherein the image field comprises a non-textual image that is
indicative of an effect of selecting the first user interface control that
is different from an image of the first user interface control, wherein
the footer frame comprises at least one command for selectively
retrieving help content related to the functionality associated the
focused on first user interface control, wherein selection of one of the
at least one command in the footer field causes the computing device
to retrieve and display the help content, and wherein a display
property of each of the title field, the shortcut field, the description
field, and the footer field is distinct; and dismiss the display frame
from view in response to receiving input from the user to move the
pointer away from the first user interface.
REFERENCES AND REJECTION
The following rejection made by the Examiner to the claims on appeal
and the prior art relied upon in the rejection made is:
Claims 13, 18, 20—22, 26, 27, 29, and 31—42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Giesen et al. (US 6,826,729
Bl; published Nov. 30, 2004) (“Giesen”), Fisher (US 5,694,562;
published Dec. 2, 1997), Nielsen (US 6,819,336 Bl; published Nov. 16,
2004), and Vaidyanathan et al. (US 6,467,081 B2; published Oct. 15, 2002)
(“Vaidyanathan”). Final Act. 2—16.
ANALYSIS3
Claims 13, 18, 20, 27, 29, 33, 40, and 41
3 In this Opinion, we refer to Appellants’ Appeal Brief (“Br.,” filed
November 10, 2015); the Final Office Action (“Final Act.,” mailed April 10,
2015); and the Examiner’s Answer (“Ans.,” mailed on June 1, 2016).
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During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad, of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Construing claims
broadly during prosecution is not unfair to the applicant. . . because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage.” Id.
We begin by construing the disputed limitations in claim 13. Here,
claim 13 recites, inter alia, instructions stored on a computer readable
storage medium that cause a computing device to display, upon receiving an
indication, an information user interface element comprising a title field, a
shortcut field, a description field, an image field, and a footer field.
Claim 13 further recites descriptions for each of the five fields:
wherein the title field comprises a name of the
functionality associated with the first user interface control,
wherein the shortcut field comprises a keyboard shortcut
for invoking the functionality associated with the first user
interface control,
wherein the description field comprises a textual multi­
word statement beyond the name of any of the controls
explaining an effect of what occurs in response to selecting the
first user interface control,
wherein the image field comprises a non-textual image
that is indicative of an effect of selecting the first user interface
control that is different from an image of the first user interface
control, [and]
wherein the footer frame comprises at least one command
for selectively retrieving help content related to the functionality
associated the focused on first user interface control.
Br. 67 (App’x A) (the “five field descriptions”).
All claim limitations must be considered when determining
patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Claim
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limitations including descriptive material can be characterized as either
“functional descriptive material” or “nonfunctional descriptive material.”
Exemplary “functional descriptive material” consists of data structures and
computer programs, which impart functionality when employed as a
computer component. When functional descriptive material is recorded on a
computer-readable medium, it becomes structurally and functionally
interrelated to the medium and will be statutory in most cases because use of
technology permits the function of the descriptive material to be realized.
Compare In re Lowry, 32 F.3d 1579, 1583—84 (Fed. Cir. 1994) (claim to
data structure stored on a computer readable medium that increases
computer efficiency held statutory) with In re Warmerdam, 33 F.3d 1354,
1361—62 (Fed. Cir. 1994) (claim to computer having a specific data structure
stored in memory held statutory product-by-process claim but claim to a data
structure that referred to ideas reflected in nonstatutory process rather than
referring to a physical arrangement of the contents of a memory held
nonstatutory).
“Nonfunctional descriptive material” includes but is not limited to
music, literary works and a compilation or mere arrangement of data. When
presented with a claim including nonfunctional descriptive material, an
Examiner must determine whether such material should be given patentable
weight. The PTO may not disregard claim limitations comprised of printed
matter. See Gulack, 703 F.2d at 1384; see also Diamond v. Diehr,
450 U.S. at 191. However, the PTO need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See Gulack, 703 F.2d at
1386. See also In reNgai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); Lowry,
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32 F.3d at 1583—84. The burden of establishing the absence of a novel,
nonobvious functional relationship rests with the PTO. Lowry, 32 F.3d at
1584.
Here, this case is distinguished from Lowry, because in Lowry the
claims were directed to data structures stored in memory that contained both
information used by application programs and information regarding their
physical interrelationships within a memory. Lowry, 32 F.3d at 1583. By
contrast, the present invention is directed to a computing device storing
instructions on a computer readable storage medium where the only
distinction over the prior art is the displayed content of the five fields (i.e.,
the five field descriptions). Unlike in Lowry, we find that the five field
descriptions from claim 13 are descriptive and do not functionally relate to
any structure of the claimed computing device storing the instructions on the
computer readable storage medium. Rather, the five field descriptions are
analogous to printed matter in that they represent merely underlying data in
a database. See Lowry, 32 F.3d at 1583. Accordingly, the five field
descriptions represent nonfunctional descriptive material that is entitled to
no weight in the patentability analysis.
Having construed claim 13, we consider Appellants’ arguments.
Appellants assert Giesen’s pop-up window lists menu items that appear upon
hovering a mouse cursor over a properties portion of a control object.
Br. 24—26. Appellants argue the menu items within the pop-up window are
not the “fields” as claimed. Br. 27 (citing Giesen, col. 4,11. 35—45;
Figures 1, 4—9).
We do not find Appellants’ arguments persuasive of Examiner error.
Appellants’ Specification does not define the term “field,” but does recite
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multiple instances of the phrase “field or section.” See Spec. 18—21, 23.
Though this description informs our construction of the term, it does not
limit our interpretation. Because the term “field” is not defined in the
Specification, we interpret the term with its plain meaning, namely “[a]
location in a record in which a particular type of data is stored.” Microsoft
Computer Dictionary 210 (5th ed. 2002). Therefore, under its broadest
reasonable interpretation, a “field” is a location in a record in which a
particular type of data is stored.
Given this construction, we see no error in the Examiner’s reliance on
Giesen’s listed menu items in a pop-up window as being fields. See Final
Act. 4. Giesen is generally directed to providing a user interface control.
Giesen, Abstract. Figure 1 of Giesen, as identified by the Examiner
(see Final Act. 4—5), is illustrative and is reproduced below:
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Fig. 1
ICO
“FIG. 1 illustrates a main application window and a gallery control window
and a gallery control object.” Giesen, col. 3,11. 28—29. As shown, a main
application window (100) displays application programs for a user to
interact with. Giesen, col. 3,11. 30-35. Giesen discloses that “[i]n addition
to the main application [window] 100, a gallery control window 101
provides a user with a scrollable window that contains one or more gallery
control objects 102.” Giesen, col. 3,11. 48—51. Giesen’s gallery control
object (102) includes a properties portion (112), and a pop-up menu (113)
containing menu items (121—123) is associated with the properties portion
(112). Giesen, col. 3,11. 59-64. Giesen’s menu items (121—123) perform
various processing relating to the corresponding gallery control item (102)
when a user mouse clicks on a menu item. Giesen, col. 3,1. 64 — col. 4,1. 2
Accordingly, Giesen teaches or suggests displaying a pop-up menu (133)
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(the claimed “informational user interface element”) in a separate graphical
window, wherein the pop-up menu (133) comprises menu items (121—123)
(the claimed “title field,” “shortcut field,” “description field,” “image field,”
and “footer field”).
Appellants further assert Giesen’s different menu items (121—123)
may be differentiated from other menu items, such as by color, but argue the
text representing a menu item cannot represent separate “distinct” fields
(e.g., the title field and description field). Br. 27—29 (citing Giesen, col. 4,
11. 35—43; Figure 4).
We again do not find Appellants’ arguments persuasive of Examiner
error. Because the term “distinct” is not defined in the Specification, we
interpret the term with its plain meaning, namely as being “distinguishable
to the eye or mind as discrete: SEPARATE.” Merriam-Webster’s Third
New Int’l Dictionary of the English Language 337 (2002). Giesen’s
“menu items 121—123 are represented using text items that describe the
function or property to be presented to a user when a particular menu item
121—123 is selected.” Giesen, col.4,11. 36—39. Menu items (121—123) using
text items that describe presented function or property teaches
distinguishable text items to the eye or mind. Accordingly, Giesen teaches
or suggests that a display property of each menu item (121—123) (the
claimed “title field,” “shortcut field,” “description field,” “image field,” and
“footer field”) as being distinct.
Appellants further contend Giesen does not teach or suggest a window
appearing upon hovering that includes a footer field comprising at least one
command for selectively retrieving help content related to the control object.
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Br. 29-30 (citing Giesen col. 6,1. 55 — col. 7,1. 3).4 Appellants further
contend Giesen does not teach or suggest a window appearing upon
hovering that contains a non-textual image that is indicative of an effect of
selecting a control. Br. 30 (citing Giesen, col. 9,11. 1—10; Figure 4).
We are not persuaded the Examiner erred. Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious. Ngai, 367 F.3d at 1339;cf Gulack, 703 F.2d at 1385 (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability^*?*? also Ex parte Mathias, No. 2005-1851
(BPAI Aug. 19, 2005), affd. In re Mathias, 191 Fed.Appx. 959 (Fed. Cir.
Aug. 17, 2006) (Rule 36, unpublished) and Ex parte Curry, No. 2005-0509
(BPAI June 30, 2005), affd. In re Curry, No. 2006-1003 (Fed. Cir. June 12,
2006) (Rule 36, unpublished) (both cases treating data as nonfunctional
descriptive material).
As discussed supra, and in accord with our precedent, the five field
descriptions represent nonfunctional descriptive material that is entitled to
no weight in the patentability analysis. Accordingly, the five field
descriptions do not distinguish Appellants’ invention from the prior art in
terms of patentability.
Appellants further contend Giesen does not teach or suggest a menu
item that includes “a textual multi-word statement beyond the name of any
of the controls explaining an effect of what occurs in response to selecting of
the menu item.” Br. 29. Appellants further contend Giesen does not teach
4 We note Appellants erroneously cite Giesen, col. 6,1. 55 — col. 6,1. 3.
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or suggest a keyboard shortcut for invoking the functionality associated with
the first user interface control. Br. 30.
We are not persuaded the Examiner erred. Merely reciting language
of the claims and asserting the cited prior art reference does not teach or
suggest the claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(l)(iv)
(2012); see also In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellants’ argument fails to provide sufficient, persuasive argument or
evidence regarding the specific deficiency of the Examiner’s findings with
respect to claim 13. Further, as discussed supra, the five field descriptions
will not distinguish Appellants’ invention from the prior art in terms of
patentability.
For the reasons discussed supra, we sustain the rejection of claim 13.
Further, we sustain the rejection of dependent claims 18, 20, 27, 29, 33, 40,
and 41, which are not argued separately with particularity. Br. 65.
However, we designate our affirmance as a new ground of rejection, to
afford Appellants an opportunity to address the rejection as articulated in
this Decision.
Claims 21, 22, 34—39, and 42
Appellants do not argue separately with particularity the rejection of
independent claim 21 and, thus, we sustain the rejection of independent
claim 21, which contains similar limitations as in independent claim 13.
Br. 36-49. Additionally, we sustain the Examiner’s rejections of dependent
claims 22, 34—39, and 42, which are not argued separately with particularity.
Br. 66. However, we designate our affirmance as a new ground of rejection,
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to afford Appellants an opportunity to address the rejection as articulated in
this Decision.
Claims 26, 31, and 32
Appellants do not argue separately with particularity the rejection of
independent claim 26 and, thus, we sustain the rejection of independent
claim 26, which contains similar limitations as in independent claim 13.
Br. 49-65. Additionally, we sustain the Examiner’s rejections of dependent
claims 31 and 32, which are not argued separately with particularity. Br. 66.
However, we designate our affirmance as a new ground of rejection, to
afford Appellants an opportunity to address the rejection as articulated in
this Decision.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 13, 18, 20, 27, 29, 33, 40, and 41 are rejected
under 35 U.S.C. § 101 as being directed toward non-statutory subject matter.
Claims 13, 18, 20, 27, 29, 33, 40, and 41 recite a computer readable
storage medium. Appellants’ Specification does not specifically describe a
computer readable storage medium. Therefore, we find Appellants’
invention encompasses transitory propagating signals, which are
unpatentable under 35 U.S.C. § 101. See In reNuijten, 500 F.3d 1346, 1355
(Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject
matter); Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, p. 2 (Aug. 24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_
instructions.pdf. See also David J. Kappos, Subject Matter Eligibility of
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Computer Readable Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23,
2010).5
DECISION
The Examiner’s decision in rejecting claims 13, 18, 20-22, 26, 27, 29,
and 31—42 is affirmed.
We designate our affirmance as a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
We enter a new ground of rejection under 35 U.S.C. § 101 for
claims 13, 18, 20, 27, 29, 33, 40, and 41 as being directed toward non-
statutory subject matter.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
5 A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation “non-transitory” to the claim.
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examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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; 37 C.F.R, § 41.50(b)
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