Guido, Patrick R. et al.

Patent Trials and Appeals BoardJun 18, 2020

2019001357 (P.T.A.B. Jun. 18, 2020)

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. 11/839,850 08/16/2007 Patrick R. Guido RSW920040110US2 9220 103765 7590 06/18/2020 IBM Corp-Rochester Drafting Center 1701 North Street Building 256-3 Department SHCB Endicott, NY 13760 EXAMINER NGUYEN, LE V ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 06/18/2020 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): rocdrctr@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PATRICK R. GUIDO, ROBERT C. LEAH, PAUL F. McMAHAN, and WAYNE B. RILEY ________________ Appeal 2019-001357 Application 11/839,850 Technology Center 2100 ________________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. Opinion Concurring filed by JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1, 3–14, 16–21, 23–26, and 28–33.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. INVENTION 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, International Business Machines (IBM) Corporation is the real party in interest. Appeal Br. 1. 2 Claims 2, 15, 22, and 27 are cancelled. Appeal Br. 17, 20, 22–23. Appeal 2019-001357 Application 11/839,850 2 The invention relates to deactivate and reactivate a portlet associated with a portal page. Spec. ¶ 4. Claims 1 and 9 are illustrative of the invention and are reproduced below with emphasized font denoting disputed limitations: 1. A method to control operation of a portlet associated with a portal page, comprising: deactivating a selected portlet in response to a user operating a deactivation feature presented in the selected portlet; freezing a portlet content in the selected portlet except a reactivation feature presented on the deactivated portlet in response to deactivating the selected portlet, wherein freezing the portlet content comprises preventing the portlet content from being altered across any refreshes of the portal page and wherein content of an active portlet associated with the portal page is changeable across any refreshes of the portal page; disabling hyperlinks, buttons and other inputs to the selected portlet in response to deactivating the selected portlet; and reactivating the selected portlet in response to the user operating the reactivation feature presented in the deactivated selected portlet, wherein the deactivated selected portlet is prevented from being moved, closed, edited or affected. Appeal Br. 17 (Claims Appendix) (emphasis added). 9. A method to control operation of a portlet associated with a portal page, comprising: deactivating a selected portlet in response to a user operating a deactivation feature presented in the portlet; overlaying the selected portlet with an electronic invisible pane or window in response to the selected portlet being deactivated to block, the portlet being visible through the electronic invisible pane or window and the electronic invisible pane or window blocking all inputs of the selected portlet while the selected portlet is deactivated except a reactivation feature presented in the selected portlet in response to the selected portlet being deactivated; and Appeal 2019-001357 Application 11/839,850 3 reactivating the selected portlet in response to the user operating the reactivation feature presented in the deactivated selected portlet, wherein the deactivated selected portlet is prevented from being moved, closed, edited or affected. Id. at 18 (Claims Appendix) (emphasis added). REJECTIONS3 The Examiner rejects claims 1, 3–8, 14, 16–18, 20, 21, 23–26, and 28–33 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Lillie (US 2005/0065913 A1; filed Sept. 22, 2003), Chowdhry (US 2003/0167315 A1; published Sept. 4, 2003), Jerrard-Dunne (US 2006/0041637 A1; filed Aug. 18, 2004), and Richmond (HTML’s META- tag: HTTP-EQUIV, Web Developer’s ; Oct. 12, 1999). Final Act. 2–13, 17–20.4 The Examiner rejects claims 9–13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Lillie, Kuwamoto (US 5,483,632; issued Jan. 9, 1996), and Chowdhry. Final Act. 13–16. 3 In the event of further prosecution, the Examiner should evaluate claims 26, 28, and 29 in light of Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). We note that Appellants’ Specification specifically includes a “stream of information being retrieved when the computer program product is ‘downloaded’ through a network.” Spec. ¶ 43. 4 Although the Examiner separates the rejection of claims 1, 3–8, 14, 16–18, 20, 21, 23–25, and 30–33 from the rejection of claims 26, 28, and 29, these two rejections are based on the same combination of references. Compare Final Act. 2–13 (rejecting claims 1, 3–8, 14, 16–18, 20, 21, 23–25, and 30– 33 over the combination of Lillie, Chowdhry, Jerrard-Dunne, and Richmond) with id. at 17–20 (rejecting claims 26, 28, and 29 over the combination of Lillie, Chowdhry, Jerrard-Dunne, and Richmond). We, therefore, consolidate the listing of these two rejections into one rejection. Appeal 2019-001357 Application 11/839,850 4 The Examiner rejects claims 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Lille, Chowdhry, Jerrard-Dunne, Richmond, and Kuwamoto. Final Act. 16–17. ANALYSIS I. Claims 1, 3–8, 14, 16–20, 21, 23–26, and 28–33 Rejected Under 35 U.S.C. § 103(a) The Examiner finds Lillie and Chowdhry fail to teach the limitation “freezing the portlet content comprises preventing the portlet content from being altered across any refreshes of the portal page” (hereinafter “disputed limitation”) recited in independent claims 1, 14, 18, 21, and 26. Final Act. 3, 7, 9–10, 19; Ans. 17–18. The Examiner finds Jerrard-Dunne teaches bypassing a portlet such that the portlet page need not be refreshed each time, which the Examiner maps to the disputed limitation recited in claims 1, 14, 18, 21, and 26. Final Act. 3–4, 7–11, 19 (citing Jerrard-Dunne ¶ 50); Ans. 17–18. Appellant argues Jerrard-Dunne’s portlet is simply bypassed, but fails to teach the above quoted, disputed limitation. Appeal Br. 6–7; Reply Br. 3. We agree with Appellant. The Examiner relies on Jerrard-Dunne to teach the disputed limitation recited in claims 1, 14, 18, 21, and 26. Final Act. 3, 7, 9–10, 19; Ans. 17– 18. The cited portion of Jerrard-Dunne teaches bypassing a portlet such that the portlet page need not be refreshed each time, which fails to teach the disputed limitation recited in claims 1, 14, 18, 21, and 26. Jerrard-Dunne ¶ 50 (cited at Final Act. 3–4, 7–11, 19; Ans. 17–18). Accordingly, we do not sustain the Examiner’s rejection of: (1) independent claims 1, 14, 18, 21, and 26; and (2) dependent claims 3–8, 16, 17, 20, 23–25, and 28–33 under 35 U.S.C. § 103(a). Appeal 2019-001357 Application 11/839,850 5 II. Claims 9–13 Rejected Under 35 U.S.C. § 103(a) The Examiner finds Lillie teaches automatically deactivating a portlet and adjusting the opacity of a front most portlet, which the Examiner maps to the limitation “overlaying the selected portlet with an electronic pane or window” recited in claim 9. Final Act. 13; Ans. 19. The Examiner finds Kuwamoto teaches a foreground window is available for editing, which the Examiner maps to the limitation “blocking all inputs of a selected window while the selected window is deactivated” recited in claim 9. Final Act. 13– 14 (citing Kuwamoto, 7:17–22, 9:45–67, Figs. 6 and 12); Ans. 19. Appellant argues Lillie and Kuwamoto fail to teach the italicized claim 9 limitation recited supra on page 2 because (1) Lillie merely teaches that a portlet can be activated, deactivated, or removed and adjusting the opacity of overlapping portlets and (2) Kuwamoto simply teaches editing a foreground window. Appeal Br. 13–14; Reply Br. 5–6. We agree with Appellant. Claim 9 recites “overlaying the selected portlet with an electronic invisible pane or window in response to the selected portlet being deactivated to block” (emphasis added). Claim 9 requires a nexus (i.e., the “in response to” limitation) between: (1) the limitation “overlaying the selected portlet with an electronic invisible window or pane;” and (2) a preceding condition of “the selected portlet being deactivated to block.” Stated another way, the cited portions of Lillie and Kuwamoto fail to teach a preceding condition of “overlaying the selected portlet with an electronic invisible window or pane” triggers the result of “overlaying the selected portlet with an electronic invisible window or pane” as required by claim 9. Nor has the Examiner adequately explained how this “in response to” Appeal 2019-001357 Application 11/839,850 6 limitation is met. See Final Act. 13–14 (lacking any explanation pertaining to the limitation “overlaying the selected portlet with an electronic invisible pane or window in response to the selected portlet being deactivated to block” (emphasis added) recited in claim 9); Ans. 19 (lacking any explanation pertaining to the limitation “overlaying the selected portlet with an electronic invisible pane or window in response to the selected portlet being deactivated to block” (emphasis added) recited in claim 9).5 Accordingly, we do not sustain the Examiner’s rejection of: (1) independent claim 9; and (2) dependent claims 10–13 under 35 U.S.C. § 103(a). 5 In the event of further prosecution, the Examiner should consider including an explanation of how Lillie and Kuwamoto teach the limitation “overlaying the selected portlet with an electronic invisible pane or window in response to the selected portlet being deactivated to block” (emphasis added) recited in claim 9. Appeal 2019-001357 Application 11/839,850 7 CONCLUSION In summary: REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–8, 14, 16–18, 20, 21, 23–26, 28–33 103(a) Lillie, Chowdhry, Jerrard-Dunne, Richmond 1, 3–8, 14, 16– 18, 20, 21, 23– 26, 28– 33 9–13 103(a) Lillie, Kuwamoto, Chowdhry 9–13 19 103(a) Lille, Chowdhry, Jerrard-Dunne, Richmond, Kuwamoto 19 Overall Outcome 1, 3–14, 16–21, 23–26, 28–33 UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PATRICK R. GUIDO, ROBERT C. LEAH, PAUL F. McMAHAN, and WAYNE B. RILEY ________________ Appeal 2019-001357 Application 11/839,850 Technology Center 2100 ________________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JASON J. CHUNG, Administrative Patent Judges. JEFFERY, Administrative Patent Judge, CONCURRING. I join the majority in reversing the Examiner’s rejections for the reasons indicated, but add that the Examiner’s reliance on the cited passages and figures from both Lillie and Kuwamoto for teaching the recited invisible pane overlay functionality, where the invisible pane blocks all inputs of the selected portlet that is visible through the invisible pane, strikes me as unclear on this record, particularly since this overlay is responsive to deactivating the selected portlet as the majority indicates. That the Examiner does not specify clearly how the recited limitations of claim 9 map to the relied-upon features in the cited references only further undermines the propriety of the rejection in my view. That said, this Board has addressed patentability issues involving similar transparent overlays where inputs to the underlying window are at Appeal 2019-001357 Application 11/839,850 2 least partially blocked by an overlying transparent window. See Ex parte Apple, Appeal 2016-005175 (PTAB Sept. 19, 2016) (non-precedential), reh’g denied (PTAB Dec. 12, 2017). The prior art at issue in that case, principally U.S. Patent 5,651,107 (Frank), was discussed extensively regarding the functionality of the transparent overlay and the underlying window as shown in the Board’s reproduction of Frank’s Figure 8 on page 5 of the Board’s decision: Frank’s Figure 8 reproduced on page 5 of the Board’s decision Notably, the Board on pages 4 to 8 of the Apple decision discussed various functionalities of Frank’s system, including the ability to access the underlying window “through” the overlying transparent window by selecting Appeal 2019-001357 Application 11/839,850 3 certain buttons—functionality that at least suggests that the inputs to that underlying window are otherwise blocked. Although the Frank reference is not at issue here, it nonetheless raises the question of whether it suggests the recited overlay functionality in claim 9, particularly when considered in light of the other cited prior art. As a Board of review—not of initial examination—we need not answer that question in the first instance here, but I nonetheless raise this question for the Examiner to consider after this decision. On this record, however, I agree that the Examiner’s articulated basis for the rejection of claim 9 is problematic and, therefore, join the majority in reversing that rejection, as well as the other rejections.