layer
being sufficiently transparent to allow the user to view the
image therethrough, the
layer acting as an image map of
the image;
when a user selects a location on the image by a selection
action, using the image map to obtain x- and y-axis coordinates
of the location selected by the user; and
simultaneously with the user selecting the location,
displaying to the user the coordinates of the selected location;
wherein the user interface allows the user to identify a
two-dimensional location on the image using a single user
motion, the image being updated simultaneously with the
motion to provide an immediate visual numerical feedback to
the user corresponding to said location on the image;
the user interface further allowing the user to select the
two-dimensional location on the image using a single user
selection action;
wherein the two-dimensional location selected by the
user corresponds to the user's subjective evaluation in two
different criteria of at least one of the image itself and
something represented by the image, the two different criteria
corresponding to the first label associated with the first
dimension of the image and the second label associated with the
second dimension of the image.
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(Appeal Br. 34, Claims App.)
The Examiner rejected claims 1, 3–14, 20, and 21. Final Act.
Appellant has not appealed the rejections of claims 3, 6–10, and 12–14.
(Appeal Br. 9.) According to Appellant, the rejections below of claims 1, 2,
5, 11, 20, and 21 are presented for our review.3
Claims 1–3, 5–14, and 21 rejected under 35 U.S.C. § 101.
Claims 1, 3–14, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
obvious over Shepard et al. (US 2003/0191682 A1; Oct 9, 2003) in
view of Emanuele Feronato (“Click image and get coordinates with
Javascript,†http://www.emanuel eferonato.com/2006/09 /02/click-
image-andget-coordinates-with javascript/, September 2, 2006, pgs.
1–4) in further view of Coolmoondog and Skaffman
(http://stackoverflow.com/questions/l 728897 /div-background-image-
and-imagemap; May 16, 2010, pgs 1–2) in further view of Suarez et
al. (US 2009/0316961 A1; Dec. 24, 2009).
Claims 2 is rejected under pre-AlA 35 U.S.C. 103(a) as obvious over
Shepard in view of Feronato in further view of Coolmoondog in
further view of Suarez in further view of Lori Eldridge (“How to Add
Frames Around Images with CSS,â€
3 The rejection of claims 2, 4, 12, and 14–19 under § 112, fourth paragraph,
has been withdrawn by the Examiner. (Ans. 3.)
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https://web.archive.org/web/20080117090856/http://www.loriswebs.com/htmltips
/frame-images.html, Jan 2008, pgs. 1–5).
OPINION
Unaddressed Claims Affirmed
As an initial matter, claims 3, 6–10, and 12–14 have been rejected by
the Examiner but have not been not addressed in Appellant’s Appeal Brief.
Appeal Br. 9. Accordingly, these claims are affirmed. More specifically,
the rejection of claims 3, 6–10, and 12–14 under 35 U.S.C. § 101 and the
rejection of claims 3, 6–10, and 12–14 under 35 U.S.C. § 103 are affirmed.
Rejection under 35 U.S.C. § 101
The Examiner rejects claims 1, 2, 5, 11, and 21 under 35 USC § 101.
PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.†35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas†are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.†See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk.â€); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.â€).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products†(Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores†(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.â€
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.â€). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.†Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
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an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.â€).
If the claim is “directed to†an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.†Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’†Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.†Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidanceâ€).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.†Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Updateâ€) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong Oneâ€); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Twoâ€).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional†in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 2019 Revised Guidance, 84 Fed.
Reg. at 52–56.
DISCUSSION
Rejection under 35 U.S.C. § 101
The Examiner determines the claims are not patent eligible because
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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they are directed to a judicial exception without reciting significantly more.
(Final Act. 2–10.) The Examiner finds that the subject matter of
independent claims 1, 5, and 21 is directed to the abstract idea particularly
providing a user interface that allows a user to input and manipulate data.
(Final Act. 3). The Examiner finds the claims described a method of
providing a graphical interface to a user, the graphical interface including an
image, a first label associated with a first dimension of the image, and a
second label associated with a second dimension of the image; and that these
method steps are directed to collecting information and analyzing it, which
is similar to concepts found abstract in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016). (Final Act. 3.)
Additionally, the Examiner considers the claimed “determining a size
of the image†to recite the use of a mathematical formula, algorithm, or
calculation to obtain a result is an abstract idea. (Final Act. 4, citing Benson,
Flook, Bancorp6).
The Examiner finds “Laying a transparent
layer over the image,
a size of the div layer being based on a size of the image, the
layer
being sufficiently transparent to allow the user to view the image there
through, the
layer acting as an image map of the image†to recite the
abstract idea of collecting information, analyzing it and displaying certain
results of the collection and analysis. (Final Act. 4, citing Electric Power
Group.)
The Examiner considers the step of “when a user selects a location on
the image by a selection action, using the image map to obtain x- and y-axis
6 Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266 (Fed. Cir. 2012).
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coordinates of the location selected by the user†to recite the use of a
mathematical formula, algorithm, or calculation to obtain a result is an
abstract idea. (Final Act. 5, citing Benson, Flook, Bancorp.)
The Examiner determines “simultaneously with the user selecting the
location, displaying to the user the coordinates†and “wherein the user
interface allows the user to identify a two-dimensional location on the image
using a single user motion, the image being updated simultaneously with the
motion to provide an immediate visual numerical feedback to the user
corresponding to said location on the image†are directed to collecting
information and analyzing it, and displaying certain results which is similar
to concepts found abstract in Electric Power Group. (Final Act. 5–6.)
The Examiner also determines “the user interface further allowing the
user to select the 2-dimensional location on the image using a single user
selection action†and “wherein the two-dimensional location selected by the
user corresponds to the user’s subjective evaluation in two different criteria
of at least one of the image itself and something represented by the image,
the two different criteria corresponding to the first label associated with the
first dimension of the image and the second label associated with the second
dimension of the image†are directed to collecting information, analyzing it,
and displaying certain results which is similar to concepts found abstract in
Electric Power Group. (Final Act. 6–7.)
The Examiner determines in addition to the above claimed features,
the claim recites a graphical user interface that is described at a high level of
generality and comprises a general purpose computer performing generic
computer functions. Further, the Examiner finds that the additional
limitations of the claims recite generic computer components and functions
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that are well-understood, routine, and conventional, and thus, do not amount
to significantly more than the abstract idea. (Final Act. 7–8.)
The Examiner further determines the ordered combination of steps in
the claims —receiving an image, providing a graphical user interface,
determining a size of an image, creating an image map by overlaying the
image with a transparent layer, receiving user selections, processing user
selection, updating the image, transmitting user selection information—
further describe the abstract idea and do not amount to significantly more
than the abstract idea. (Final Act. 8.)
The Examiner determines considered as a whole, the claims merely
instruct the practitioner to implement the concept of providing a user
interface that allows a user to input and manipulate data with routine,
conventional activity specified at a high level of generality in a particular
technological environment. (Final Act. 9; citing Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709 (Fed. Cir. 2014), and Planet Bingo, LLC v. VKGS LLC,
576 F. App'x 1005, 1008-09 (Fed. Cir. 2014).
Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion
on patent eligibility de novo.†Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.â€).
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
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Examiner’s rejection of all the claims under 35 U.S.C. § 101, and we address
them as they apply to the 2019 Revised Guidance.
With respect to the first step under Alice, we agree with the Examiner
that the claims fall under a statutory category, a “new and useful process,
machine, manufacture, or composition of matter.†35 U.S.C. § 101. In this
case, the claims are directed to a method. (Ans. 3.)
Appellant argues the Examiner has abstracted —oversimplified— the
claims by ignoring numerous meaningful limitations within them to
establish the claims correspond to an abstract idea. In support of this
argument Appellants cite Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016). (Appeal Br. 13–14.) Further, Appellant
argues that the claims “are directed to an improved electronic polling
graphical user interface that allows a user to click on an image and thus
input his subjective evaluation of the image in two criteria simultaneous.â€
(Appeal Br. 20). Appellant argues specifically:
In sum, the claims on appeal are “not directed to an abstract
idea within the meaning of Alice. Rather, they are directed to a
specific improvement to the way computers operate," Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336, 118 U.S.P.Q.2d 1684 (Fed.
Cir. 2016), namely, an improved electronic poling graphical user
interface that allows a user to click on an image and thus input his
subjective evaluation of the image in two criteria simultaneously,
using a transparent layer laid over the image, the invention allowing
for faster user input than previously possible and on smaller user
screens such as mobile phones than were possible using previous
electronic polling techniques. The claims are drawn to a "specific
asserted improvement in computer capabilities." Visual Memory, LLC
v. NVIDIA Corp., 867 F.3d 1253, 1258, 123 U.S.P.Q.2d 1712 (Fed.
Cir. 2017). These claims entail "an unconventional technological
solution ... to a technological problem." Amdocs (Isr.) Ltd v. Openet
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Telecom, Inc., 841 F.3d 1288, 1300, 120 U.S.P.Q.2d 1527 (Fed. Cir.
2016). At the very least, as an "ordered combination of limitations"
the claims show "an inventive concept in the non-conventional and
non-generic arrangement of known, conventional pieces." BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, et al., 827 F.3d
1341, 1350, 119 U.S.P.Q.2d 1236, 1242 (Fed. Cir. 2016). The claims
are therefore patent-eligible under§ 101.
(Appeal Br. 20.)
The Judicial Exception
The Guidance instructs us first to determine whether any judicial
exception to patent eligibility is recited in the claim. As explained by the
Guidance, when determining whether a claim recites a judicial exception,
the claim should be evaluated whether it sets forth or describes a judicial
exception in accordance with the Guidance certain groupings of abstract
ideas—(1) mathematical concepts; (2) certain methods of organizing human
activity such as fundamental economic practices, fundamental economic
principles or practices, commercial or legal interactions, and managing
personal behavior or relationships or interactions between people; and (3)
mental processes—or as clarified in Section II of the Guidance Update. See
Guidance, 84 Fed. Reg. at 54 (Step 2A, Prong 1); Guidance Update, 1.
As shown below, Appellant’s claims include limitations that fall
within the USPTO's enumerated groupings of abstract ideas: mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion). The limitation “wherein the
two-dimensional location selected by the user corresponds to the user’s
subjective evaluation in two different criteria of at least one of the image
itself and something represented by the image, the two different criteria
corresponding to the first label associated with the first dimension of the
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image and the second label associated with the second dimension of the
image†is directed to collecting information, analyzing it, and displaying
certain results. Guidance, 84 Fed. Reg. at 52; see Guidance Update 7–8. The
limitation “a user selects a location on the image by a selection actionâ€
relates to the judgment of the user which pertains to mental process.
Guidance, 84 Fed. Reg. at 52; see Guidance Update 7–9. Accordingly, like
the data collection and analysis in Electric Power Group, claims 1, 5 and 21
recite a mental process, which is one of the categories of subject matter
deemed abstract under the Memorandum. Electric Power Group at 1353-54
(“[W]e have treated analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea categoryâ€). Thus, we determine
that representative claims 1, 5 and 21 recite a mental process, which is an
abstract idea.
4. Guidance, Revised Step 2A, Prong Two: Integration of the Judicial
Exception into a Practical Application
Having determined that the claims recite a judicial exception as set
forth in the claim limitations, our analysis under the Guidance turns to
determining whether there are "additional elements that integrate the judicial
exception into a practical application." See Guidance (citing MPEP
§ 2106.05(a)–(c), (e)–(h) ). Under the Guidance, limitations that are
indicative of "integration into a practical application" include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to a
different state or thing — see MPEP § 2106.05(c); and
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4. Applying or using the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a
particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception —
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" (or an equivalent) with the judicial
exception, or merely include instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea — see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial exception
— see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a particular
technological environment or field of use — see MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 ("Prong Two").
Appellant’s claims recites various computer-related limitations,
including “graphical user interface†(independent claims 1, 5, and 21).
These computer-related limitations are generic in nature and are described at
a high-level in the Specification without any meaningful detail about their
structure or configuration. See Spec. ¶¶ 4, 9. This limitations, standing
alone, are insufficient to integrate the judicial exception into a practical
application. However, each of the independent claims includes additional
limitations we consider.
Claim 1 specifies: “laying a transparent
layer over the image, a
size of the div layer being based on a size of the image, the
layer
being sufficiently transparent to allow the user to view the image
therethrough, the
layer acting as an image map of the image.â€
Claim 5 specifies: “laying a
layer of HTML over the image, the
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layer acting as an image laying a
layer of hypertext markup
language over the image, the
layer acting.â€
Claim 21 specifies “juxtaposing a partially transparent layer with the
first image, the partially transparent layer being larger than the image and
being sufficiently transparent in an area that corresponds to the image to
allow the user to view the image therethrough,â€
We conclude each of the above limitations integrates the recited
judicial exception into a practical application. In particular, each of these
limitations requires laying layer over an image provides a 2-dimensional
graphical interface including an image, by which a user can position a
pointing and selecting device over the image and quickly and easily provide
evaluation of the image in two criteria simultaneously by positioning an on-
screen cursor. Spec. ¶ 4.
Thus, the use of the claimed method of laying layer over an image
provides a specific technological improvement over prior electronic polling
graphical user interfaces. The claimed method provides an improved
electronic polling graphical user interface that allows a user to click on an
image and thus input his subjective evaluation of the image in two criteria
simultaneously, using a transparent layer laid over the image, the invention
allowing for faster user input than previously possible and on smaller user
screens such as mobile phones than were possible using previous electronic
polling techniques.
Accordingly, we conclude independent claims 1, 5, and 21 are
integrated into a practical application, and under the Guidance, the claims
are eligible because it is not directed to the recited judicial exception.
Because we have determined the claims are not directed to the recited
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judicial exception, we need not reach the question of whether independent
claims 1, 5, and 21 provide an inventive concept under the second step of the
Alice inquiry. Accordingly, we do not sustain the rejection of the
independent claims 1, 5, and 21, or their respective dependent claims 2, 11,
and 20, under 35 U.S.C. § 101.
Accordingly, we conclude that claims 1, 2, 5, 11, 20, and 21 are
directed to patent-ineligible subject matter under 35 U.S.C. § 101.
Rejections under § 103
The Examiner rejects claims 1, 27, 5, 11, 20, and 21 are rejected under
35 U.S.C. § 103 as unpatentable over Shepard, Feronato, Coolmoondog, and
Suarez.
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s rejection under 35 U.S.C.
§ 103(a). The Examiner the rejections on appeal appear in the Final Action.
Final Act. 13–24.
Our discussion applies to independent claims 1, 5 and 21. Claims 1
and 21 are addressed together. Claims 2, 11, and 20 stand or fall with
independent claim 1.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
7 Claim 2 is additionally rejected over the Lori Eldridge reference.
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conclusion of obviousness.†KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also,
Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’
refers not to the teachings in the prior art of a motivation to combine, but to
the court’s analysis.â€).
The dispositive issue on appeal is:
Did the Examiner reversibly err in determining that the combined
teachings of Shepard, Feronato, and Coolmoondog would have suggested a
method of displaying an electronic polling request on a graphical user
interface comprising providing a graphical interface including an image and
laying a transparent
layer over the image as required by the subject
matter of independent claim 1?
We answer this question in the affirmative.
The Examiner finds Shepard discloses a method of receiving scoring
information comprising providing a graphical interface to a user that differs
from the claimed invention by not disclosing determining a size of the
image; laying a transparent
layer over the image. Final Act. 14–15.
The Examiner cites Feronato for teaching that it was well known to
determine a size of the image and laying a transparent
layer over the
image, Final Act. 14–15; Page 4, Code lines 17, 18. The Examiner
determines because there are a limited number of predictable ways in which
to identify where the user has interacted with the perception map, it would
have been obvious to one skilled in art to have used the transparent image
map disclosed by Feronato in the invention of Shepard. Final Act. 15. The
Examiner further finds the combination of Shepard and Feronato fails to
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disclose a transparent layer. Final Act. 15. The Examiner cites
Coolmoondog for teaching that it was well known to lay a transparent
layer over the image. The Examiner further determines, it would have been
obvious to have used the transparent image map disclosed by Coolmoondog
in the invention of Shepard. Final Act. 15–16.
Appellant argues the combination of Shepard, Feronato, and
Coolmoondog would not have suggested a method of displaying an
electronic polling request on a graphical user interface comprising providing
a graphical interface including an image and laying a transparent
layer
over the image as required by independent claims 1. Appeal Br. 25–26.
Appellant specifically states:
Shepard's interface relies on users dragging and dropping images onto
x-y coordinates on a different part of the user's computer screen.
That's what Shepard teaches to do. Nowhere does Shepard suggest
that there would be any purpose to “identify where a user has
interacted with†an image, or provide any motivation for doing so.
Nor does Feronato disclose or suggest that there would be any reason
to do so in an electronic polling interface.
At most, Feronato suggests that when trying to determine where
a user has placed a dragged-and-dropped image in Shepard, one could
use a
layer to find out where that image has been dropped.
Appeal Br. 25–26.
Appellant further argues Coolmoondog only provides a response to a
question about how to make applicable areas when an image on a website
that constitute different links. Appeal Br. 26.
We agree with Appellant that the Examiner failed to explain
adequately how the disclosures of Shepard, Feronato, and Coolmoondog
would have suggested a method of displaying an electronic polling request
on a graphical user interface comprising providing a graphical interface
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including an image and laying a transparent
layer over the image as
required by independent claim 1. The Examiner has failed to address
Appellant’s arguments regarding the suitability of combining the teachings
of Shepard, Feronato, and Coolmoondog. The Examiner has not explained
adequately or direct us to evidence that establishes why a person of ordinary
skill in the art would have sought to include a transparent
layer over
the image described by Shepard. The Examiner has failed to specifically
explain where the prior art references suggest laying a
layer of
hypertext markup language over the image, the
layer acting as an
image map of the image and defining coordinates of the image as required
by independent claim 5.
For the reasons we state above and those Appellant presents, we
reverse the appealed prior art rejections of claims 1, 2, 5, 11, 20, and 21
under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–14, 21
101 Eligibility 3, 6–10,
12–14
1, 2, 5,
11, 21
1, 3–14, 20, 21
103(a) Shepard, Feronato,
Coolmoondog, Suarez
3, 6–10,
12–14
1, 5, 11,
20, 21
2 103(a) Shepard, Feronato, 2
Appeal 2018–007519
Application 13/297,041
20
Coolmoondog,
Suarez, Eldridge
Overall
Outcome
3, 6–10,
12–14
1, 2, 5,
11, 20,
21
AFFIRMED-IN-PART
