Rocha, Daniel et al.

Patent Trials and Appeals BoardSep 19, 2019

29534963 - (D) (P.T.A.B. Sep. 19, 2019)

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. 29/534,963 08/03/2015 Daniel Rocha 12437.0133-00000 5950 120423 7590 09/19/2019 Google LLC/Finnegan 901 New York Ave., NW Washington, DC 20001 EXAMINER MCLEAN, CHRISTIAN P ART UNIT PAPER NUMBER 2923 NOTIFICATION DATE DELIVERY MODE 09/19/2019 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): michelle.murray@finnegan.com regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DANIEL ROCHA, RICARDO BRUNO AUGUSTO HENRIQUES, ARDAN ARAC, PABLO MAJERNIK, and RYAN KELLY1 ____________________ Appeal 2019-001777 Application 29/534,963 Technology Center 2900 ____________________ Before WILLIAM A. CAPP, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel Rocha et al. appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting the single design claim pending in this appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The briefing identifies Applicant Google LLC as the real party in interest. Appeal Br. 3. Appeal 2019-001777 Application 29/534,963 2 BACKGROUND Appellant’s invention relates to an animated graphical user interface. The claim on appeal is “[t]he ornamental design for a display screen with animated graphical user interface, as shown and described.” REJECTIONS The claim stands rejected under 35 U.S.C. § 102(a)(1) as anticipated by Mizutani (US 2012/0066644 A1, pub. Mar. 15, 2012). Final Act. 2. OPINION The Examiner finds that an ordinary observer would confuse the appearance of Mizutani’s graphical user interface with the claimed design. Final Act. 2. According to the Examiner, Mizutani’s graphical user interface layout shows squares set within a larger landscape-oriented rectangle, the squares transitioning or sliding across the display screen to disappear off the display, which an ordinary observer would confuse with the claimed design. Id. The Examiner provides the following annotated comparison of the Figures of the claimed design and Mizutani. Appeal 2019-001777 Application 29/534,963 3 Final Act. 7. The Examiner finds that the layouts of Mizutani and the claimed design “share fundamental and substantially similar design characteristics, specifically: an array of squares sliding laterally across a display and set within an enclosing landscape-oriented rectangle.” Final Act. 7. The Appeal 2019-001777 Application 29/534,963 4 Examiner contends that “selection of only two sliding squares of the six shown in Mizutani [and the top cord and sides of the enclosing rectangle] is no different than the disclosure of applicant’s design, wherein applicant claims only two of six sliding [squares]” and certain portions of the enclosing rectangle. Id. at 8. Restated, the Examiner contends that, because Appellant has chosen to claim a design embodied in less than the entire graphical user interface, the Examiner can rely on less than all of the features of Mizutani’s graphical user interface. Five Design Differences Appellant argues that Mizutani is not substantially the same as the claimed design, “because the designs have significant, non-trivial differences,” including: (1) vertical gaps between the top of the inner squares and a top outer-boundary of the claimed design are significantly less than vertical gaps between the top of the inner squares and the top outer boundary of Mizutani; (2) lateral gaps between the squares of the claimed design are significantly less than lateral gaps between the squares of Mizutani; (3) Figure 3 of the claimed design shows its leftmost square positioned immediately adjacent to a left-side boundary line, whereas the squares of Mizutani’s Figure 3 and 4 “are positioned at a lateral distance to the left-sided boundary;” (4) squares in Appellant’s Figure 2 are surrounded by “empty space with respect to an outer encompassing boundary,” whereas Mizutani’s Figures 3 and 4 show the “‘camera’ and ‘bag’ squares surrounded by additional squares;” and (5) the Examiner ignores that Mizutani includes graphical icon elements and Appellant’s claimed squares do not. Appeal Br. 7, 10–11. Appeal 2019-001777 Application 29/534,963 5 The Examiner responds that “[d]ifferences 1 through 3 do not create a patentable distinction between the claimed design and the prior art.” Ans. 8. According to the Examiner, “[t]he overall visual appearance created by the two designs – two squares sliding from right-to-left and set within a larger horizontal rectangle – remains strikingly and substantially the same in spite of the minor differences in spacing and proportion.” Id. at 8, 10, 11, see Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed. Cir. 2009) (“The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.”). We agree with the Examiner that, despite the first through third differences identified by Appellant, an ordinary observer would confuse the claimed portion (or subpart) of Appellant’s graphical user interface layout with the appearance of Mizutani’s graphical user interface layout identified in its Figures 3–6. Both designs include squares set within a larger landscape-oriented rectangle, with the squares transitioning or sliding in the same horizontal direction across the display screen to disappear off the screen. The differences in the vertical and horizontal gaps around each square are minor, and would not negate these substantial similarities to the eye of an ordinary observer. Further, the actual positioning of the squares (or portions thereof) within the graphical user interface layout as the squares transition or slide therethrough is not indicative of a design difference that would deter confusion of the ordinary observer, because claim is directed to an animated (rather than static) graphical user interface, such that the design patent provides a series of images with elements that appear to move when Appeal 2019-001777 Application 29/534,963 6 viewed. The claim does not cover the movement, but rather the appearance of the graphical user interface elements as they move. Consideration of Mizutani’s Figures 3–6 informs us that Mizutani’s squares appear to move off and on the display in the same manner as Appellant’s claimed squares. Thus, Mizutani’s squares are, during their movement across the outer rectangle, positioned at locations corresponding to the locations of the claimed squares. Regarding differences 4 and 5, the Examiner responds that Appellant’s argument relies on determination of a proper comparison of the claimed design and Mizutani, which we address below. Ans. 10. The Examiner argues that Appellant’s claim selects elements (i.e., a subpart) of “the layout of a graphical user interface, [which] does not disclose shading between any portions thereof or icons set therein,” making it proper for the Examiner to compare the selected claim elements to the general layout of Mizutani’s display without shading or icons. Id. The Examiner appears to be arguing that Appellant is merely claiming a layout of a subpart of its graphical user interface, and not the information or other design elements that would understandably be added thereto. We consider these arguments below. Selecting Discrete Elements of Mizutani Appellant alleges error in the Examiner’s “selection of only certain discrete elements from the larger design of Mizutani.” Appeal Br. 7. Appellant argues that the reasoning of In re Zahn, 617 f.2d 261 (CCPA 1980), which supports their selection of discrete elements of their graphical user interface design layout, does not likewise support the Examiner’s selection of only certain discrete elements of the prior art to Appeal 2019-001777 Application 29/534,963 7 compare with the claimed elements. Appeal Br. 12. Appellant contends that, “[i]n deleting certain elements of the prior art and maintaining other elements, the Examiner has fundamentally changed the overall visual appearance of the alleged §102(a)(1) prior art.” Id. The Examiner responds that “selection of the top chord and sides of the enclosing rectangle in [Mizutani’s] two-figure transition is no different than” Appellant’s selection of these very same portions when determining which aspects of their overall graphical user interface design layout to claim. Ans. 6. The Examiner provides additional annotated drawings revealing a “more detailed comparison . . . of the claimed design and Mizutani” as two squares “transition[] from right-to-left across the display screen of both designs:” Ans. 6–7. According to the Examiner, as explained above, Appellant is claiming a layout of a sub-part of a graphical user interface, devoid of the Appeal 2019-001777 Application 29/534,963 8 intended additional graphics. Ans. 10. Thus, certain additional graphics are removed from Mizutani in an appropriate manner “to present a direct visual comparison between the claim and the prior art,” and to show how the claimed portion of Appellant’s graphical user interface layout is present in the design of Mizutani, which is “a proper comparison between the prior art and the claim as afforded by the practice in In re Zahn.” Id. at 7 (emphasis omitted). The Examiner has the better argument. The Examiner has removed features from Mizutani so that apples can be compared to apples. A skilled designer, considering Appellant’s Specification in its entirety, would understand that Appellant’s claim is directed to a portion of a layout of an animated graphical user interface intended to display information. Thus, the claim is open ended, allowing for additional design elements, such as the information that would be displayed graphically within the user interface. Therefore, if an ordinary observer would confuse the appearance of Mizutani’s graphical user interface layout with the claimed portion of Appellant’s graphical user interface layout, Appellant’s claim is met by Mizutani. We agree with the Examiner that an ordinary observer would, indeed, confuse Mizutani’s graphical user interface layout with the claimed portion of the graphical user interface layout. We note that Appellant’s Specification does not prohibit, and indeed implies, that the claimed graphical user interface layout design would include information displayed within the squares thereof, such as graphics (i.e., icons). A skilled designer would understand that Appellant’s graphical user interface is intended to display an icon in each square. Further, regarding differences 4 and 5 mentioned above, because Appellant’s claim selects elements of “the layout of a graphical user Appeal 2019-001777 Application 29/534,963 9 interface, [which] does not disclose shading between any portions thereof or icons set therein,” it is proper for the Examiner to compare the selected claim elements to the general layout of Mizutani’s graphical user interface without shading or icons. Ans. 10. The claim is open-ended, and a skilled artisan would understand that the purpose of Appellant’s claimed graphical user interface layout design is to display information. Thus, Appellant’s claimed graphical user interface layout design would understandably contain information within each square, such as the icons shown in Mizutani. For the reasons explained above, we sustain the Examiner’s anticipation rejection. DECISION We AFFIRM the rejection of the claim under 35 U.S.C. § 102(a)(1). 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