11111984 (P.T.A.B. Nov. 29, 2012)

Ex Parte Cutsinger et al

Patent Trial and Appeal BoardNov 29, 2012

11111984 (P.T.A.B. Nov. 29, 2012)

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. 11/111,984 04/22/2005 Paul Cutsinger 312663.01/MFCP.140710 6427 45809 7590 11/29/2012 SHOOK, HARDY & BACON L.L.P. (MICROSOFT CORPORATION) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER VU, THANH T ART UNIT PAPER NUMBER 2175 MAIL DATE DELIVERY MODE 11/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL CUTSINGER, CORNELIS K. VAN DOK, DAVID G. DE VORCHIK, ELI Y. TAMANAHA, KENNETH M. TUBBS, LYON K. F. WONG, PAUL GUSMORINO, and SASANKA CHALIVENDRA Appeal 2010-006804 Application 11/111,984 Technology Center 2100 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY L. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-18, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2010-006804 Application 11/111,984 2 Appellants’ Invention Appellants’ invention relates generally to the field of computer software. More particularly, the invention relates to a system and method for providing an improved user interface when browsing files on a computer system. The application relates to the display of information regarding such files, and for allowing user interaction with this information. (Spec. 1, ¶ [0001].)1 Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method for browsing files comprising; receiving a user request to view files meeting one or more criteria in a browser; identifying a plurality of files that meet said criteria; selecting one of a plurality of predefined browsers based on results of said step of identifying, wherein characteristics that differentiate the selected browser from other browsers of said plurality are characteristics based on the utilized criteria of said user request; and displaying said selected browser with information regarding said plurality of files, wherein said information is based on said one or more criteria. 1 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”) filed Aug. 28, 2009. We also refer to the Examiner’s Answer (“Ans.”) mailed Nov. 27, 2009. Appeal 2010-006804 Application 11/111,984 3 Rejections on Appeal 1. The Examiner rejects claims 1-9 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 2. The Examiner rejects claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over Bott (Bott et al., Microsoft Windows XP Inside Out, Microsoft Press, 2001) and McCotter (US Patent No. 6,401,097 B1, issued June 4, 2002). ISSUES 1. Under § 112, second paragraph, did the Examiner err in finding that the phrase “utilized criteria” lacked proper antecedent basis? 2. Under § 103, did the Examiner err in finding that the combination of Bott and McCotter collectively would have taught or suggested “selecting one of a plurality of predefined browsers based on results of said step of identifying, wherein characteristics that differentiate the selected browser from other browsers of said plurality are characteristics based on the utilized criteria of said user request” (emphasis added), within the meaning of independent claim 1 and the commensurate limitations recited in independent claim 10? ANALYSIS The §112, Second Paragraph Rejection The Examiner argued that there is insufficient antecedent basis for the limitation “the utilized criteria of said user request.” (Ans. 3.) Appellants submit that it is clear criteria are received in the user request to view files Appeal 2010-006804 Application 11/111,984 4 and if a plurality of files are identified that meet the aforementioned, then there must inherently be “utilized criteria” for the identification to take place. (Br. 25-26.) We disagree. We conclude that the scope of the claimed “criteria” is unclear and not necessarily inherent as urged by Appellants. As explained by the Examiner (Ans. 9), it is unclear whether “the utilized criteria” refers to the recited “one or more criteria in a browser” or some different “criteria.” Based on this record, we conclude that the Examiner did not err in rejecting claims 1-9 as indefinite. Accordingly, we affirm the Examiner’s rejection of claims 1-9 under 35 U.S.C. § 112, second paragraph. The § 103 Rejection Appellants contend that there is no teaching, suggestion, or rendering obvious the limitation of selecting a browser based on results of identifying a plurality of files that meet one or more criteria. (Br. 14-15.) We agree for essentially the same reasons argued by Appellants. As noted by Appellants, the Examiner relied on McCotter to teach or suggest the limitation at issue. (Ans. 3-4, 7.) However, McCotter describes user selection of a particular layout of dynamic content folder. Therefore, according to McCotter, the layout selection is not based on the criteria of the user request, or based on a file type, as required by independent claims 1 and 10 respectively. On the record before us, we conclude that the Examiner erred in rejecting claims 1 and 10 for the reasons argued by Appellants. Accordingly, we reverse the Examiner’s obviousness rejection of independent claims 1 and 10, and associated dependent claims 2-9 and 11- 18. Appeal 2010-006804 Application 11/111,984 5 CONCLUSION OF LAW Appellants have not shown that the Examiner erred in rejecting claims 1-9 under 35 U.S.C. § 112, second paragraph. Appellants have shown that the Examiner erred in rejecting claims 1- 18 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejection of claims 1-9 under 35 U.S.C. § 112, second paragraph. We reverse the Examiner’s rejection of claims 1-18 under 35 U.S.C. § 103(a). AFFIRMED-IN-PART tkl