APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/982,337 10/18/2001 Todd Ouzts MFCP.

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/982,337 10/18/2001 Todd Ouzts MFCP /31/2012 SHOOK, HARDY & BACON L.L.P. (MICROSOFT CORPORATION) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BOULEVARD KANSAS CITY, MO EXAMINER STEVENS, ROBERT ART UNIT PAPER NUMBER 2142 MAIL DATE DELIVERY MODE 12/31/2012 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)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TODD OUZTS, PHILIP FORTIER and CHRIS J. GUZAK Appeal Technology Center 2100 Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL

3 STATEMENT OF THE CASE Appellants are appealing claims 1, 5-7, 9-12 and Appeal Brief 2 (amended March 4, 2009). We have jurisdiction under 35 U.S.C. 6(b) (2012). We affirm-in-part. Introduction The invention is directed to a method and a computer system, and, more particularly, a computer system and method that allows [sic] the content of a collection of items to be graphically represented in a way that provides an indication of the content without opening the container holding the contents. Specification 1. Illustrative Claims 1. A method for use on a computer having a graphical operating environment, comprising: providing a collection of items within a container, the container having an outer appearance; enumerating the items that exist within the container; determining whether a graphical preview can be generated for each enumerated item; generating a list of items for which a graphical preview can be generated; selecting, from the generated list, a desired number of items to display on the outer appearance based upon a sort criteria, wherein the sort criteria selects the items based upon those items which were most recently modified in some way; 2

4 displaying graphical previews for the selected items on the outer appearance of the container, wherein the graphical previews are not folders, and the graphical previews are generated by a thumbnail extractor based on extensions associated with the selected items; and locating the graphical previews on the outer appearance in a desired location, thereby enabling a computer user to more easily identify the contents of the container without opening the container. 9. A method in a computer system for displaying a collection of content items within a container, comprising: displaying a background appearance for the collection of content items; determining if any of the collection of content items can be graphically represented; if any of the collection of content items can be graphically represented, sorting the content items that can be graphically represented based on a sort criteria and displaying on said background appearance graphical previews for the sorted content items that can be graphically represented, and displaying a textual message in addition to the background appearance and the graphical previews, without displaying the entire collection of content items. Rejections on Appeal Claims 9-12, 15, 18 and 19 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Baecker (U.S. Patent 5,586,237; issued December 17, 1996), Scott (U.S. Patent Number 6,545,687 B2; issued April 8,

5 and Gill (U.S. Patent Number 6,947,959 B1; issued September 20, 2005). Answer 4-8. Claims 1, 5-7, 16, 17 and 20 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Baecker, Scott, Gill and Hatanaka (U.S. Patent Number 5,680,558; issued October 21, 1997). Answer Issues on Appeal Do Baecker, Scott and Gill, either alone or in combination disclose sorting content items that can be graphically represented based on a sort criteria to display the sorted content items on a background appearance for collection of content items as recited in claim 9? Do Baecker, Scott, Gill and Hatanaka, either alone or in combination disclose generating a list of items for which a graphical preview can be generated and selecting, from the generated list, a desired number of items to display on the outer appearance based upon a sort criteria, wherein the sort criteria selects the items based upon those items which were most recently modified in some way as recited in claim 1? ANALYSIS The Examiner interprets the claim 1 limitation locating the graphical previews... to more easily identify the contents of the container without opening the container as pertain[ing] to a system in which displays representations of folders contents on against a background appearance. Answer The Examiner, based upon his interpretation, finds that Baecker teaches showing icons on the outer appearance, of an insider representation of an icon, and is supplemented by Scott who further teaches 4

6 a system that displays a hierarchy of thumbnails encompassed in a grouping. Id. at (reference numbers omitted). The Examiner supplements the teachings of Baecker and Scott with Gill s disclosure of a system used for displaying a plurality of thumbnails on a background appearance. Id. at 14. The Examiner relies upon Hatanaka to disclose a system that extracts reduced size images from items and further teaches that the extraction process recognizes file extensions in order to direct it to the correct thumbnail for a given format. Id. at The Examiner supplements the combination of Baecker, Scott and Gill with the teachings of Hatanaka. Id. The Examiner further finds that Gill teaches a system for displaying a plurality of thumbnails on a background appearance similar to that of Baecker and Scott. Id. at 15. Appellants argue that Gill teaches a query interface that formulates search criteria for digital assets and that the query interface is not an outer appearance of a container or folder wherein the outer appearance presents graphical previews as claimed. Appeal Brief 20. We find Appellants arguments to be persuasive. Looking at figure 20 of Gill, it is evident that Gill does not disclose a folder or container wherein a plurality of thumbnails is displayed as claimed. See Answer 15. We agree with Appellants contentions that Gill s query palette is a results interface that displays the result of the query, which includes thumbnail images. Appeal Brief 20. Neither Baecker, Scott or Hatanaka addresses Gill s deficiencies therefore we do not sustain the Examiner s rejection of claim 1, as well as, those claims dependent therefrom. However, we agree with the Examiner s findings in regard to claim 16 and therefore sustain the Examiner s rejection of claim 16, as well as, those 5

7 claims dependent therefrom. Claim 16 does not require a container per se, but indicates that a background appearance rendering component can be used with a container or file. An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Appellants argue with respect to claim 9 that: The cited portions of Gill teach a query interface that allows a user to formulate search criteria for digital assets and a query palette, which displays results of the query. The search criteria specified by the user may include a last date of modification. Nothing in Gill fairly teaches or suggests sorting a collection of content items that can be graphically represented, where the collection of content items are stored within a container. Appeal Brief 12. We do not find Appellants arguments to be persuasive because although it is evident that Gill does not disclose a folder or container, wherein a plurality of thumbnails is displayed as claimed, as stated above, claim 9 does not require a folder or container. Claim 9 is directed to sorting and displaying content and the limitation within a container is only found in the preamble without any support within the body of the claim. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, 6

8 instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 70, 190 USPQ 15, (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Therefore we agree with the Examiner s findings and sustain the Examiner s rejection of claim 9, as well as those claims dependent therefrom. However, we agree with Appellants arguments in regards to claim 15 because the claim requires a container or folder having a background appearance and as stated above, we find that Gill does not disclose such a feature. Therefore we reverse the Examiner s rejection of claim 15, as well as those claims depending therefrom. DECISION The rejections of claims 1, 5-7, 15, 17 and 19 are reversed. The rejections of claims 9-12, 16, 18 and 20 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a)(1)(iv). See 37 C.F.R (f). AFFIRMED-IN-PART Vsh 7