Ex Parte Atchison

Board of Patent Appeals and Interferences

May 18, 2009

10624320 (B.P.A.I. May. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES ATCHISON
____________

Appeal 2008-1345
Application 10/624,3201
Technology Center 2100
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Decided: 2 May 18, 2009
____________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY, III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

1 Application filed July 22, 2003. The real party in interest is BellSouth
Intellectual Property Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-24 mailed June 14, 2006, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant invented a system, method, and computer readable medium
for providing a plurality of query criteria for querying an employee database.
The employee database is queried by applying respective ones of the query
criteria to respective ones of a plurality of employees. A plurality of folders
is provided that respectively correspond to respective ones of the plurality of
query criteria. A plurality of workbooks is created that contain the results
from querying the employee database for respective ones of the plurality of
folders. Respective ones of the plurality of workbooks are associated with
respective ones of the plurality of employees that have results for respective
ones of the plurality of query criteria. (Spec. 17, abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-24. Claims 1, 9, and 17 are independent
claims. Claim 1 is illustrative:
1. A method of querying an employee database,
comprising:
defining a plurality of query criteria;
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querying the employee database by applying respective
ones of the query criteria to respective ones of a plurality of
employees;
providing a plurality of folders, respective ones of the
plurality of folders corresponding to respective ones of the plurality of
query criteria; and
creating a plurality of workbooks containing results from
the querying the employee database for respective ones of the
plurality of folders, respective ones of the plurality of workbooks
being associated with respective ones of the plurality of employees
that have results for respective ones of the plurality of query criteria
corresponding to respective ones of the plurality of folders.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Szlam US 6,359,892 B1 Mar. 19, 2002
Rubert US 6,366,915 B1 Apr. 2, 2002
Handsaker US 2003/0110191 A1 Jun. 12, 2003
Ramasamy US 6,944,614 B1 Sep. 13, 2005
(Filed Nov. 24, 1999)

D. REJECTIONS
The Examiner entered the following rejections3 which are before us
for review:
(1) Claims 1-3, 5, 8-11, 13, 16-19, 21, and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Handsaker in view of Szlam;

3 The 35 U.S.C. § 101 rejections were withdrawn by the Examiner (Ans. 3,
10).
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(2) Claims 4, 12, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Handsaker in view of Szlam and further in view of
Rubert; and
(3) Claims 6, 7, 14, 15, 22, and 23 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Handsaker in view of Szlam and further in
view of Ramasamy.

II. PROSECUTION HISTORY
Appellant appealed from the Final Rejection and filed an Appeal Brief
(App. Br.) on May 2, 2007. The Examiner mailed an Examiner’s Answer
(Ans.) on June 27, 2007. Appellant filed a Reply Brief (Reply Br.) on
August 21, 2007.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Handsaker
1. Handsaker discloses “[a] system . . . stores the lists of parameters
110 and results 120, and the types of these parameters 110 and results 120,
in a storage module 315 (FIG. 3), for example, a database.” (¶ [0044].)
2. In Handsaker, “[t]he system 300 facilitates these objectives by
storing tracking information about workbooks, including their parameters
110, parameter types and dependencies in the storage module 315. In one
embodiment, the system 300 stores this information as a workbook
information database.” (¶ [0076].)
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3. In Handsaker, “a parameter can be a person type parameter. A
person type parameter can include attributes such as personal information
. . . The personal information can include the . . . Employee No., Work
phone, . . . and Date of hire. . . . a user can input a value for the attribute
Title using a pull-down menu” (¶ [0047]).
4. Handsaker discloses that “the system can automatically generate a
user interface to prompt the user for a telesales representative (chosen from a
list of all such people known to the system) and a month (based on the
months for which the system has data).” (¶ [0051].)
5. Handsaker discloses that “a user can also change parameter values
using the pull-down menus 525a and 525b. In response to changing the
parameter values and clicking on the “GO” button 530, the system 300 will
re-evaluate the virtual workbook 205, selecting a concrete workbook 105’
. . . The concrete workbook is then instantiated and rendered” (¶ [0118]).
6. Handsaker discloses “[t]he first parameterized workbook 105a
includes a parameter module 110, a workbook module 115 and a results
module 120.” (¶ [0043].)

Szlam
7. Szlam discloses that “[t]he user selects and opens the ‘Main
Office’ folder 301 or selects ‘Main Office’ from a pull-down menu” (col. 11,
ll. 37-39).

IV. PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
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Teleflex, Inc., 550 US 398, 419 (2007). To be nonobvious, an improvement
must be “more than the predictable use of prior art elements according to
their established functions.” Id. at 417.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Brief to show error in the
proffered prima facie case. Only those arguments actually made by
Appellant has been considered in this decision. Arguments which Appellant
could have made but chose not to make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

V. ANALYSIS
Grouping of Claims
In the Brief, Appellant argues claims 1-24 as a group (App. Br. 6-10).
For claims 2-24, Appellant repeats the same argument made for claim 1. We
will, therefore, treat claims 2-24 as standing or falling with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir.
1991).

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The Obviousness Rejection
We now consider the Examiner’s rejection of claims 1-24 under 35
U.S.C. § 103(a).

Appellant contends that “the Final Action fails to recognize the
distinction recited in the independent claims that a database query is
performed first and then workbooks are created that store the results of the
database query. Handsaker, by contrast, describes querying workbooks that
have previously been created.” (App. Br. 8.)
The Examiner found that “Handsaker states, ‘the concrete workbook
is then instantiated and rendered using the changed parameter values.’
Rendering the workbook reads on the claim terminology of ‘creating
(generating) a workbook’ because rendering the workbook creates the
workbook for display” (Ans. 10).
Issue: Has Appellant shown that the Examiner erred in finding that
Handsaker discloses creating a plurality of workbooks containing results
from querying the employee database?

The Examiner finds that Handsaker teaches: (1) defining a plurality of
query criteria in Fig. 5, items 505 and 515 (Ans. 3); (2) querying a workbook
information database in Table 1; and using pull-down menus with options
corresponding to respective search criteria as seen in Fig. 5, item 505 and
515 (Ans. 3-4). The Examiner further finds that Szlam teaches using a
folder or pull-down menu to accomplish a task (Ans. 4). We endorse and
adopt the Examiner’s findings.
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Specifically, Handsaker discloses a workbook information “database”
that stores list of parameters that can include an employee no. and work
phone (FF 1-3). Thus, we find that Handsaker’s database is consistent with
an “employee database” given that specific employee type data can be stored
therein. Further, Handsaker discloses that the user can query the database by
selecting a particular person/group and a particular parameter using a drop-
down menu (FF 4-5). Szlam discloses that folders can also be used to
store/access information (FF 7). Further, Handsaker discloses rendering a
concrete workbook in response to changing parameters (i.e., querying) (FF
5), and the concrete workbook includes a results module 120 (FF 6).
Therefore, we find that the disputed features of claim 1 read on the
above noted features of Handsaker and Szlam. Specifically, the claimed
“creating a plurality of workbooks containing results from querying the
employee database” reads on at least Handsaker’s querying of the workbook
information database and rendering of a concrete workbook in response to
changing parameters.

Motivation to Combine Argument
Appellant further contends that “there would be no motivation to
combine the teachings of Handsaker and Szlam because Handsaker contains
no disclosure therein about the desirability of organizing the workbooks in
separate locations.” (App. Br. 8.)
The Examiner found that “it would have been obvious to . . . modify
Handsaker with the above teachings, such that the user interface of fig. 5 of
Handsaker uses folders instead of pull-down menus . . . to increase user-
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friendliness, since a user may prefer a folder interface to a pull-down menu
interface.” (Ans. 4.)
Issue: Has Appellant shown that the Examiner erred in finding that
there is motivation to use folders in the system of Handsaker?
In essence, as noted supra, Appellant argues that Handsaker fails to
disclose the desirability of organizing workbooks in separate location, i.e., in
folders. However, as noted infra the motivation to modify a teaching need
not be found in the references sought to be combined.
The ultimate issue of obviousness is a matter of law that turns on four
underlying factual determinations: (1) the scope and content of the prior art,
(2) the level of ordinary skill in the art, (3) the differences between the
claimed invention and the prior art, and (4) objective indicia of
nonobviousness (secondary considerations). See Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), as reaffirmed by KSR, 550 U.S. at 406.
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988); see also DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969) (“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
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obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.”’); In re Hoeschele, 406 F.2d 1403, 1407 (CCPA 1969) (“[I]t is
proper to take into account not only specific teachings of the references but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom …”) (citations omitted).
Here, we find the Examiner took the specific teaching of “folders” in
Szlam and reasonably drew therefrom inferences of a user-friendly system.
Therefore, we do not find that Appellant has shown error in the
Examiner’s rejection of illustrative claim 1. Instead, we find the Examiner
has set forth a sufficient initial showing of obviousness. Appellant has not
shown that the combination of Handsaker and Szlam lacks the above-noted
disputed features of claim 1. Therefore, we affirm the rejection of
independent claim 1 and of claims 2-24, which fall therewith.

As for the Rubert and Ramasamy references, Appellant merely relies
upon the arguments presented for the Handsaker and Szlam references. We
note that arguments which Appellant could have made but chose not to make
in the Briefs have not been considered and are deemed to be waived. 37
C.F.R. § 41.37(c)(1)(vii).

VI. CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-24.
Thus, claims 1-24 are not patentable.

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VII. DECISION
We affirm the Examiner’s rejections of claims 1-24 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
erc

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