Ex Parte Bangor

Patent Trial and Appeal Board

Jun 9, 2014

10267068 (P.T.A.B. Jun. 9, 2014)

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.
10/267,068 10/07/2002 Aaron W. Bangor T00437 (00064) 8549
82744 7590 06/10/2014
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
TRAN, QUOC A
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
06/10/2014 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 AARON W. BANGOR
____________________

Appeal 2011-002899
Application 10/267,068
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 5, 2, 14, and 1 under appeal read as follows
(emphasis added):
5. A method for providing a computerized provisioning
environment for a service agent performing provisioning of
intelligence network services, comprising:
grouping identity information, indicative of an identity
of the service agent, into an identity information section;
grouping a plurality of navigation links into a navigation
section, each of the plurality of navigation links directed to a
particular information page comprising information concerning
the provisioning of the intelligence network services;
grouping a plurality of task links into a task section, each
of the plurality of task links directed to a particular page for
performing a task associated with the provisioning of the
intelligence network services; and
displaying the identity information section, the
navigation section, and the task section on a same single layout.

2. The method of Claim 1, wherein displaying the
identity information section, the customer information section,
the navigation section, and the task section in a same single
layout comprises displaying a particular corresponding color
background for each of the identity information section, the
customer information section, the navigation section, and the
task section.

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14. The system of Claim 13, wherein the program is
operable to continually display the identity information group
in a same position in the same single layout when the particular
page comprising the information or the particular page for
performing the task is displayed[.]1

1. (In-part) A method for providing a computerized
provisioning environment for a service agent performing
provisioning of advanced intelligent network services,
comprising:
. . .
wherein the identity information group remains
displayed in a same position in the same single layout when
the particular page comprising the information or the
particular page for performing the task is displayed,
. . .
positioning the task section under the customer
information section and next to the navigation section. 2

Rejections on Appeal
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Strickland (US 5,956,024), Elliott (US
7,145,898 B1), and Goss (US 2004/0039846 A1). 3

1 As filed, claim 14 lacked a period.
2 The reproduced “wherein” clause of claim 1 is confusing, we suggest
replacing with the following or similar language (changes emphasized):
“wherein the identity information section remains displayed in a same
position in the same single layout when a first desired particular page
comprising the information or a second desired particular page for
performing the task is displayed,”.
3 Separate patentability is not argued for claims 1, 4, 6-8, 12, 13, and 15-20.
Except for our ultimate decision, these claims are not discussed further
herein.
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Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 5
under § 103(a) because the information in Goss is not indicative of a service
agent performing provisioning as required by claim 5. App. Br. 6-8.
Further, Appellant argues that:
Appellant notes that the Answer emphasizes the inclusion of an
agent’s name (Gwenna Williamson) in Goss FIG. 6. See,
Answer at pp. 35-36. Appellant further notes that FIG. 6 of
Goss depicts “Case History” and “Case Details” information
and Gwenna Williamson is the name of an agent that handled a
matter contained in the case history. In other words, the name
“Gwenna Williamson” does not identify the agent who is
performing the provisioning services as recited in claim 5.
Reply Br. 1-2.
2. Appellant contends that the Examiner erred in rejecting claim 2
under § 103(a) because:
Although both the reference and the claim 2 are concerned with
the use of color, the use of color to distinguish the state of
different connections in a conference call application does not
teach or suggest the use of different color backgrounds for
different sections of a provisioning application as claimed.
App. Br. 9 (emphasis added).
3. Appellant contends that the Examiner erred in rejecting claim 3
under § 103(a) because:
Although both the reference and the claim 3 are concerned with
the use of color, the use of color to distinguish the state of
different connections in a conference call application does not
teach or suggest the use of differently color links in a
provisioning application as claimed.
App. Br. 9 (emphasis added).
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4. Appellant contends that the Examiner erred in rejecting claim 9
under § 103(a) because:
[A]lthough the user interfaces of FIG. 1 and FIG. 3 of
Strickland include reference numerals individually identifying
each of the sections, the rejection does not indicate which
reference numerals allegedly correspond to which of the
claimed sections.
App. Br. 10.
5. Appellant contends that the Examiner erred in rejecting claim
10 under § 103(a) because the stated rejection “is a facially incorrect
statement” for the reasons set forth by Appellant at page 10 of the Appeal
Brief.
6. Appellant contends that the Examiner erred in rejecting claim
11 under § 103(a) because the stated rejection “is improper” for the reasons
set forth by Appellant at pages 10-11 of the Appeal Brief.
7. Appellant contends that the Examiner erred in rejecting claim
14 under § 103(a) because the stated rejection is “confusing” for the reasons
set forth by Appellant at page 11 of the Appeal Brief and page 3 of the
Reply Brief.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
As to Appellant’s above contentions 5-7 covering claims 10, 11, and
14, we agree with Appellant’s arguments. However, we leave it to the
Examiner to prepare new rejections of these claims for reasons noted in this
decision. For example, as to claim 14, it is conventional in the art to have a
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program that is operable to continually display information in a same
position in a layout. See Strickland at Figure 3, Field 2, (col. 3, ll. 10-12)
which shows the conventional Apple ™ menu which is well known
to continually display information in a same position in a layout.
We disagree with Appellant’s conclusions as to contentions 1-4
covering claims 1-9, 12, 13, and 15-20. As to the rejection of these claims,
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief. We concur with the conclusions reached by the Examiner. We
highlight the following for emphasis.
As to Appellant’s above contention 1, we disagree. Appellant is
mistaken that “the name ‘Gwenna Williamson’ does not identify the agent
who is performing the provisioning services” (Reply Br. 2) because the
trouble ticket “Case ID” (Goss, Fig. 6, white text on black background) and
the Case Details “Case ID” are the same.
Separately as to contentions 1-4, 4 Appellant’s argument is directed to
the information content of the displayed non-functional descriptive material
(e.g., “information, indicative of an identity of the service agent,” (claim 5);
particular type of information being colored differently (claims 2 and 3); and
particular groupings of information being placed at selected locations in a
data structure, i.e., particular display format (claim 9)). It appears to us that
in numerous instances the argued subject matter presented in the claims on
appeal relates to features that differ from the prior art solely on the basis of

4 This analysis is equally applicable to claims 10 and 11. We leave it to the
Examiner to prepare new rejections of these claims.
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“non-functional descriptive material” (e.g., the data structure of Appellant’s
claim 9 is identical to the data structure for displaying groupings of
information in figure 1 of Strickland, they differ only in their non-functional
information to be displayed in each grouping), which is generally not given
patentable weight when determining patentability of an invention over the
prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The PTO
may not disregard claim limitations comprised of printed matter. See
Gulack, 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S. 175, 191
(1981). However, the Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1583-84 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004). See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (“[N]onfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art.”), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative)
(“Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious.”), aff'd, No. 06-1003 (Fed. Cir.
Jun. 12, 2006) (Rule 36).
We conclude that if the prior art describes all the claimed structural
and functional relationships between the descriptive material and the
substrate, but the prior art describes a different descriptive material than the
claim; then the descriptive material is non-functional and will not be given
any patentable weight. That is, we conclude that such a scenario presents no
new and unobvious functional relationship between the descriptive material
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and the substrate. In the instant case on appeal, we find that the subject
matter argued by Appellant in contentions 1-4 recites non-functional
descriptive material which does not provide a patentable distinction to the
data or to the process of the claimed methods. In other words, we find that
the meaning to a human of the content of a human viewable image or of
human-readable instructions cannot be used to distinguish the claimed
invention from other human-readable or viewable information whose
processing is otherwise identical.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 10, 11, and 14.
(2) The Examiner did not err in rejecting claims 1-9, 12, 13, and
15-20 under 35 U.S.C. § 103(a).
(3) Claims 1-9, 12, 13, and 15-20 are not patentable.

DECISION
The Examiner’s rejection of claims 10, 11, and 14 is reversed. 5
The Examiner’s rejection of claims 1-9, 12, 13, and 15-20 is affirmed.

5 We leave it to the Examiner to prepare new rejections of these claims as
discussed in this decision.
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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-IN-PART

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