Ex Parte Bartek et al

Board of Patent Appeals and Interferences

Sep 6, 2011

10326004 (B.P.A.I. Sep. 6, 2011)

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.
10/326,004 12/18/2002 Velda A. Bartek RSW920020115US1 (073) 4733
46320 7590 09/07/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BECKER, SHASHI KAMALA
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
09/07/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VELDA A. BARTEK, PATRICK H. COX, JR., and
RICHARD N. SPINKS
____________________

Appeal 2011-011543
Application 10/326,0041
Technology Center 2100
____________________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on Dec. 18, 2002. The real party in interest is International Business
Machines Corp. We previously decided an earlier version of claims 1-17 in
Appeal 2008-004213 on May 22, 2009.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for optimizing the display
space in an electronic form by conveniently collapsing and expanding user
interface input controls (edit box) therein. (Spec. 5, ¶ [0009].) As depicted
in Figure 2, the form (210) includes a plurality of edit boxes (220), each
identified with a corresponding static text label (240). (Id. at 8, ¶ [00018].)
Upon an identified edit box (220) being placed in a collapsed state or an
expanded state, the static text label (240) associated therewith is displayed
along with a twistie control denoting to the user the current state of the edit
box, as well as whether the edit box already contains data. (Id. at 8-9, ¶
[00019].)
Illustrative Claims
Independent claims 1 and 8 further illustrates the invention as follows:

1. A method for optimizing display space when
presenting a form comprising a plurality of user interface input
controls and corresponding labels in the display space,
comprising:
identifying individual ones of the user interface input
controls to be collapsed;
displaying labels, within respective static text box
controls, corresponding to said identified individual ones of the
user interface input controls along with associated twistie
controls, each said associated twistie control denoting a
collapsed user interface input control; and,
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in response to use of one of said twistie controls,
suppressing display of all of a user interface input control
associated with said one of said twistie controls.

8. A display space optimized form, comprising:
a plurality of user interface input controls individually
selected, prior to rendering, to be collapsed by default when
rendered in a graphical user interface (GUI);
a plurality of user interface input controls individually
selected, prior to rendering, to be expanded by default when
rendered in said GUI;
a plurality of twistie controls configured in a collapsed
position, each one of said twistie controls configured in a
collapsed position having an association with one of said user
interface input controls individually selected to be collapsed;
and
a plurality of twistie controls configured in an expanded
position, each one of said twistie controls configured in an
expanded position having an association with one of said user
interface input controls individually selected to be expanded
wherein one of said twistie controls configured in the collapsed
position suppressing display of all of the interface input control
associated with said one of said twistie controls.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Berteig US 5,986, 657 Nov. 16, 1999
Kraft US 6,084, 585 July 4, 2000
Radtke US 2002/0113810 A1 Aug. 22, 2002
Dilsaver US 6,961,756 B1 Nov.1, 2005
(filed Aug. 16, 2000)
Yankovich US 7,000,179 B2 Feb. 14, 2006
(filed Feb. 22, 2002)

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Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:
A. Claims 8-10 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
B. Claims 1, 8, 11, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kraft and
Yankovich.
C. Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kraft, Yankovich, and Berteig.
D. Claims 3-5, 10, 13-15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kraft, Yankovich, and
Dilsaver.
E. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kraft, Yankovich, and Radtke.
F. Claims 6, 7, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Kraft, Yankovich, Dilsaver,
and Radtke.
Appellants’ Contentions
First, Appellants argue that the claimed limitation of “a display space
optimized form” is not directed to software per se since it is rendered in a
GUI, which necessarily implicates displaying the form on a screen or
monitor. (App. Br. 7.)
Second, Appellants argue that the combination of Kraft and
Yankovich does not teach or suggest displaying labels, within respective

2 The Examiner has withdrawn the indefiniteness rejection previously
entered against claims 11-17 and 19. (Ans. 2.)
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static text box controls, corresponding to identified user interface input
controls that are suppressed in response to using a twistie control associated
therewith, as recited in independent claim 1. (App. Br. 6-7, Reply Br. 2-3.)
According to Appellants, Kraft discloses a portion of a dropdown box
control that can be selected instead of the labels recited in the claim. (App.
Br. 13-14) Further, Appellants argue that while Yankovich teaches labels
within the context of Appellants’ invention, the reference fails to teach
twistie controls associated therewith to thereby suppress corresponding user
interface input controls, as recited in claim 1. (App. Br. 14, Reply Br. 2-3.)
According to Appellants, Yankovich teaches a pull-down list that allows the
user to select an input from the list as opposed to a user interface input
control that allows the user to input data. (Id.) Similarly, Appellants argue
that Yankovich’s downward facing arrow is not a twistie shown along the
label “To” since it does not show differently the collapsed or expanded
mode. (Id.)
Examiner’s Findings/Conclusions
In response, the Examiner finds that since the claimed “display space”
is not defined in Appellant’s Specification to include hardware, it is
therefore implemented in software. Thus, the Examiner concludes that the
display space is directed to software per se. (Ans. 3-4, 20.)
Next, the Examiner finds that Kraft’s disclosure of displaying text
labels selected from a menu having dropdown arrow teaches displaying the
labels corresponding to user interface input controls using a corresponding
twistie control. (Ans. 5, 20.) Further, the Examiner finds that while Kraft’
disclosure fails to teach that the labels are displayed within respective static
text box controls, which can be suppressed in response to activating a twistie
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control associated therewith, Yankovich’s disclosure remedies the noted
deficiencies. In particular, the Examiner finds that Yankovich’s disclosure
of labels displayed within static text box controls associated with a menu
with a dropdown arrow teaches the limitations missing in Kraft. (Id.)
Therefore, the dispositive issues before us are as follows:

II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that the
display space optimized form recited in claim 8 is directed to software per
se?
2. Have Appellants shown that the Examiner erred in finding that the
combination of Kraft and Yankovich teaches or suggests displaying labels,
within respective static text box controls, corresponding to identified user
interface input controls that are suppressed in response to using a twistie
control associated therewith, as recited in independent claim 1?

III. FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Kraft
1. Kraft discloses a GUI for assisting a user in completing an
electronic form. The user selects desired data fields from a list of predefined
menu entries in the GUI, which detects the activation of a form expand key
to present additional entries to the user. Upon completing the selected
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fields, the user can generate a form that is limited to desired fields. (Col. 1,
l. 64- col. 2, l. 13.)
2. As depicted in Figures 7 and 8, Kraft discloses a GUI having a
row entry template (301) including a menu field (302), a menu expand key
(303), and a data field (304). Upon launching the GUI, the user can select
the menu expand key (303) to access a pull down menu table (310) with
numerous pre-programmed menu entries from which the user subsequently
selects desired label entries describing the text to be entered in
corresponding data input control fields (304). (Col. 7, ll. 52-58, col. 8, ll. 2-
20.)
3. Kraft discloses that upon a user selecting a text label entry from
the preprogrammed text label entries, the form only displays the selected
text label with its corresponding text data input control field, as well as the
expand key used to select the text label entry. (Fig. 7.)
4. Kraft discloses a form expand key (306) and a contract key
(708, 710) to respectively add and delete an associated row entry field. (Col.
9, l. 66- col. 10, l. 13.)
Yankovich
5. Yankovich discloses an electronic form having a “To” label
displayed within a static text box control corresponding to a user interface
input control menu having a dropdown arrow for selecting an e-mail
recipient based on the sender’s history. (Fig. 14.)

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IV. ANALYSIS
Nonstatutory Rejection
We find error in the Examiner’s rejection of claim 8, which recites, in
relevant part, a display space optimized form to be rendered in a GUI. In
particular, we agree with Appellants that one of ordinary skill in the art
would have readily appreciated that the recitation of GUI necessarily
implicates the use of a computer monitor to electronically render the
optimized form. (App. Br. 7.) Consequently, we will not sustain this
rejection of claims 8 and claims 9 and 10 depending therefrom.
Obviousness Rejection
Claim 1
We do not find error in the Examiner’s rejection of independent claim
1, which recites, inter alia, displaying labels, within respective static text
box controls, corresponding to identified user interface input controls that
are suppressed in response to using respective twistie controls associated
therewith.
We first consider the scope and meaning of the terms “user interface
input control,” and “twistie control,” which must be given their broadest
reasonable interpretation consistent with Appellant’s disclosure. Our
reviewing Court has established that:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

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In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); See also In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted as
broadly as their terms reasonably allow”). Consequently, we must turn to
Appellants’ Specification for properly construing the claim language. In
particular, Appellants’ Specification states the following:
Static text labels corresponding to the identified individual ones
of the user interface input controls can be displayed as can
associated twistie controls. In that regard, each of the
associated twistie controls can denote a collapsed user interface
input control. Finally, any display of the identified individual
ones of the user interface controls can be suppressed so as to
display a form which includes a display only of the static text
labels for each user interface input control and those user
interface input controls which are identified as such.

(Spec. 5, ¶ [0009].)
Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005).
Upon reviewing Appellants’ Specification, we fail to find an express
definition for the terms “user interface input control” and “twistie control.”
Consistent with Appellants’ Specification, we broadly but reasonably
construe the “user interface input control” as a data input field in a GUI.
Likely, we construe a twistie control as a mechanism for collapsing or
suppressing the display of a data input field associated therewith.
Consequently, we construe the claimed limitations set forth above as
displaying, within a static field of a GUI, labels corresponding to identified
input fields that are suppressed in response to using a suppression
mechanism associated therewith.
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Given this backdrop, we agree with the Examiner that Kraft’s
selection of a text label entry from a dropdown menu having a list of
preprogrammed entries (FF. 2-3) reasonably and fairly teaches selecting a
label. In particular, we find that once the user selects a text label entry to
describe a data input field, the selected entry becomes fixed for the
associated data field. We find nothing in Appellants’ claim language that
precludes a label from being selected from a dropdown list of labels. It
suffices that such labels are capable of describing respective data input fields
associated therewith. Further, as admitted by Appellants, the label “To”
disclosed in the Yankovich reference is displayed within a static text box
control, as required by the claim. (FF. 5, App. Br. 14.) Consequently, we
find that Yankovich complements Kraft to predictably result in a GUI
having a form that uses labels, within respective static text box controls,
corresponding associated data input fields.
Next, we find that by deleting a row entry field associated with a
selected label in response to using a contract key (FF. 4), Kraft teaches in
response to using a twistie control associated with a data input box control,
suppressing the display of data input box control. In particular, we find that
the disclosed contract key serves to prevent an associated data input field
from being displayed in the GUI.
Last, we find without merit Appellants’ argument that the disclosed
twistie control of Kraft does not show differently the expanded or collapsed
mode since such a limitation is not recited in the claim.
It follows that Appellants have not shown that the Examiner erred in
finding that the combination of Kraft and Yankovich renders independent
claim 1 unpatentable.
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Since Appellants argue claims 2-19 as a single group, claims 2-19 fall
together with claim 1 for the same reasons set forth above. See 37 C.F.R.
§ 41.37(c)(1)(vii).

V. CONCLUSIONS OF LAW
1. Appellants have shown that the Examiner erred in rejecting
claims 8 through 10 as being directed to nonstatutory subject matter. We
therefore reverse this rejection.
2. Appellants have not shown that the Examiner erred in rejecting
claims 1 through 19 as being unpatentable under 35 U.S.C. 103. We
therefore affirm this rejection.
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

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