Ex Parte Bertram et al

Board of Patent Appeals and Interferences

Jun 28, 2011

10281803 (B.P.A.I. Jun. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RANDAL L. BERTRAM, JAMES C. COOK, PATRICK E.
MCCAMISH, and GARY M. QUESENBERRY
____________
Appeal 2009-010321
Application 10/281,803
1

Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1
Filed on October 28, 2002. The real party in interest is International
Business Machines Corp. (Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner‟s non-final rejection of claims 1-3, 5, and 11-22. (Br. 2.)
2
Claims
4 and 6-10 have been cancelled. (Id.) We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method, system, and computer program product
for creating, developing, and modifying cascading choices for use in
network environments. (Spec. 1, ll. 3-5.)
Illustrative Claims
Independent claims 1 and 11 further illustrate the invention as
follows:
1. A method for displaying cascading choices at a
client display, the cascading choices including data levels and
data items, the method comprising:
generating a user interface at the client display, the user
interface including a plurality of data levels in a hierarchal
listing, each data level including at least one selectable data
item, the visibility of data items at a lower data level is
dependent on data items selected at a higher data level;
associating variables for each data level and each data
item; and
generating visibility rules that define the visibility of
each data level and each data item at the client display, wherein
the visibility rules include at least some of the associated
variables, the visibility rule for each data level and each data
item includes only variables for data levels and data items
higher in the hierarchical list.

2
All references to the Brief are to the Brief filed September 2, 2008, which
replaced the Brief filed March 19, 2008.
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11. A system for displaying cascading choices at a
client computer in a network, the cascading choices including at
least one data level and at least one data item, the system
comprising:
a server configured to transmit computer readable code
embodied in computer-readable medium to the client over the
network, the computer readable code configured to:
associate a Boolean variable for each data level and each
data item in the cascading choices;
instantiate a level object for each data level in the
cascading choices;
instantiate an item object for each data item in the
cascading choices;
generate visibility rules that define conditions for the
visibility of each data level and each data item at the client
display, the visibility rule for each data level and each data item
includes only variables for data levels and data items higher in
the hierarchical list; and
automatically minimize names for the level variable and
the data variable.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Lokuge US 6,252,597 B1 June 26, 2001
Proebsting US 6,748,585 B2 June 8, 2004
(filed Nov. 29, 2000)
Holbrook US 6,961,731 B2 Nov. 1, 2005
(filed Nov. 15, 2001)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
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Claims 1, 2, 5, 12-17, and 20-22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Holbrook, or in the alternative, under 35
U.S.C. § 103(a) as being unpatentable over Holbrook.
3

Claims 3, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Holbrook and Proebsting.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Holbrook and Lokuge.
Appellants’ Contentions
1. Appellants contend that Holbrook discloses parent category
circles that do not have a hierarchical relationship to one another and,
therefore, do not teach or fairly suggest “a plurality of data levels in a
hierarchal listing,” as recited in independent claim 1. (Br. 6-7.) Further,
Appellants argue that Holbrook does not teach or fairly suggest “associating
variables for each data level and each data item,” as claimed. (Id. at 8.) In
particular, Appellants allege that Holbrook‟s disclosure of function names

3
In the Non-final Rejection entered May 30, 2008, the Examiner appears to
have rejected dependent claims 12-15 and 21 under 35 U.S.C. § 102(e) as
being anticipated by Holbrooke, or in the alternative, under 35 U.S.C. §
103(a) as being unpatentable over Holbrooke. (Non-fin. Rej. 6-8; see also
Ans. 4-6.) However, we note that independent claim 11, from which claims
12-15 and 21 depend, stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Holbrooke and Proebsting. (Non-fin.
Rej. 9; see also Ans. 7-8.) Therefore, since Proebsting is part of the
rejection of independent claim 11, we will treat dependent claims 12-15 and
21 as being rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Holbrooke and Proebsting. While Appellants acknowledge
this discrepancy when grouping dependent claims 12-15 and 21 with
independent claim 11 (Br. 14), Appellants failed to separately argue it on
appeal. Thus, Appellants have waived any such arguments. See In re Watts,
354 F.3d 1362, 1367 (Fed. Cir. 2004).
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such as “Sub link1” are subroutines that render different user interfaces and
are not associated with the parent category circles. (Id. at 8-9.)
Additionally, Appellants argue that Holbrook‟s disclosure of classifying data
elements within the leaf-nodes or intermediate nodes of a hierarchical
category node tree (e.g., library structure), does not teach or fairly suggest
“the visibility rule for each data level and each data item includes only
variables for data levels and data items higher in the hierarchical list,” as
claimed. (Id. at 9-11.)
2. Appellants contend that Holbrooke fails to teach or fairly
suggest “associate a Boolean variable for each data level and each data item
in the cascading choices,” as recited in independent claim 11. (Id. at 15.)
Appellants acknowledge that while Holbrook‟s disclosure of a style
parameter may be used as a Boolean variable, Holbrook fails to teach or
fairly suggest associating the style parameter with each parent category
circle. (Id.) Further, Appellants maintain that Holbrook‟s disclosure of
classifying data elements within the leaf-nodes or intermediate nodes of a
hierarchical category node tree (e.g., library structure), does not teach or
fairly suggest “the visibility rule for each data level and each data item
includes only variables for data levels and data items higher in the
hierarchical list,” as claimed. (Id. at 15-16.)
Additionally, Appellants argue that Proebsting fails to teach or fairly
suggest “automatically minimize names for the level variable and the data
variable,” as claimed. (Id. at 16.) In particular, Appellants allege that
Proebsting‟s disclosure of minimizing a variable name is not the same as
limiting the variable to a predefined number of characters. (Id. at 16-17.)
Appellants contend that minimizing is defined as “to reduce to the smallest
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possible amount or degree.” (Id. at 17.) Appellants argue that the Examiner
fails to provide evidence that an ordinarily skilled artisan would construe
minimizing variable names any differently. (Id.)
Examiner’s Findings and Conclusions
1. The Examiner finds that Holbrook‟s disclosure of organizing
and displaying the results of a search in the form of parent category circles,
in conjunction with decomposing each parent category circle into
subcategories, teaches or fairly suggests “a plurality of data levels in a
hierarchal listing,” as recited in independent claim 1. (Ans. 10-11.) Further,
the Examiner finds that an ordinarily skilled artisan would have understood
that Holbrook‟s subroutines are associated with the parent category circles
because the subroutines call the subroutines OutputCircle during a category
search in order to create the parent category circles. (Id. at 12.) Therefore,
the Examiner finds that Holbrook teaches or fairly suggests “associating
variables for each data level and each data item,” as claimed. (Id.)
Additionally, the Examiner finds that Holbrook‟s disclosure of organizing
and presenting data elements within respective categories in a hierarchical
category node tree teaches or fairly suggests “the visibility rule for each data
level and each data item includes only variables for data levels and data
items higher in the hierarchical list,” as claimed. (Id. at 13-14.)
2. The Examiner finds that Holbrook‟s disclosure of style
parameters for both a first and second level of category circles teaches or
fairly suggests “associate a Boolean variable for each data level and each
data item in the cascading choices,” as recited in independent claim 11. (Id.
at 17-18.) Further, the Examiner reiterates that Holbrook‟s disclosure of
organizing and presenting data elements within respective categories in a
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hierarchical category node tree (i.e., first and second level of category
circles) teaches or fairly suggests “the visibility rule for each data level and
each data item includes only variables for data levels and data items higher
in the hierarchical list,” as claimed. (Id. at 18.) Additionally, the Examiner
finds that “minimal” is defined as “small in amount or degree.” (Id. at 19.)
Therefore, the Examiner finds that since an ordinarily skilled artisan would
have understood that “minimize” may be broadly, but reasonably construed
as to limit to a small number, Proebsting‟s disclosure of minimizing a
variable name teaches or fairly suggests “automatically minimize names for
the level variable and the data variable,” as claimed. (Id.)

II. ISSUES
1. Have Appellants shown that the Examiner erred in concluding
that Holbrook renders independent claim 1 unpatentable? In particular, the
issue turns on whether Holbrooke teaches or fairly suggests the following
claim limitations:
(a) “a plurality of data levels in a hierarchal listing;”
(b) “associating variables for each data level and each data item;”
and
(c) “the visibility rule for each data level and each data item
includes only variables for data levels and data items higher in the
hierarchical list.”
2. Have Appellants shown that the Examiner erred in concluding
that the combination of Holbrook and Proebsting renders independent claim
11 unpatentable? In particular, the issue turns on whether the proffered
combination teaches or fairly suggests the following claim limitations:
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(a) “associate a Boolean variable for each data level and each data
item in the cascading choices;”
(b) “the visibility rule for each data level and each data item
includes only variables for data levels and data items higher in the
hierarchical list;” and
(c) “automatically minimize names for the level variable and the
data variable.”

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Holbrook
FF 1. Holbrook discloses classifying data elements within the leaf-
nodes or intermediate nodes of a hierarchical category node tree, e.g., a
library structure. (Col. 3, ll. 54-57.) In particular, Holbrook discloses a
Graphical User Interface (hereinafter “GUI”) engine that operates
independently of the library structure associated with an accessed database.
(Id. at ll. 64-65.) Holbrook discloses that the GUI displays one hierarchical
level at a time. (Id. at ll. 65-66.) Holbrook also discloses that “any
displayed category node can be „drilled-down‟ to the next lower hierarchical
level of the category tree or „drilled out‟ to immediately access a data
element.” (Col. 4, ll. 4-6.)
FF 2. Holbrook‟s figure 22 depicts a category search page that
displays 11 parent categories. (Col. 16, ll. 28-34.) Holbrook discloses a
circle (2210) that surrounds both a parent category (403) and a site total
(2205) in order to form a parent category circle (2220). (Id. at ll. 34-36.)
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Holbrook discloses that the site total (2205) shows the total number of
matching websites within a parent category (403). (Id. at ll. 37-38.) When a
user positions a mouse cursor over a parent category (403), Holbrook
discloses that a pop-up window (405) appears. (Id. at ll. 38-41.) Holbrook
discloses that the pop-up window (405) displays the parent category (408)
followed by the second-level subcategories below the selected parent
category. (Id. at ll. 41-43.)
FF 3. Holbrook‟s figure 15a depicts a preferred code segment. (Col.
4, l. 63.) In particular, Holbrook discloses that LINES (1513-1519) in figure
15a contain a script program which is automatically executed upon the
loading of a web page. (Col. 19, ll. 52-54.) Holbrook discloses setting
Top.Status to “ok1” and executing LINE (1515). (Id. at ll. 54-55.)
Holbrook discloses that this command calls “Sub link1” in Frame 1 passing
a value of 0. (Id. at ll. 55-57.) Holbrook discloses that this value is the style
parameter and indicates a GUI as opposed to a textual user interface. (Id. at
ll. 57-58.) At this point, Holbrook discloses that “Sub link1” in Frame 1
writes the Hypertext Markup Language (hereinafter “HTML”) code, which
is necessary to render the first GUI (i.e., fig. 22) to Frame 2. (Id. at ll. 58-
60.)
Proebsting
FF 4. Proebsting discloses that in the early days of computers,
programming languages were short and thus cryptic because the name itself
took up computer memory, which was expensive. (Col. 12, ll. 63-65.)

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IV. ANALYSIS
35 U.S.C. § 102(e)/35 U.S.C. § 103(a) Rejection—Holbrooke
Claim 1
Independent claim 1 recites, inter alia: 1) “a plurality of data levels in
a hierarchal listing;” 2) “associating variables for each data level and each
data item;” and 3) “the visibility rule for each data level and each data item
includes only variables for data levels and data items higher in the
hierarchical list.”
As detailed in the Findings of Fact section above, Holbrook discloses
a category search page that displays multiple parent categories. (FF 2.) In
particular, Holbrook discloses a parent category circle that encompasses
each parent category and includes the total number of matching websites
within such category. (Id.) When a user selects a parent category circle
using a mouse cursor, Holbrooke discloses that a pop-window appears
displaying the second-level subcategories below the selected parent category
circle. (Id.)
We find that Holbrook‟s disclosure of a plurality of parent category
circles in a category search page teaches or fairly suggests “the plurality of
data levels in a hierarchal listing,” as recited in independent claim 1. In
particular, we find Holbrook‟s parent category circles amount to the claimed
“plurality of data levels” because each parent category circle is a type of
control that allows a user to make a selection. Moreover, since the parent
category circles and corresponding subcategories amount to a series of
ordered groupings within the category search page, we find that Holbrook
teaches or fairly suggests a “hierarchical listing,” as claimed.
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Further, Holbrook discloses automatically executing a script program
upon loading a web page. (FF 3.) Holbrook discloses executing a line in the
script program that calls “Sub link1” in Frame 1 passing a value of 0, which
is a style parameter that indicates a GUI. (Id.) Holbrooke discloses that the
“Sub link1” in Frame 1 writes HTML code, thereby rendering the first GUI
or the category search page containing the parent category circles to Frame
2. (Id.)
We agree with the Examiner that Holbrook‟s function name “Sub
link1” is associated with the parent category circles because the style
parameter enables the function name “Sub link1” to write HTML code that
renders the category search page containing the parent category circles.
(Ans. 11-12.) However, we find that Holbrook does not explicitly disclose
“…variables for each data level and each data item,” as claimed.
Nonetheless, we find that an ordinarily skilled artisan would have readily
appreciated associating Holbrook‟s function names or style parameters with
each parent category circle and corresponding subcategories in order to
allow the GUI to indicate whether a parent category circle is visible, or a
particular subcategory has been selected. Thus, we find that Holbrook
teaches or fairly suggests “associating variables for each data level and each
data item,” as recited in independent claim 1.
Additionally, Holbrook discloses classifying data elements within the
leaf-nodes or intermediate nodes of a hierarchical category node tree. (FF
1.) In particular, Holbrook discloses that a GUI engine displays one
hierarchical level at a time. (Id.) Further, upon selecting a category node,
Holbrook discloses that the GUI allows a prospective user to “drill-down” to
the next lower hierarchical level of the category tree. (Id.)
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We find that an ordinarily skilled artisan would have recognized that
Holbrook‟s disclosure of “drilling-down” to the next lower hierarchical level
of a category tree encompasses accessing higher category levels in a
hierarchical list. Moreover, since the selection of either a parent category
circle or corresponding subcategory determines which data elements are
visible to a prospective user, we find that an ordinarily skilled artisan would
have understood that Holbrook‟s disclosure teaches or fairly suggests
“visibility rules,” as claimed.
Accordingly, when a prospective user navigates through a category
tree or hierarchical list, we find that an ordinarily skilled artisan would have
readily appreciated that Holbrook‟s GUI displays one hierarchical level at a
time by using visibility rules that include function names and style
parameters for the higher category levels in the hierarchical list. Put another
way, we find that an ordinarily skilled artisan would have recognized that
Holbrook‟s GUI only displays the next or higher level in the hierarchical list
if certain conditions, such as visibility rules, are satisfied. Thus, we find that
Holbrook teaches or fairly suggests “the visibility rule for each data level
and each data item includes only variables for data levels and data items
higher in the hierarchical list,” as recited in independent claim 1. It follows
that Appellants have not shown that the Examiner erred in concluding that
Holbrook renders independent claim 1 unpatentable.

Claims 2, 5, 16, 17, 20, and 22
Appellants do not provide separate and distinct arguments for
patentability with respect to independent claim 16, and dependent claims 2,
5, 17, 20, and 22. (Br. 13-14.) Consequently, we accept Appellants‟
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grouping of dependent claims 2, 5, and 20 with independent 1, independent
claim 16 with independent claim 1, and dependent claims 17 and 22 with
independent claim 16. (Id.) Therefore, dependent claims 2, 5, 17, 20, and
22 fall with independent claims 1 and 16. See 37 C.F.R. § 41.37(c)(1)(vii).

35 U.S.C. § 103(a) Rejection—Combination of Holbrook and Proebsting
Claim 11
Independent claim 11 recites, inter alia: 1) “associate a Boolean
variable for each data level and each data item in the cascading choices;” 2)
“the visibility rule for each data level and each data item includes only
variables for data levels and data items higher in the hierarchical list;” and 3)
“automatically minimize names for the level variable and the data variable.”
For the same reasons as set forth above, we find that Holbrook teaches
or fairly suggests “associate a Boolean variable for each data level and each
data item in the cascading choices,” and “the visibility rule for each data
level and each data item includes only variables for data levels and data
items higher in the hierarchical list,” as recited in independent claim 11.
Moreover, Proebsting discloses that it old and well known to increase
computer memory space and reduce expenses by shortening the names of
programming languages. (FF 4.) We find that an ordinarily skilled artisan
would have understood that Proebsting‟s disclosure of shortening the names
of programming languages encompasses minimizing the character length of
a name used in programming languages. Accordingly, we find that an
ordinarily skilled artisan would have readily appreciated using Proebsting‟s
method to minimize the character length of Holbrook‟s function names (i.e.,
“Sub link1”) and style parameters, thereby increasing computer memory
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space and reducing expenses. Thus, we find that the combination of
Holbrook and Proebsting teaches or fairly suggests “automatically minimize
names for the level variable and the data variable,” as recited in independent
claim 11. It follows that Appellants have not shown that the Examiner erred
in concluding that the combination of Holbrook and Proebsting renders
independent claim 11 unpatentable.

Claims 3, 12-15, 18, and 21
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 3, 12-15, 18, and 21. (Br. 14,
17-18.) Consequently, we accept Appellants‟ grouping of dependent claims
3, 12-15, 18, and 21 with independent 11. (Id.) Therefore, dependent claims
3, 12-15, 18, and 21 fall with independent claim 11. See 37 C.F.R.
§ 41.37(c)(1)(vii).

35 U.S.C. § 103(a) Rejection—Combination of Holbrook and Lokuge
Claim 19
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claim 19. (Br. 18.) Consequently,
we accept Appellants‟ grouping of dependent claim 19 with independent 1.
(Id.) Therefore, dependent claim 19 falls with independent claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).

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V. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in rejecting
claims 1, 2, 5, 16, 17, 20, and 22 as being anticipated under 35 U.S.C.
§ 102(e), or in the alternative, as being unpatentable under 35 U.S.C.
§ 103(a).
2. Appellants have not shown that the Examiner erred in rejecting
claims 3, 11-15, 18, 19, and 21 as being unpatentable under 35 U.S.C.
§ 103(a).

VI. DECISION
1. We affirm the Examiner‟s decision to reject claims 1, 2, 5, 16,
17, 20, and 22 as being anticipated under 35 U.S.C. § 102(e), or in the
alternative, as being unpatentable under 35 U.S.C. § 103(a).
2. We affirm the Examiner‟s decision to reject claims 3, 11-15,
18, 19, and 21 as being unpatentable 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)(1)(iv).

AFFIRMED

ELD