Ex Parte Blair

Patent Trial and Appeal Board

May 17, 2013

11783909 (P.T.A.B. May. 17, 2013)

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.
11/783,909 04/13/2007 Roger Blair MHK 155.004 9976
7590 05/20/2013
Lawrence Harbin
500 Ninth Street SE
Washington, DC 20003
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
05/20/2013 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 ROGER BLAIR
____________________

Appeal 2010-012178
Application 11/783,909
Technology Center 2100
____________________

Before JOHNNY A. KUMAR, JOHN G. NEW, and
PATRICK M. BOUCHER, Administrative Patent Judges.

KUMAR, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant files this appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-6 and 8-25. Claim 7 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (“App. Br.”) filed March 9, 2010, and the
Answer (“Ans.”) mailed June 9, 2010 for the respective details. We have
considered in this decision only those arguments Appellant actually raised in
the Brief. Any other arguments which Appellant could have made but chose
not to make in the Brief are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Exemplary Claims
Exemplary claims 1 and 6 read as follows:
1 A computer-implemented method to enable a user to
build a customized file tree structure for use in a document
management system, said method comprising:
displaying a first pane of a window of a graphical user
interface of a computer workstation within which to build and
visualize the customized file tree structure,
displaying a list of available folder types in a second
pane of a window of said graphical user interface from which to
select a folder type,
simultaneously with displaying said first and second
panes, displaying a list of enterprise-specific document types in
a third pane of a window of said graphical user interface from
which to select a subclassification of a folder type, and
building the customized file tree structure in said first
pane by selecting and transferring desired folder types from
said second pane to said first pane and further subclassifying
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said transferred folder types by selecting and transferring at
least one document type from said third pane to said first pane
for desired ones of said folder types whereby to build said
customized file tree structure.

6. A computer-implemented method of enabling a user to
construct an ordered customized file tree in a first pane of a
window of a graphical user interface, said method comprising:
providing the user with a pre-defined list of enterprise-
specific names of available groups of file types in a second
pane of a window of said graphical user interface,
enabling the user to construct said ordered, customized
file tree by
(i) selecting at least one of said enterprise-specific names
of a file type from the available group of file types and placing
said at least one of said enterprise-specific names at a desired
position in the customized file tree and
(ii) for an enterprise-specific name of a file type placed
into the customized file tree, simultaneously and automatically
providing the user with a predefined list of enterprise-specific
names of available groups of document types for said file types
in a third pane of a window of said graphical user interface, and
selecting at least one of said enterprise-specific names of a
document type from said available groups of document types
and placing one of said enterprise-specific names of a document
type at a position in the customized file tree associated with the
selected file type.

Rejection
Claims 1-6 and 8-25 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Dourish (US Patent 6,430,575 B1, Aug. 6, 2002) in view
of Ballantyne (US Publication 2003/0228141 A1, Dec. 11, 2003).

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Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 6
because the combination of Dourish and Ballantyne does not teach or
suggest “a pre-defined list of enterprise-specific names of available groups
of file types in a second pane,” or “simultaneously and automatically
providing the user with a pre-defined list of enterprise-specific names of
available groups of document types for said file types in a third pane,” as
recited in independent claim 6. Br. 10-11. In particular, Appellant argues
that neither Dourish nor Ballantyne teach selecting a tree or file name from
two different panes where the names in one pane subclassify or modify
names of the other pane. Br. 12. Appellant also contends that the
combination of Dourish and Ballantyne does not teach or suggest:
(i) selecting names of file types from a predefine list of names in a
second pane and placing them at a desired position of a
customized file tree in a first (scratchpad) pane,
(ii) simultaneously providing a third pane of predefined list of names
of document types that subclassify the file types of the second pane,
selecting the document types from the list of names in the third
pane, and placing the selected names in the customized file tree of
the first (scratchpad) pane, or
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(iii) providing enterprise-specific names in both the second and third
panes from which the user may choose in order to build (rather
than mentally construct [or] conceive) the customized file tree
structure.
Br. 11-13.
1

2. Appellant also contends that the Examiner erred in rejecting claim 1
because the combination of Dourish and Ballantyne does not teach or
suggest “building the customized file tree structure in said first pane by
selecting and transferring desired folder types from said second pane to said
first pane and further subclassifying said transferred folder types by
selecting and transferring at least one document type from said third pane to
said first pane for desired ones of said folder types whereby to build said
customized file tree structure,” as recited in independent claim 1. (Br. 14-
15).

Issue on Appeal
Did the Examiner err in rejecting claims 1-6 and 8-25 as being
obvious because the references fail to teach or suggest the claim limitations
at issue?

1
According to Appellant, independent claims 1, 9, 12, 15, 17, 19, 21, and
23-24 recite features similar to claim 6 (Br. 14-15). Therefore, we treat
claim 6 as representative for purposes of this appeal.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred.
We agree with the Examiner and 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 (see Ans. 4-42). However,
we highlight and address specific findings for emphasis as follows.
As to contention 1, in response to each of the arguments raised by
Appellant, the Examiner presents detailed findings and responses, which are
not rebutted by Appellant in a Reply Brief.
The Examiner finds that it would have been obvious to:
a person of ordinary skill in the art, at the time the invention
was made, to modify the teachings of Dourish with the
teachings of Ballantyne for displaying a list of available folder
types in a second pane of a window of said graphical user
interface from which to select a folder type, simultaneously
with displaying said first and second panes, displaying a list of
document types in a third pane of a window of said graphical
user interface from which to select a subclassification of a
folder type, and selecting and transferring desired folder types
from said second pane to said first pane and selecting and
transferring at least one document type from said third pane to
said first pane for a user-interactive program that assists a user
in locating files and for storing data on computer-readable
media.
Ans. 4. We agree with the Examiner because the Examiner properly
identifies the relevant teachings in Dourish and Ballantyne and states how
each claimed element is met by those teachings (see Ans. 29-42).
Additionally, because the proposed rejection is based on the combination of
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the references, Appellant’s challenge to the references individually is not
persuasive of error in the Examiner’s position. See In re Keller, 642 F.2d
413, 426 (CCPA 1981) (stating that “one cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references.”). Appellant admits that Dourish teaches a
selectable tree (or sub-tree) for placement in file tree structure of one of the
panes. Id. Appellant also admits that Ballantyne teaches “file structures
residing in multiple panes, such as, a hierarchy tree pane 12, a CD file order
list pane 14, a file detail pane 16, and a statistics pane 18. Files or file trees
may also be dragged and dropped between two panes.” Br. 13 (emphasis
added). In this case, the teaching value of Dourish is in disclosing the file
tree structure in one pane, whereas file structures in multi-panes is disclosed
by Ballantyne.
Further, Appellant’s argument (Br. 12) that neither Dourish nor
Ballantyne teach “selecting a tree or file name from two different panes
where the names in one pane subclassify or modify names of the other pane”
is unpersuasive because it is not commensurate with the scope of claim 6
because the claim does not recite “the names in one pane subclassify or
modify names of the other pane.”
As to contention 2 about claim 1, while Appellant raised additional
arguments for patentability of the cited claim (Br. 14-15), we find that the
Examiner has rebutted in the Answer each and every one of those arguments
supported by sufficient evidence. Ans.4-6 and 29-42. Therefore, we adopt
the Examiner’s findings and underlying reasoning, which are incorporated
herein by reference. Consequently, we find no error in the Examiner’s
rejections of independent claim 1.
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Therefore, Appellant has not persuaded us the Examiner erred in
finding the combination of Dourish and Ballantyne does not teach or suggest
the invention as recited in claims 1-6 and 8-25.

CONCLUSIONS
The Examiner has not erred in rejecting claims 1-6 and 8-25 as being
unpatentable under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-6 and 8-25 is
affirmed.
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