Ex Parte Blum et al

Board of Patent Appeals and Interferences

Jan 12, 2005

09559695 (B.P.A.I. Jan. 12, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY R. BLUM, ELIZABETH A. BASTIAANSE,
and IDO BEN-SHACHAR
_____________
Appeal No. 2004-1443
Application No. 09/559,695
______________
ON BRIEF
_______________
Before THOMAS, KRASS, and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 2 and 4-17, which
constitute all the claims in the application.
The disclosed invention pertains to a user interface in a
hand-held computing device. More particularly, data within the
database of the device can be accessed from an all categories
label that represents a full list of all entries in the database
Appeal No. 2004-1443
Application No. 09/559,695
2
and a recently accessed label that represents a list of recently
accessed entries from the database. A particular feature of the
invention is that displayed entries from the recently accessed
category are capable of being manipulated by the user in the same
manner as entries that are displayed when the user selects the
all categories label.
Representative claim 1 is reproduced as follows:
1. A method of generating a user interface in a hand-held
computing device, the method comprising:
displaying a list of category labels, each label
representing a collection of database entries, at
least one of the category labels being a recently
accessed label that represents a list of recently
accessed entries, and at least one other category
label being an all categories label that
represents a full list of all entries in the
database;
receiving an indication that a user has selected the
recently accessed label;
displaying the list of recently accessed entries such
that the entries are capable of being manipulated
by the user in the same manner as entries that are
displayed when the user selects the all categories
label.
The examiner relies on the following references:
Lincke et al. (Lincke) 6,300,946 Oct. 09, 2001
(filed May 29, 1998)
Hawkins et al. (Hawkins) 6,516,202 Feb. 04, 2003
(filed Aug. 12, 1999)
Appeal No. 2004-1443
Application No. 09/559,695
3
Claims 1, 2 and 4-17 stand rejected under 35 U.S.C.
§ 103(a). As evidence of obviousness the examiner offers Lincke
in view of Hawkins.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1, 2 and 4-17. Accordingly, we reverse.
Appeal No. 2004-1443
Application No. 09/559,695
4
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
Appeal No. 2004-1443
Application No. 09/559,695
5
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicants to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived (see 37 CFR § 41.37(c)(1)(vii)(2004)).
The examiner’s rejection is set forth on pages 3-6 of the
answer. With respect to independent claim 1, the examiner notes
that Lincke teaches a user interface for a hand-held device in
which a plurality of categories are displayed including an all
category label, but the examiner acknowledges that Lincke fails
to teach a recently accessed category. The examiner cites
Hawkins as teaching a recently accessed category in the form of a
call history list. The examiner finds that it would have been
obvious to the artisan to combine Hawkins’ recently accessed list
Appeal No. 2004-1443
Application No. 09/559,695
6
with Lincke’s user interface. The examiner states that data in
the call history can be manipulated in the same manner as data in
the all category.
Appellants argue that the combination of art does not
show or suggest the ability to select a recent category so that
entries in the recent category are displayed in a manner that
allows the user to manipulate the entries in the same manner that
entries can be manipulated from the all categories label.
Appellants note in particular that a user in Hawkins cannot
delete a record in the address book through the call history list
because Hawkins does not suggest such a feature and because the
user would lose valuable information from the address book when
he only wanted to eliminate a phone number (brief, pages 4-7).
The examiner responds that the user in Hawkins may edit
entries from the call history list which consists of the same
kind of manipulations performed on entries from the address book.
The examiner also asserts that the delete argument is not
persuasive because claim 1 does not recite the delete
manipulation. The examiner notes that the “manner” of claim 1 is
met by the manipulations of selected, highlighted, dialed, edited
and saved in Hawkins (answer, pages 6-7).
Appeal No. 2004-1443
Application No. 09/559,695
7
Appellants respond that the examiner is replacing the
claimed limitation “same manner” with the limitation “some
manners.” Appellants argue that the recitation “same manner”
requires that all of the functions that can be performed on an
entry must be capable of being performed in both lists of
entries. Appellants argue that the inability to perform a delete
in Hawkins through the call history list indicates that the user
is not able to manipulate the entries in the call history list in
the same manner as the entries in the address book (reply brief,
pages 1-2).
We will not sustain the examiner’s rejection of
independent claim 1 or of claims 2 and 4-9 which depend therefrom
for essentially the reasons argued by appellants in the briefs.
We particularly agree with appellants that the examiner’s
interpretation of the term “same manner” in claim 1 is incorrect.
Thus, we agree with appellants that the correct interpretation of
“same manner” in claim 1 requires that a device be capable of
performing every manipulation that can be performed in the all
category on the entries in the recently accessed category. In
other words, if a function which can be performed in the all
category, such as delete, cannot be performed in the recently
Appeal No. 2004-1443
Application No. 09/559,695
8
accessed category, then the method of claim 1 is not met.
Whether the invention of claim 1 would have been obvious to the
artisan when the term “same manner” is interpreted in this manner
we cannot say because there are no arguments on this record by
the examiner in support of obviousness when the term “same
manner” is so interpreted.
With respect to independent claim 10, the examiner’s
rejection is basically the same as considered above with respect
to claim 1. Appellants argue that none of the cited art provides
the ability to display recently accessed entries in a manner such
that commands applied to the recently accessed entries have the
same results on the database record as commands applied to other
sets of displayed entries. Appellants note that in Hawkins the
delete command from the call history list does not remove an
entry from the address book (brief, pages 9-11). The examiner
responds with the same position discussed above with respect to
claim 1 (answer, page 9). Appellants respond that Hawkins does
not provide a delete command for its call history that produces
the same change in a record as a delete command in the address
book (reply brief, pages 4-5).
Appeal No. 2004-1443
Application No. 09/559,695
9
We will not sustain the examiner’s rejection of
independent claim 10 or of claims 11-17 which depend therefrom
for the reasons argued by appellants in the briefs. The
examiner’s rejection of claim 10 and response to appellants’
arguments treat claim 10 as if it is the same as claim 1. As
noted by appellants, however, claim 10 is substantially different
from claim 1, and the examiner has failed to address the specific
limitations of claim 10 or respond to appellants’ specific
arguments directed to claim 10.
Appeal No. 2004-1443
Application No. 09/559,695
10
In summary, we have not sustained the examiner’s
rejection of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1, 2 and 4-17 is reversed.

REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
JS:hh
Appeal No. 2004-1443
Application No. 09/559,695
11
WESTMAN, CHAMPLIN & KELLY, P.A.
STE. 1600 INTERNATIONAL CENTRE
900 SECOND AVE. SOUTH
MINNEAPOLIS, MN 55402-3319