Ex Parte Celik

Board of Patent Appeals and Interferences

Jun 28, 2002

08511645 (B.P.A.I. Jun. 28, 2002)

1
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not written for publication and is not binding precedent of the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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TANTEK I. CELIK
__________
Appeal No. 2000-0467
Application 08/511,645
___________
ON BRIEF
___________
Before FLEMING, RUGGIERO, and LALL, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
Decision on Appeal
This is a decision on appeal from the final rejection of
claims 1 through 6 and 10 through 28. Claims 7 through 9 have
been cancelled.
The invention relates to a method of manipulating objects in
a graphical user interface for a computer. Specifically, the
representations of objects stored in a memory are displayed to a
user on a display via the following method steps. The method
steps include selecting a first object whose representation is
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2
displayed on a display and dragging the representation of the
first object from a first location on the display to a second
location associated with a second object. See Appellant’s
specification page 6, lines 27 through page 7, line 7 and
Figures, 2A, 2B, 3A and 3B. The method further includes
determining whether the second object is either a service object
or a container object. See Appellant’s specification page 7,
line 15 through page 8, line 4. Then the method performs either
a service with respect to the first object if the second object
is a service object or moves the representation of the first
object from the first location to a location associated with the
second object if the second object is a container object. Id. A
further embodiment relates to detecting when a user’s
capabilities are limited to reading the object and then
prohibiting movement of the first object to a second location.
See Appellant’s specification page 9, lines 3-13 and Figure 4.
Independent claims 1, 18 and 26 are reproduced as follows:
1. A method for manipulating objects in a graphical user
interface for a computer, of the type in which representations of
objects stored in a memory are displayed to a user on a display,
comprising the steps of:
selecting a first object whose representation is displayed
on said display;
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dragging the representation of the first object from a first
location on the display to a second location associated with a
second object;
determining whether said second object is either a service
object which performs a service that provides a computational
result on data or a container object;
performing a service with respect to said first object if
said second object is a service object; and
moving the representation of the first object from said
first location to a new location associated with said second
object if said second object is a container object, regardless of
a source of the first object.
18. A method for manipulating objects in a graphical user
interface for a computer, of the type in which representations of
objects stored in a memory are displayed to a user on a display,
comprising the steps of:
selecting a first object whose representation is displayed
on said display;
dragging the representation of the first object from a first
location on the display to a second location associated with a
second object;
determining whether said second object is a container
object;
detecting whether there is an indication of a user-initiated
modified operation; and
if said second object is a container object, always
performing a move operation if there is no indication of a user-
initiated modified operation, regardless of a source of the first
object.

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26. A method for manipulating objects in a graphical user
interface for a computer, of the type in which representations of
objects stored in a memory are displayed to a user on a display,
comprising the steps of:
selecting a first object whose representation is displayed
on said display;
dragging the representation of the first object form a first
location on the display to a second location associated with a
second object;
determining whether said second object is either a service
object or a container object;
performing a service with respect to said first object if
said second object is a service object;
detecting whether access to said first object is limited;
moving the representation of the first object from said
first location to a new location associated with said second
object if said second object is a container object, regardless of
a source of the first object if access to said first object is
not limited; and
prohibiting the movement of the representation of the first
object to said new location if access to said first object is
limited.
References
The references relied on by the Examiner are as follows:
Owens et al. (Owens) 5,530,865 Jun. 25, 1996
R. E. Berry, The Designer’s Model of The CUA Workplace, IBM
Systems Journal Vol. 31, No. 3, pp. 429-458, 1992.
Appeal No. 2000-0467
Application 08/511,645
1 Appellant filed an Appeal Brief, on July 12, 1999.
Appellant then filed a Substitute Appeal Brief (hereinafter
referred to as the Brief) on September 8, 1999. Appellants filed
a Reply Brief on November 15, 1999. The Examiner mailed an
office communication on November 29, 1999 stating that the reply
brief has been entered.
5
Rejections at Issue
Claims 1 through 3, 5, 6, 10 through 22, 24 and 25 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Berry.
Claims 4, 23 and 26 through 28 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Berry and Owens.
Before us for our consideration are Appellant’s Brief and
Reply Brief1 as well as the Examiner’s Answer.
OPINION
After a careful review of the evidence before us, we agree
with the Examiner that claims 1 through 6 and 10 through 25 are
properly rejected under 35 U.S.C. § 103. Thus, we will sustain
the rejection of these claims but we will reverse the rejection
of the remaining claims 26 through 28 on appeal for the reasons
set forth infra.
First, we will consider the rejection of claims 1 through 3,
5, 6, 10 through 22, 24 and 25 under 35 U.S.C. § 103 as being
unpatentable over Berry. With regards to Appellant’s grouping of
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claims as standing and falling together, we see that, on page 5,
lines 10-12 of the brief, that Appellant has provided a statement
that “[a]ppellant does not consider all rejected claims which
have been grouped in a single ground of rejection to stand or
fall together. The bases for the separate patentability of
various claims are set forth in the following arguments.”
Further, we note that in the Brief, Appellant has argued claims 1
through 6 and 10 through 17 as a single group with the arguments
drawn to the subject matter in claim 1. See page 5, line 16
through page 7, line 21. We also note that Appellant has argued
claims 18 through 25 as a single group with the arguments drawn
to the subject matter of claim 18. See page 7, line 21 through
page 8, line 26. Lastly we note that Appellant has argued claims
26 through 28 as a single group with the arguments drawn to the
subject matter in claim 26.
Therefore, in light of Appellant’s arguments, we have
determined that claims 1 through 6 and 10 through 17 stand and
fall together, claims 18 through 25 stand and fall together, and
claims 26 though 28 stand or fall together. 37 CFR § 1.192
(c)(7) (July 1, 1999) as amended at 62 Fed. Reg. 53196 (October
10, 1997), which was controlling at the time of Appellant’s
filing the brief, states:
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For each ground of rejection which appellant contests
and which applies to a group of two or more claims, the
Board shall select a single claim from the group and
shall decide the appeal as to the ground of rejection
on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or
fall together and, in the argument under paragraph
(c)(8) of this section, appellant explains why the
claims of the group are believed to be separately
patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the
claims are separately patentable.
In addressing claim 1, as a representative claim of the
group of claims 1 through 6 and 10 through 17 for the reasons set
forth supra, we see that Appellant states that “the rejected
claims are not obvious in view of the Berry document, since Berry
does not disclose or suggest each and every element of those
claims.” See page 5, lines 16-17 of the Brief. Appellant then
argues, with regards to Berry, that,
[i]f both the source and destination are within the
same workplace, the result is to move the source
object. However, if the source and destination are not
within the same workplace, the result is a copy
operation. (Page 450, right column, first three full
paragraphs.) The workplace is described on page 441,
left column, as the area within the computer screen. A
removable storage device such as a floppy disk is
considered to be outside of the workplace. See page 6,
lines 14-19 of the Brief.
Appellant further argues that “the Berry article explicitly
teaches away from the claimed invention. For example, Berry, in
pages 449-450, expressly discloses a drag and drop technique
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wherein the type of drag and drop operation performed depends
upon a plurality of factors.” See page 7, lines 3-6 of the
Brief. Appellant finally argues that Berry states on page 450
that,
‘dragging a data object, container object, or device
object to a workplace container results in moving the
source object into the target container.’ Later in the
same column, when discussing containers that are
outside the current workspace, Berry states the
following: ‘If the target is a device that provides
containment behavior, the source object is copied into
the target container. For example, dragging an object
to a . . . folder on a diskette causes the source
object to be copied into the target object. (emphasis
added).’ Thus, it can be seen that the outcome is
dependent upon whether the source of the object is in
the same workspace as the destination for the object.
In contrast, the operation performed on the object
being manipulated, in accordance with the present
invention, is a MOVE (when the destination is a
container object), whether or not the source document
or media volume is the same as the destination.
(Emphasis added). See page 7, lines 9-21 of the Brief.
As pointed out by our reviewing court, we must first
determine the scope of the claims. “[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 ( Fed. Cir. 1998).
We note that Appellant’s claim 1 recites the following:
determining whether said second object is either a
service object which performs a service that provides a
computational result on data or a container object;
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performing a service with respect to said first object
if said first object is a service object; and
moving the representation of the first object from said
first location to a new location associated with said
second object if said second object is a container
object, regardless of a source of the first object.
In reviewing Appellant’s disclosure to understand
Appellant’s claim limitations, we note on pages 6-8 of the
specification that Appellant defines the service object and the
container object. Further, Appellant also uses examples to
define a first object and a second object, original locations and
destination objects (i.e., the first and second locations).
Specifically, Appellant discloses,
Figure 3A illustrates some examples of different types
of container objects that can serve as destinations for
a drag-and-drop operation. Referring thereto, a window
52 contains a file 54 which the user has selected with
a cursor. This file can be dragged to another window
56 on the desktop. Alternatively, it can be dragged to
a folder 58, which could reside within a window or on
the desktop itself. As a third alternative, the file
54 can be dragged into a text document 60 which might
be displayed in another window. Each of the objects to
which the file 54 is moved in the examples of Figure
3A, namely the window 56, the folder 58 and the
document 60, is a ‘container’ object. These objects
have the ability to embed objects within their
contents. (Emphasis added). See page 6, line 28 to
page 7, line 6 of Appellant’s specification.
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We also note that Appellant discloses,
[i]n addition to container objects, a given object can
also be dragged to a service object. Referring to
Figure 3B, the file 54 can be dragged onto an icon 62
which represents a printer. As an alternative, the
file 54 can be dragged onto an icon 64 that represents
a word count service. When the file is dropped onto
the printer icon 62, it causes the contents of the file
to be printed at a particular printer associated with
the icon. When it is dropped on the work count service
icon 64, an application is launched which counts the
number of words in the file, and reports the results of
the count to the user. Whenever either of these
services is performed, the dropped object remains
intact, i.e., it is not consumed by the service.
(Emphasis added). See page 7, lines 17-27 of the
specification.
Finally we note that Appellant discloses,
[t]he specific action that is performed is determined
by the destination for the dragged object. If the
destination is a container object, such as any of the
examples illustrated in Figure 3A, the dragged object
is moved from its original location to the destination
object. Alternatively, if the destination object is a
service provider, as illustrated in Figure 3B, the
associated service is carried out with respect to the
dragged object, but the perceived location of the
object does not change. In other words, in the example
of Figure 3B, the icon 54 returns to its original
location in the window 52. See page 7, line 30 through
page 8, line 5 of the specification.
Therefore, interpreting Appellant’s claim in light of the
disclosure, we find that the scope of Appellant’s claim 1
includes: first) determining whether the second object is either
a service object (i.e., an object that provides a service result
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(for example printing or word counting) on the first object
wherein the object remains intact and is not consumed by the
service) or a container object (i.e., an object to which the file
is moved such as a window, folder or document); second)
performing a service with respect to said first object if said
second object is a service object (i.e., a printer); and, third)
moving the representation of the first object from said first
location to a new location associated with said second object if
said second object is a container object (i.e., a folder),
regardless of a source of the first object.
Upon careful review of Berry, we find that Berry clearly
teaches the step of “determining whether the second object is
either a service object which performs a service that provides a
computational result on data or a container object.” In
particular, we find that Berry discloses this limitation when
defining that the second object can have either container
behavior (i.e., folder) or device behavior (i.e., service object
or printer). We further find that “[a]n object’s behavior
determines such aspects as which views are provided, which user
actions are supported, and what should happen in data transfer
operations, such as when another object’s icon is dragged to and
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dropped on that object’s icon.” See Berry, page 435, first
column, first, second and fourth full paragraphs. Therefore, we
find that Berry teaches both container objects and device
(service) objects and that each functions differently. Hence, we
find that Berry’s system needs to make a determination on the
type of the several objects of interest (i.e., container object
or device object) so that the appropriate processes can be
performed.
Next, we find that Berry clearly teaches the step of
“performing a service with respect to said first object if said
second object is a service object.” In particular, we find that
Berry teaches this limitation when disclosing that “[a] printer,
for example is a device object” (see page 435, second column,
first full paragraph of Berry) and that “[o]bjects that are
dragged to a printer are copied.” (Emphasis added). See page
435, second column, third full paragraph of Berry. More
specifically, we find that Berry teaches that, “[f]or example,
dragging the icon of a spreadsheet to the icon of a printer would
cause a view of the spreadsheet to be printed.” See page 449,
second column, fourth full paragraph of Berry. Therefore, we
find that Berry’s function of performing a service with respect
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to the first object, such as printing, reads on Appellant’s
limitation of performing a service with respect to said first
object if said first object is a service object.
Lastly, we find that Berry teaches the step of “moving the
representation of the first object from said first location to a
new location associated with said second object if said second
object is a container object, regardless of a source of the first
object. In particular, we find that Berry teaches this
limitation when disclosing that, “[a] container object, such as a
folder, is used primarily as a place to store other objects . . .
[and] objects that are dropped on a container’s icon are moved
into that container.” (Emphasis added). See page 435, first
column, last paragraph through second column, first paragraph of
Berry. Therefore, we find that Berry’s function of moving an
object to a container, such as the folder, reads on Appellant’s
limitation of moving the representation of the first object from
said first location to a new location when the second object is a
container object. Finally, we fail to find anything in Berry
that teaches that the first object would not be moved when the
second object is a folder, without regard to the source of the
first object.
As stated supra, Appellant argues that in reference to the
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containers in Berry’s system, the “outcome is dependent upon
whether the source of the object is in the same workspace as the
destination for the object.” See page 7, lines 17-18 of the
Brief.
We fail to find that this limitation is set forth in
Appellant’s claim language of claim 1.
Further, Appellant argues that, “the operation performed on
the object being manipulated, in accordance with the present
invention, is a MOVE (when the destination is a container
object), whether or not the source document or media volume is
the same as the destination.” See page 7, lines 18-21 of the
Brief.
Again, we fail to find that this limitation is set forth in
Appellant’s claim language of claim 1. Specifically, having
determined the scope of the claim, we find nothing in Appellant’s
claim language that precludes the reading of Berry’s teaching on
the claim as stated supra. We are relying on Berry’s teaching of
the second object being a folder which enables Berry’s system to
operate in the same way as Appellant’s claim. Further, we note
that Appellant’s claim does not preclude other features such as a
diskette.
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Hence, we find that Appellant’s claim language does not
preclude the reading of the Berry’s teaching on Appellant’s claim
1 and therefore we find that the teachings of Berry meet
Appellant’s claimed limitation of the steps of determining
whether the second object is a service or container object, then
either performing a service or performing a move as argued and
set forth supra.
For claims 1 through 6 and 10 through 17, Appellant has not
made any other arguments. 37 CFR § 1.192 (a) states:
Appellant must, within two months from the date of the
notice of appeal under § 1.191 or within the time
allowed for reply to the action from which the appeal
was taken, if such time is later, file a brief in
triplicate. The brief must be accompanied by the fee
set forth in § 1.17 (c) and must set forth the
authorities and arguments on which appellant will rely
to maintain the appeal. Any arguments or authorities
not included in the brief will be refused consideration
by the Board of Patent Appeals and Interferences,
unless good cause is shown.
Thus, 37 CFR § 1.192 provides that only the arguments made by
Appellant in the brief will be considered and that failure to
make an argument constitutes a waiver on that particular point.
Support for this rule has been demonstrated by our reviewing
court in In re Berger, 279 F.3d 975 (Fed. Cir. 2002), wherein the
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Federal Circuit Court stated that because the Appellant did not
contest the merits of the rejections in his brief to the Federal
Circuit court, the issue is waived.
We have carefully considered the objective evidence as well
as the prior art relied upon by the Examiner. We find that
Appellant’s claim 1 is properly rejected under 35 U.S.C. § 103.
In view of the foregoing, we will sustain the decision of the
Examiner rejecting claims 1 through 6 and 10 through 17 under 35
U.S.C. § 103.
Now we turn to the rejection of claims 18 through 25 under
35 U.S.C. § 103 as being unpatentable over Berry and Owens.
Appellant argues that “[c]laim 18 specifically recites that
the operation is ‘always’ a move if the user has not initiated a
modification.” See page 7, lines 21-22 of the Brief. Appellant
further argues that “[t]he technique described in the Berry
reference does not provide such consistent behavior across all
forms of source and target media, as does the claimed invention.”
See page 7, lines 22-25 of the Brief. Appellant then argues that
Berry,
(See, for example, page 435, right column, third full
paragraph; and page 450, right column, first full
paragraph.) . . . [does] not suggest that a move
operation is always performed when an object is dropped
on a container. Rather, these portions of the
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reference pertain only to actions which are carried out
when the source and destination for the target are
within the same workplace. They do not suggest that a
move operation is always performed, regardless of the
source of the object.” See page 8, lines 5-11 of the
Brief.
We note that Appellant’s claim 18 recites the following:
determining whether the said second object is a container
object;
detecting whether there is an indication of a user-initiated
modified operation; and
if said second object is a container object, always
performing a move operation if there is no indication of a
user-initiated modified operation, regardless of a source of
the first object.
In reviewing Appellant’s disclosure, we note that on page 7,
line 31 to page 8, line 2 of the specification, Appellant
discloses that, “[i]f the destination is a container object, such
as any of the examples illustrated in Figure 3A, the dragged
object is moved from its original location to the destination
object.” Appellant further discloses that,
[o]f course, there may be instances when the user
desires to place a copy of a selected object at the
destination, and leave the original version of the
object intact, rather than move it. For example,
referring to Figure 3A, the user may desire to place a
copy of the file 54 in the folder 58. In this
situation, the user can indicate the desire to make a
copy by performing a specified action during the drag-
and-drop operation. See page 8, lines 10-15 of the
specification.
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Upon careful review of Berry, and for the reasons set forth
supra in addressing claim 1, we find that Berry clearly teaches
“determining whether the said second object is a container
object.” Next, we find that Berry also clearly teaches
“detecting whether there is an indication of a user-initiated
modified operation.” In particular, we find that Berry discloses
this limitation when addressing the concept of drag-and-drop
based on container and device distinctions by stating that,
“[o]verrides should be available to allow users to explicitly
request useful alternative results.” See Berry page 450, first
column, fourth and fifth paragraphs. Further, we find that Berry
discloses, “[u]sers can override the impending result, shown by
the appearance of the source outline and pointer, to explicitly
cause a move, a copy, or a link.” See Berry page 450, second
column, fourth full paragraph. Therefore, since there is a user-
initiated modified operation performed when the override is
initiated, we find that Berry’s system would need to detect such
a user interaction so as to perform the appropriate action such
as a move, a copy, or a link.
Lastly, we find that Berry also clearly teaches “if said
second object is a container object, always performing a move
operation if there is no indication of a user-initiated modified
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operation, regardless of a source of the first object.” In
particular, as stated with respect to the limitations above, we
find that Berry only discloses a move when the second object is a
container object (i.e., a folder) unless, as later disclosed by
Berry, that a user override is initiated when a move may not be
desired (i.e. the user wants to perform a copy function).
Therefore, we find that Berry’s system always performs a move
operation, as argued supra if the second object is a container
object (i.e., a folder) and if there is no indication of a user-
initiated modified operation, regardless of a source of the first
object.
Addressing Appellant’s argument that “the Berry reference
does not provide such consistent behavior across all forms of
source and target media . . .” (see page 7, lines 22-25 of the
Brief), we fail to find that this limitation is set forth in
Appellant’s claim language of claim 1.
We further note that Appellant also argues that,
[s]pecifically, on page 450, left column, the last
sentence of the third paragraph states: ‘The result of
drag and drop depends on the classes of the source and
target objects. (emphasis added).’ . . . Hence, when
the Berry reference is viewed as a whole for what it
fairly teaches to one of ordinary skill in the art, it
cannot be properly interpreted to suggest that a move
operation is performed when an object is dragged and
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dropped onto a container object, regardless of the
source of the object, since the relationship between
the source and the destination determines whether the
object is moved or copied. See page 8, lines 13-15 and
lines 19-24 of the Brief.
We fail to find that Appellant’s claim limitations preclude
other embodiments such as Berry’s teaching wherein “objects that
are dropped on a container’s icon are moved into that container.”
See page 435, second column, first part paragraph of Berry.
Further, we find that Berry discloses a multitude of independent
embodiments with respect to drag, drop, copy and move. Hence, we
find that Appellant’s claim language does not preclude Berry’s
teaching of, always moving the object when the second object is a
container object such as a folder, as reading on Appellant’s
claim 18. Further, since Appellant has not made any other
arguments in regard to the Berry reference and claim 18, we
therefore find that the teachings of Berry meet Appellant’s
claimed limitation.
As stated above, we have carefully considered the objective
evidence as well as the prior art relied upon by the Examiner.
We find that Appellant’s claim 18 is properly rejected under
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35 U.S.C. § 103. In view of the foregoing, we will sustain the
decision of the Examiner rejecting claims 18 through 25 under
35 U.S.C. § 103.
Now we turn to the rejection of claims 26 through 28 under
35 U.S.C. § 103 as being unpatentable over Berry and Owens. We
note that Appellant argues that the Owens reference “does not
disclose that a move operation is prohibited if a drag is
performed on an object with limited access.” See page 9, lines
13-14 of the brief. Appellant further argues that,
[t]he [Owens] patent goes on to state that, in cases
where the copy operation is not applicable, the
depression of the Option key ‘can be something else,’
such as overriding a confirmation dialogue. This
description of the alternative operations that are
carried out when the Option key is depressed do not
suggest the subject matter of claim 26, wherein a
determination is made whether access to the dragged
object is limited, and if so the movement of the
representation of the object is prohibited. (Emphasis
added). See page 9, lines 17-23 of the Brief.
On page 3 lines 6-8 of the Answer, reference to the Final
Office action found in Paper No. 16, the Examiner sets forth the
rejection of Appellant’s claims 26 through 28 under 35 U.S.C.
§ 103 over Berry and Owens. In the rejection the Examiner states
that, “Berry fails to explicitly teach the prohibiting of the
Move operation is [sic, if] the first object has limit access.”
See page 3, lines 9-10 of the Final rejection. In meeting the
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shortcoming of Berry, the Examiner states that, “Owens et al
teach the determining whether the object is to be copied if the
object has limit access (col. 18, lines 15-21).”
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Further, our reviewing court in In re
Dembiczak, 175 F.3d 994, 999-00, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999) has said,
Broad conclusory statements regarding the teaching of
multiple references, standing alone, are not
‘evidence.’ E.g., McElmurry v. Arkansas Power & Light
Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed.
Cir. 1993) (“Mere denials and conclusory statements,
however, are not sufficient to establish a genuine
issue of material fact.”); In re Sichert, 566 F.2d
1154, 1164, 196 USPQ 209, 217 (CCPA 1977).
We note that Appellant’s claim 26 recites the following:
detecting whether access to said first object is limited;
moving the representation of the first object from said
first location to a new location associated with said
second object if said second object is a container
object, regardless of a source of the first object if
access to said first object is not limited; and
prohibiting the movement of the representation of the
first object to said new location if access to said
first object is limited.
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Upon careful review of Berry, we find there is no dispute
that Berry fails to teach the aforementioned limitation of claim
26. Further, upon careful review of Owens, we find that Owens
does disclose the concept of “read-only” and the use of an option
key to provide a secondary function when performing a drag
operation. However, we fail to find anything in Owens that would
suggest the aforementioned limitation of claim 26 as the Examiner
asserts in the office action.
Therefore, upon reviewing each of Berry and Owens, supra, we
find nothing in any of the references that supports the
Examiner’s position that the combination of these references
teaches the limitations of claim 26 as previously discussed.
The Federal Circuit states that, “[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). In addition, our reviewing court stated
in In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed.
Cir. 2002), that when making an obviousness rejection based on
Appeal No. 2000-0467
Application 08/511,645
24
combination, “there must be some motivation, suggestion, or
teaching of the desirability of making the specific combination
that was made by the applicant”, (quoting In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
Having reviewed the Berry and Owens references, we find no
factual basis or motivation for suggesting their combination even
in light of the Examiner’s contention that the motivation to
combine Owens and Berry is “for access protection.” Therefore,
we will not sustain the Examiner’s rejection of claim 26 under
35 U.S.C. § 103. Further, claims 27 and 28 are dependent upon
claim 26 and therefore include all the limitations of claim 26.
Hence, we will not sustain the Examiner’s rejection of claims 27
and 28 under 35 U.S.C. § 103.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 6 and 10 through 25 under 35 U.S.C.
§ 103 is affirmed; however, the decision of the Examiner
rejecting claims 26 through 28 under 35 U.S.C. § 103 is reversed.
Appeal No. 2000-0467
Application 08/511,645
25
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED IN PART
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2000-0467
Application 08/511,645
26
James W. Peterson
Burns Doane Swecker and Mathis
P.O. Box 1404
Alexandria, VA 22313-1404