Ex Parte Curtis et al

Patent Trial and Appeal Board

Dec 30, 2013

11482207 (P.T.A.B. Dec. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRYCE ALLEN CURTIS, STEWART EARLE NICKOLAS,
and WAYNE ELMO VICKNAIR
____________

Appeal 2011-012687
Application1 11/482,207
Technology Center 2100
____________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
computer implemented method for displaying and sorting relevant
categories. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify International Business Machines Corporation of
Armonk, New York as the Real Party in Interest (App. Br. 2).
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Application 11/482,207

2
STATEMENT OF THE CASE
According to the Specification the method of displaying categories
begins with:
A request [that] is received from a client to display labels that
categorize content for a data source. The request includes a set
of parameters. In response to receiving the request a plurality
of labels are identified based on the relevance of the plurality of
labels to the set of parameters. A display of the plurality of
labels is generated. The display is sent to the client, wherein
the display depicts the plurality of labels at the client such that
each label in the plurality of labels has a selected distance from
a central point in the display to indicate relevance of the labels
to the set of parameters.
(Spec. 3: ¶ 0005.)
Claims 1-23 are on appeal, and can be found in the Claims Appendix
Appeal Brief.
The following grounds of rejection are before us for review:
The Examiner has rejected claims 11-20 under 35 U.S.C. § 101 as not
falling within one of the statutory categories (Ans. 4).
The Examiner has rejected claims 1-6, 11-16, and 20 under 35 U.S.C.
§ 103(a) as being obvious over Lamping2 in view of Sciammarella3 (Ans. 4).
The Examiner has rejected claims 7, 9-10, and 17-19 under 35 U.S.C.
§ 103(a) as being obvious over Lamping in view of Sciammarella and
further in view of Hollander4 (Ans. 8).

2 Sciammarella, US 6,570,582 B1, issued May 27, 2003.
3 John Lamping et al., A Focus+Context Technique Based on Hyperbolic
Geometry for Visualizing Large Hierarchies, CHI’95 Proceedings Papers,
Xerox Palo Alto Research Center, 1-8 (1995).
4 Hollander et al., US 2007/0118794, published May 24, 2007.
Appeal 2011-012687
Application 11/482,207

3
The Examiner has rejected claims 8 and 21-23 under 35 U.S.C.
§ 103(a) as being obvious over Lamping in view of Sciammarella and
further in view of Rivette5 (Ans. 10).

SUBJECT MATTER ELIGIBILITY
The Examiner takes the position that “[i]nfrared medium and/or
propagation medium in the context of this disclosure cover signals and
carrier waves, which are not a Manufacture within the meaning of 101 since
the ‘computer readable medium’ is interpreted to include nonstatutory
subject matter (e.g., signals, carrier waves, etc.).” (Ans. 20.) With regard to
claim 20, the Examiner takes the position that “a storage medium or device
could be a transport, communication or propagation medium which is not
statutory subject matter. In addition, the Specification indicates that a
process can be a command processor software module (paragraphs [0038]-
[0040]).” (Id. at 21.)
“Appellants submit that the claims are tied to a computer-readable
storage medium and that a computer-readable medium is defined in the
specification as ‘any tangible apparatus’ such as the tangible storage device
examples provided in the recited paragraphs.” (Appeal Br. 32.) With
respect to claim 20, “Appellants submit that the claims are tied to a storage
device and that a storage device such as a computer-readable medium is
defined in the specification as ‘any tangible apparatus’ such as the tangible
storage device examples provided in the recited paragraphs.” (Id. at 33.)
The issue is: Does the Specification clearly indicate that only non-
transitory signals are contemplated for the computer readable medium?

5 Rivette et al., US 2003/0046307 A1, published Mar. 6, 2003.
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Findings of Fact
FF1 The Specification provides that “[f]or the purposes of this
description, a computer-usable or computer-readable medium can be any
tangible apparatus that can contain, store, communicate, propagate, or
transport the program for use by or in connection with the instruction
execution system, apparatus, or device.” (Spec. 32: ¶ 0093.)
FF2. The Specification provides that “[t]he medium can be an
electronic, magnetic, optical, electromagnetic, infrared, or semiconductor
system (or apparatus or device) or a propagation medium.” (Spec. 32: ¶
0094.)

Analysis
According to the Examiner the infrared or propagation medium in the
context of the Specification (FFs 1 and 2) include signals and carrier waves
(see Ans. 20 and 21). Signals are not patentable eligible subject matter
under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also
United States Patent and Trademark Office (USPTO), Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010), the policy statement as published in the Official Gazette of
the USPTO provides:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium (also called machine readable
medium and other such variations) typically covers forms of
non-transitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media, particularly when the specification is
silent.
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As set forth in the aforementioned USPTO policy guidance, a claim drawn
to a computer-readable medium that covers both transitory (signal) and non-
transitory embodiments may be amended to narrow the claim to cover only
statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding
the limitation “non-transitory” to the claim. (Id.). See also MPEP § 2106 (I)
(8th ed., Rev. 9 Aug. 2012).
To the extent the claimed “computer program readable storage
medium” (claim 11) and “storage device stores computer readable code”
(claim 20) is construed by Appellants as being limited to any tangible
apparatus (i.e., excluding signals) (Appeal Br. 32 and 33), we are bound by
the holding of Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB May 8,
2013) (precedential) (“Given the significant amount of available guidance
and evidence supra, we conclude that those of ordinary skill in the art would
understand the claim term ‘machine-readable storage medium’ would
include signals per se. Further, where, as here, the broadest reasonable
interpretations of all the claims each covers a signal per se, the claims must
be rejected under 35 U.S.C. § 101 as covering non-statutory subject
matter.”).
For these reasons, we sustain the Examiner’s § 101 rejection of claims
11-20 which are each directed to a “computer readable storage medium” or
“storage device stores computer readable code.”

OBVIOUSNESS
The Examiner takes the position that Lamping discloses that “[d]ata is
arranged, and displayed in such manner as to include a labeled parent data at
the center with higher focus than data sibling labeled data displayed at a
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Application 11/482,207

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distance from the center of the disk.” (Ans. 4.) The Examiner, however,
recognizes that “Lamping fails to explicitly disclose: a point on a spiral
curve emanating from the central point, wherein the spiral curve becomes
progressively larger and further away from the central point as the spiral
curve revolves around the central point.” (Id. at 5.) The Examiner looks to
Sciammarella for the teaching of displaying images in a spiral pattern (id. at
6). The Examiner concludes that the combination would arrive at the
claimed invention allowing “a user the flexibility to easily view the temporal
relationship among documents.” (Id.)
The issue is: Does the preponderance of the evidence of record
support the Examiner’s conclusion that the invention as claimed is obvious?

Findings of Fact
FF3. Lamping disclosed that “[t]he hyperbolic browser initially
displays a tree with its root at the center, but the display can be smoothly
transformed to bring other nodes into focus.” (Lamping 1, col. 2)
FF4. Lamping in Fig. 7, reproduced below, displays regions of nodes
on a hyperbolic geometry to visualize hierarchies:
App
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Appeal 2011-012687
Application 11/482,207

9
We agree with Appellants position. “[T]he examiner bears the initial
burden . . . of presenting a prima facie case of unpatentability. . . .” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415 (2007), the Supreme Court emphasized “an
expansive and flexible approach” to the obviousness question, the Court also
reaffirmed the importance of determining “whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue.” Id. at 418.
Specifically, the Examiner has not articulated why the ordinary artisan
would look to a temporal display, i.e. a display of labels based on when the
entries were created (FFs 6 and 7), to organize labels so that the size of the
label and the position of the label on the spiral indicates the level importance
and relationship to any of the surrounding labels. Here, Sciammarella
provides spiral display where the center of the display is either the oldest or
newest entry (FF 7). In either case, the display at the center of the spiral is
the smallest and would not indicate to the ordinary artisan that this point is
the focus of the client request and provide information or indication
regarding the search parameters. The Examiner also has not explained why
the ordinary artisan would want to take a hyperbolic hierarchical tree display
(FFs 3-5) and transform it into a spiral display. We find that the Examiner
has not articulated a sufficient reason for the ordinary artisan to make the
changes to the combination of references in order to arrive at the claimed
invention. A rejection for obviousness must include “articulated reasoning
with some rational underpinning to support the legal conclusion.” KSR at
418, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appeal 2011-012687
Application 11/482,207

10
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Lamping in
view of Sciammarella discloses a method having all limitations of
independent claim 1 and dependent claims thereto. We thus, reverse the
further rejections under 35 U.S.C. § 103(a) that rely on the teachings of
Lamping in view of Sciammarella.

SUMMARY
We affirm the rejection of claims 11-20 under 35 U.S.C. § 101.
We reverse the rejection of claims 1-6, 11-16, and 20 under 35 U.S.C.
§ 103(a) over Lamping in view of Sciammarella.
We reverse the rejection of claims 7, 9-10, and 17-19 under 35 U.S.C.
§ 103(a) over Lamping in view of Sciammarella and further in view of
Hollander.
We reverse the rejection of claims 8 and 21-23 under 35 U.S.C.
§ 103(a) over Lamping in view of Sciammarella and further in view of
Rivette.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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