Ex Parte Davis et al

Board of Patent Appeals and Interferences

Apr 20, 2011

10787641 (B.P.A.I. Apr. 20, 2011)

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.
10/787,641 02/26/2004 Jeffrey Michael Davis ROC920030412US1 5821
46797 7590 04/20/2011
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
04/20/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFREY MICHAEL DAVIS, RANDY EUGENIO
OYARZABAL, CRYSTAL FAYE SPRINGER, and NATHAN GARY
STEFFENHAGEN
____________________

Appeal 2009-005514
Application 10/787,641
Technology Center 2100
____________________

Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005514
Application 10/787,641
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-9, 11, 13-20, 22-25, 27, and 29-34. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to:

One embodiment provides a method of managing multiple
information management tools in a data processing system. The
method comprises displaying, on a display device, a user interface of
a toolkit configured for managing the multiple information
management tools, the user interface comprising a plurality of
selectable operations applicable to information management tools;
receiving a user selection of an operation of the plurality of selectable
operations; and applying the selected operation to at least one of the
information management tools.

(Spec. 4). Claims 11 and 11, reproduced below, are illustrative of the
claimed subject matter:
1. A method of managing multiple information
management tools in a data processing system, comprising:
displaying, on a display device, a user interface
configured for managing the multiple information management
tools, the user interface comprising a plurality of selectable
operations applicable to the information management tools;

1 Appellants’ after final amendment, dated December 17, 2007, has been
indicated as entered by the Examiner via a telephone conversation with
Appellants, but there is no record in the administrative file of the interview
summary. Furthermore, the Examiner agreed with Appellants’ status of the
claims concerning the after final amendments, but did not specifically
indicate in the record that the after final amendment has been entered.
Appellants’ claims appendix includes the claims as amended, and we have
considered the claims as if the after final amendment was entered by the
Examiner.
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receiving a user selection of an operation of the plurality
of selectable operations;
executing a master agent configured to determine a
preferred sequence to execute one or more local agents and to
invoke the execution of the one or more local agents in the
preferred sequence; and
performing, by the one or more local agents, the selected
operations to at least one of the information management tools
in the preferred sequence.

11. A method of managing multiple databases in a data
processing system, comprising:
displaying, on a display device, a first user interface
screen configured for managing the multiple databases, the first
user interface screen comprising a viewable representation of a
plurality of selectable databases;
receiving a user selection of a subset of databases from
the plurality of selectable databases;
displaying, on the display device, a second user interface
screen, the second user interface screen comprising a viewable
representation of a plurality of selectable operations applicable
to the databases;
receiving a user selection of an operation of the plurality
of selectable operations;
executing a master agent configured to determine a
preferred sequence to execute one or more local agents and to
invoke the execution of one or more local agents in the
preferred sequence, wherein the local agents perform the
selected operations to each database of the subset of databases.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Beach
Mullen
US 6,728,713
US 7,003,560
Apr. 27, 2004
Feb. 21, 2006
Bangel US 2003/0212715 A1 Nov. 13, 2003
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Application 10/787,641
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REJECTIONS
Claims 1, 2, 4, 6-9, 11, 13-15, 17, 18, 20, 22-25, 27, 29-31, 33, and 34
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beach
and Bangel. Ans. 4.
Claims 3, 16, 19, and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Beach, Bangel, and Mullen. Ans. 10.

ISSUES
Has the Examiner set forth a sufficient initial showing of obviousness
of independent claim 1?
Has the Examiner set forth sufficient initial showing of independent
claim 11? Specifically, has the Examiner shown "a first user interface
screen configured for managing the multiple databases, the first user
interface screen comprising a viewable representation of a plurality of
selectable databases" as specified in claim 11?

PRINCIPLES OF LAW
35 U.S.C. § 103
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
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1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).

ANALYSIS
At the outset we note that Appellants have only set forth a single
Heading in the Appeal Brief with respect to the obviousness rejection.
Therefore, all claims should stand or fall together (App. Br. 13), but
Appellants appear to intend claims 1, 17, and 33 to stand as a single group.
(App. Br. 16). Appellants also intend to group claims 11, 27, and 34 (App.
Br. 18). Therefore, we will address Appellants' arguments with respect to
these groupings. Appellants further rely upon the arguments advanced with
respect to the independent claims for dependent claims 3, 16, 19, and 32.
Therefore, we will group these claims as standing or falling with their
respective independent claim. (App. Br. 18).
With respect to independent claim 1, Appellants discuss the teachings
of Beach and "Tivo DVR" at pages 13-15 of the Appeal Brief. Appellants
contend that:
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In contrast, claims 1, 17, and 33 recite a method of managing
multiple information management tools in a data processing
system that includes displaying, on a display device, a user
interface configured for managing the multiple information
management tools, the user interface comprising a plurality of
selectable operations applicable to information management
tools and receiving a user selection of an operation of the
plurality of selectable operations." Nothing in the material from
Beach discloses "a user interface configured for managing the
multiple information management tools," where the interface
includes "a plurality of selectable operations applicable to the
information management tools," or "a user selection of an
operation of the plurality of selectable operations." Instead, the
passage describes how a Tivo recorder may display of a
television schedule from which a user may select programs to
record.
(App. Br. 16).
We find Appellants' argument does not specifically address the
Examiner's rejection or the teachings of Beach with regards to the express
language of independent claim 1. Appellants argue that the Examiner
misconstrues the teachings of Beach in column 2 and Appellants disagree
that "the actions of a user ‘navigating through the content to find
programming of interest,’ provides an example of a ’plurality of selectable
databases.’ An entry in a television schedule on a Tivo DVR is plainly not a
selectable database." (Reply Brief 4). While we agree with Appellants
contention, "selectable databases" is not a limitation found in independent
claim 1. Therefore, an argument thereto is not persuasive of error in the
Examiner’s showing of obviousness of independent claim 1.
We agree with the Examiner that the Beach reference teaches and
fairly suggests "displaying, on a display device, a user interface configured
for managing the multiple information management tools, the user interface
comprising a plurality of selectable operations applicable to the information
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management tools; receiving a user selection of an operation of the plurality
of selectable operations" as recited in independent claim 1. For example, the
Beach reference discloses the basic operation of the TiVo system at column
13, describing figure 1:
Referring again to FIG. 1, in a preferred embodiment of the
invention the following steps constitute "collection" of television
viewing objects from each client database: 1. As the viewer
navigates the television channels available to him, the client
system records interesting information, such as channel tuned to,
time of tuning, duration of stay, VCR-like actions (e.g., pause,
rewind), and other interesting information. This data is stored in
a local television viewing object.
Additionally, the viewer may indicate interest in offers or
promotions that are made available, or he may indicate a desire
to purchase an item. This information is also recorded into a
local television viewing object.
Additionally, operation of the client device may result in by
varying the computer systems and their configurations to
important data that should be recorded into a television viewing
object. For example, errors may occur when reading from the
hard disk drive in the client, or the internal temperature of the
device may exceed operational parameters. Other similar types of
information might be failure to properly download an object,
running out of space for various disk-based operations, or rapid
power cycling.
(Beach, col. 16, ll. 11-30).
Clearly, Beach discloses and fairly suggests a user interface
configured for managing multiple information management tools (for
various functions such as VCR like functions, interest in offers, and data
acquisition). The user interface would further have a plurality of selectable
operations applicable to the information management tools thereby allowing
data input to those tools. For example, navigating the television channels
available to the user or inputting the interest in offers or promotions.
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Therefore, we find Appellants' arguments regarding Beach to be
unpersuasive of error in the Examiner's proffered combination, and we will
sustain the rejection of independent claim 1 along with independent claims
17 and 33 and their respective dependent claims grouped therewith by
Appellants.
With respect to independent claim 11, Appellants argue that the Beach
reference does not disclose "a first user interface screen configured for
managing the multiple databases, the first user interface screen comprising a
viewable representation of a plurality of selectable databases." (App. Br.
17). We agree with Appellants and find the Examiner's position at page 12
of the Answer concerning the HBO server and the STARZ server to be
unsupported by the Examiner. While the "content on demand" may
somehow relate to a database or multiple databases, it is unclear from those
teachings relied upon by the Examiner as to how this would be taught by
Beach. "The review authorized by 35 U.S.C. Section 134 is not a process
whereby the examiner . . . invite[s] the [B]oard to examine the application
and resolve patentability in the first instance." Ex parte Braeken, 54
USPQ2d 1110, 1112 (BPAI 1999). We decline and will not resort to
speculation, unfounded assumptions, or hindsight reconstruction to make up
for this deficiency in the Examiner's rejection. Therefore, we cannot sustain
the rejection of independent claims 11, 27, 34, and their respective
dependent claims which recite similar limitations.

Appeal 2009-005514
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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-4, 6-9, 17-20, 22-25,
and 33 under 35 U.S.C. §103; and the Examiner did err in rejecting claims
11, 13-16, 27, 29-32, and 34 under 35 U.S.C. §103.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-4, 6-9, 17-
20, 22-25, and 33 is affirmed and. the Examiner’s rejection of claims 11, 13-
16, 27, 29-32, and 34 is reversed.
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) (2010).

AFFIRMED-IN-PART

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