Ex Parte Dettinger et al

Board of Patent Appeals and Interferences

Jul 2, 2010

10870379 (B.P.A.I. Jul. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD D. DETTINGER, DANIEL P. KOLZ, JEFFEREY W.
TENNER, and SHANNON E. WENZEL
____________

Appeal 2009-001885
Application 10/870,3791
Technology Center 2100
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY, III., and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed June 17, 2004. The real party in interest is International
Business Machines Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-38, which are all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates to creating queries using query
conditions from previously defined queries. (Abstract.)
Claim 1 is illustrative:
1. A method for composing a query, comprising:
displaying at least a first query object representative of a
first query and a second query object representative of a second
query in a user interface; and
positionally relating each of the query objects to define a
plurality of user-selectable regions, each region corresponding
to a different executable query.

Appellants appeal the following rejections:
1. Claims 1-6, 8-13, 15-20, 22-27, 29-32, and 34-37 under 35 U.S.C.
§ 102(b) as anticipated by Tuli (US 6,003,034, Dec. 14, 1999); and
2. Claims 7, 14, 21, 28, 33, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Tuli and Nisbet (US 6,925,494, Aug. 2, 2005).

FACTUAL FINDINGS
1. In Tuli, “[s]oftware objects are represented by icons, whereby
these icons represent topics about which each file is related and upon
performing various graphical query searches using the mathematical theory
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of intersecting sets for desired files, a list of all files appears in a window.”
(Abstract.)
2. Tuli discloses that “[i]n searching for a particular file or group of
files in a particular category, icons from each group window that are only
related to those desired files are selected and a copy placed into the ‘query
area’ window 5.” (Col. 7, ll. 18-22.)
3. In Tuli, “[s]hould two or more regular icons . . . be moved into the
‘query area’ window with a portion of one icon overlapping the other, the
operator only has to select and invoke that overlapping portion by double
clicking on it with a mouse, and all files with attributes common to icons
selected in the group windows are displayed.” (Col. 3, ll. 12-18.)
4. Tuli discloses that “[a]ny number of icons or group icons, which
represent a set of discrete files, can be involved in the query function and by
overlapping or placing adjacent to each other, the theory of sets using ‘and’,
‘or’ and other functions can be performed to do a variety of queries.” (Col.
3, ll. 37-42.)

ANALYSIS
We selected claim 1 as representative of the claims on appeal. In
essence, claims 2-38 were not separately argued (see App. Br. 11-14) in
accordance with 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, claims 2-38
stand or fall with claim 1.
Issue: Did the Examiner err in finding that Tuli discloses positionally
relating each of the query objects to define a plurality of user-selectable
regions, each region corresponding to a different executable query?
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Appellants argue that “the icons in Tuli are software objects
representing one or more files, not executable queries.” (App. Br. 11)
Appellants further contend that “Tuli teaches creating queries from icons
representing files, not creating them from other queries.” (Reply Br. 2.)
The Examiner found that “[a] person of ordinary skill in the art, would
recognize that these query icons are executed in order to produce the list of
files as the result. Therefore, theses query icons are the executable query
icons.” (Ans. 113.) We agree with the Examiner.
Here, the issue turns on whether Tuli’s software icons are
distinguishable from the claimed query objects. Tuli discloses a method of
linking icons to data units by performing graphical query searches and
obtaining a list of files (FF 1). In Tuli, searching for a particular file
includes selecting an icon and placing the icon into a query area window (FF
2). If two or more icons are moved into the query area window with a
portion of one icon overlapping the other, the user can select and invoke that
overlapping portion by double clicking on it and all files with common
attributes to the icons selected will be displayed (FF 3). In Tuli, any number
of icons can be involved in the query function (FF 4).
In essence, Tuli’s “icons” represents query objects in that the icons
themselves are used to invoke searches of files, the fundamental nature of a
query. Furthermore, consistent with appellants’ own invention, when two or
more of Tuli’s icons are placed in the same query area window, any
overlapping portion of the Venn diagram can be selected to retrieve desired
files. As such, we find that the claimed “positionally relating each of the

3 Note that the wrong pagination of page 2 is listed in the Answer. Given
that this page actual follows page 10, we shall cite it as page 11.
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query objects to define a plurality of user-selectable regions, each region
corresponding to a different executable query” reads on Tuli’s icons being
placed in the query area with overlapping regions which can be invoked to
display desired files.
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
We find that the Examiner did not err in rejecting representative claim
1. Accordingly, we affirm the § 102(b) rejection of independent claims 1, 8,
15, 22, 29, and 34, as well as associated dependent claims 2-6, 9-13, 16-20,
23-27, 30-32, and 35-37. Furthermore, Appellants have not presented
arguments for separate patentability of claims 7, 14, 21, 28, 33, and 38. We,
therefore, also sustain the § 103(a) rejection of claims 7, 14, 21, 28, 33, and
38.

DECISION
We affirm the Examiner’s § 102 and § 103 rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED
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