Ex Parte Gardner

Board of Patent Appeals and Interferences

Aug 17, 2010

10352196 (B.P.A.I. Aug. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEVE GARDNER
__________

Appeal 2009-010298
Application 10/352,196
Technology Center 2100
__________

Before JOSEPH L. DIXON, STEPHEN C. SIU, and JAMES R. HUGHES,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

1 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
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claim 1. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on August 11, 2010.

The Invention
The disclosed invention relates generally to a user interface for a
bioinformatics system (Spec. 1).
Independent claim 1 is as follows:
1. A user interface comprising: a control panel that provides
a user access to at least one of: a data sources portion that allows a
user to select a type of data for which to search and to select a data
source in which to search for said type of data, thereby enabling the
user to receive a search result, a processes portion that allows a user to
select a process to run against said search result, thereby enabling the
user to receive a process result, and a results portion that presents at
least one of said search result and said process result; a display panel
that presents the user with at least one of said search result and said
process result; and an explorer panel that presents the user with a
hierarchical representation of at least one of said search result and said
process result.

The Reference
The Examiner relies upon the following reference as evidence in
support of the rejection:
Li US 5,911,138 Jun. 8, 1999

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The Rejection
The Examiner rejects claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Li.

ISSUE
Appellant asserts that Li fails to disclose “a user selecting either a
type of data or a data source for the selected data type” (App. Br. 6) or “‘a
processes portion that allows a user to select a process to run against said
search result’” (App. Br. 7).
Did the Examiner err in finding that Li discloses at least one of a data
sources portion that allows a user to select a type of data and data source and
a process portion that allows a user to select a process?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Li discloses a user who “clicks on the query window 101 and is
prompted for the name of the query statement” (col. 5, ll. 44-45) and
“chooses the system default, Query1, 104 which includes search
statements” (col. 5, ll. 45-46).
2. Li discloses a “graphical user interface (GUI)” (col. 4, ll. 59-60). In
one example, a user “includes search statements for price and store
location . . . [and] fills in the query parameters to find out how many
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units have sold at a high price (>$20) at a particular store” (col. 5,
ll. 46-49).
3. Li discloses a query statement from a user that selects data from a
“CD_Sales” database that match a desired price and name (Fig. 3A,
query window).

PRINCIPLES OF LAW
35 U.S.C. § 102
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) (citation omitted).

ANALYSIS
As described above, Li discloses a user who selects a query in a
displayed window, the query including a data source (e.g., a database by the
name of “CD_Sales”) from which to search data (FF 1-3). In addition, the
user’s selection in Li includes a type of data which, in the example
disclosed, includes data of a particular name or within a certain desired
range (FF 3). Because the user, by selecting a desired query, selects a data
source (e.g., a database named “CD_Sales”) and specific “data types” (e.g.,
data within a certain range or of a particular name) associated with the
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selected query, we agree with the Examiner that Li discloses selecting a data
source and a data type.
Appellant argues that “in Li there is only one data source” (Reply Br.
2). However, even assuming Appellant’s contention to be true, claim 1
merely requires selection of a data source but does not require more than one
data source. In any event, the user in the Li system selects a query and a
data source associated with that selected query, as described above.
Appellant also contends that “there is not even an option for the user
[in Li] to select a data source” (Reply Br. 2). We understand Appellant to
argue that Li does not disclose a data sources portion that allows a user to
separately select a data source. Appellant’s argument, however, is not
commensurate with the scope of the claim. As set forth above, the user in Li
selects a query which contains a particular data source (and data type to be
searched). By selecting a query that contains a particular data source and
data type, the user in Li also selects the particular data source and data type
that are included in the query. While Appellant argues that the “assertion
that by selecting a query, the user in Li is selecting a data source and a type
of data constitutes legal error” (Reply Br. 7), Appellant fails to indicate how
the user in Li selecting a data source and data types within a selected query
differs from the claim limitation of selection of a data source and a data type.
Appellant further argues that “Li also fails to disclose ‘a processes
portion that allows a user to select a process to run against said search
result,’ as recited in claim 1” (App. Br. 6). Claim 1 does not specifically
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require a “processes portion.” Rather, claim 1 merely requires “at least one
of: a data sources portion . . . a process portion . . . and a results portion”
(App. Br. 9, Claims Appx.) which means that either a data source portion, a
process portion, or a results portion is required (i.e., only one of the data
source portion, process portion, or results portion is required). As described
above, we agree with the Examiner that Li discloses the claimed “data
source portion.” Therefore, we do not reach Appellant’s arguments
pertaining to the “processes portion” of claim 1.
For at least the aforementioned reasons, we affirm the Examiner’s
rejection of claim 1.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in finding that Li discloses at least one of a data
sources portion that allows a user to select a type of data and data source and
a process portion that allows a user to select a process.

DECISION
We affirm the Examiner’s decision rejecting claim 1 under
35 U.S.C. § 102(b).
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).

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AFFIRMED

msc

ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064