Ex Parte Gottsman

Patent Trial and Appeal Board

Sep 27, 2012

09824355 (P.T.A.B. Sep. 27, 2012)

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.
09/824,355 04/02/2001 Edward J. Gottsman 38836.00.0044 7180
30498 7590 09/28/2012
Vedder Price PC
222 NORTH LASALLE STREET
CHICAGO, IL 60601
EXAMINER
CORRIELUS, JEAN M
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
09/28/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD J. GOTTSMAN
____________________

Appeal 2011-002459
Application 09/824,355
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD, JR., and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals from the Examiner’s rejection of claims 1-11.
Claims 12-18 have been withdrawn. (Br. 5.) We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

Appeal 2011-002459
Application 09/824,355

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Representative Claim
1. In a computer system having a graphical user interface
including a display and a user selection device, a method of
permitting a user to quickly view elements in a database
comprising:
(a) displaying in a matrix area on the display a matrix
having a plurality of cells and a plurality of icons displayed in
one or more of the cells, the matrix including displayed row
headings and column headings and each icon corresponding to
an element in the database;
(b) receiving an icon selection signal in response to a
user selecting one of the icons with the user interface selection
device; and
(c) in response to the icon selection signal, displaying a
corresponding element.

Rejection on Appeal 1
The Examiner rejects claims 1 and 3-11 under 35 U.S.C. § 102(b) as
being anticipated by U.S. Patent No. 5,650,800, issued Jul. 22, 1997
(“Benson”).

ISSUE
Does the Examiner err in finding that Benson discloses “displaying . .
. a matrix having a plurality of cells and a plurality of icons displayed in one
or more of the cells, the matrix including displayed row headings and
column headings and each icon corresponding to an element in the database”

1 The Examiner withdraws the anticipation rejection of claim 2 and states
that claim 2 includes allowable subject matter. (Answer (mailed September
15, 2009) (“Ans.”) at 3-4.
Appeal 2011-002459
Application 09/824,355

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and “in response to the icon selection signal, displaying a corresponding
element” as recited in Appellant’s claim 1 and the commensurate limitations
of claim 10?

ANALYSIS
We agree with Appellant that portions of Benson identified by the
Examiner do not explicitly disclose the disputed features of claim 1 (Br. 11-
13) or the remaining claims (2-11) (Br. 12-17). Specifically, we agree with
Appellant that Benson fails to disclose, as recited in claim 1, “displaying . . .
a matrix having . . . a plurality of icons . . . including displayed row headings
and column headings and each icon corresponding to an element in the
database” (see Br. 12-13) and “in response to the icon selection signal,
displaying a corresponding element” (see Br. 14-16 discussing claims 4-7
and the failure of Benson to display elements).
Claim 1 requires “displaying . . . a matrix having a plurality of cells
and a plurality of icons displayed in one or more of the cells, the matrix
including displayed row headings and column headings and each icon
corresponding to an element in the database” (claim 1). As explained by
Appellant, “the coordinate indicia (i.e., the (A-F) and (1-5) headings) taught
by Benson are not displayed on his display 100.” (Br. 13.) Rather, the
headings/coordinate indicia shown in Benson’s Fig. 5 are merely provided
for reference and are not actually displayed in the display screen (Fig. 3,
element 100). As explained by Appellant, comparing “Benson’s FIGs. 3 and
5 illustrates that his coordinate indicia are illustrated outside the boundaries
of the display 100.” (Br. 13.)
Appeal 2011-002459
Application 09/824,355

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Claim 1 further requires “receiving an icon selection signal . . . and . .
. in response to the icon selection signal, displaying a corresponding
element” (claim 1). We do not find any mention in Benson of database
elements corresponding to the displayed icons, much less displaying such
elements responsive to a signal (icon selection signal). As explained by
Appellant, “the cited portion of Benson fails to mention changing a visually
perceptible characteristic of anything, much less in response to an ‘icon
selection signal.’” (Br. 14 (with respect to claim 3); see also Br. 14-15
(discussing the Benson’s failure to disclose changing a visually perceptive
characteristic of icons that correspond to the elements) and 15-16
(discussing claims 5-7, the relationship between the icons and elements, and
Benson’s failure to display the elements).)
Consequently, we are constrained by the record before us to conclude
that Benson fails to disclose the recited features of Appellant’s claim 1, and
the rejection of claim 1 fails to establish a prima facie case of anticipation.
Appellant’s independent claim 10 includes limitations of commensurate
scope, and dependent claims 3-9 and 11 depend on and stand with claims 1
and 10 respectively. Accordingly, we reverse the Examiner’s anticipation
rejection of claims 1 and 3-11.

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1 and
3-11 under 35 U.S.C. § 102(b).
Appeal 2011-002459
Application 09/824,355

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DECISION
We reverse the Examiner’s rejections of claims 1 and 3-11 under 35
U.S.C. § 102(b).

REVERSED

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