Ex Parte Gourdol et alDownload PDFPatent Trial and Appeal BoardSep 26, 201411610463 (P.T.A.B. Sep. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ARNO GOURDOL and WADE HENINGER ____________________ Appeal 2012-002643 Application 11/610,463 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and DEBRA K. STEPHENS, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL Appeal 2012-002643 Application 11/610,463 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-3, 5-16, 18-26, and 28-30. We have jurisdiction under 35 U.S.C. § 6(b). Claims 4, 17 and 27 are cancelled. We REVERSE and enter a NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b). Introduction According to Appellants, the claims are directed to navigation of hierarchical data sets that allow users to choose which categories to use (Abstract; Spec. ¶ 0001). Exemplary Claim Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, comprising: accessing a database, wherein the database is based at least in part on a hierarchical data set comprising data items organized according to a file system hierarchy; analyzing the hierarchical data set to determine one or more filterable items based on intrinsic and extrinsic metadata of one or more data items of the hierarchical data set; displaying the one or more data items in a database view; displaying the one or more filterable items organized under one or more categories in a display area adjacent to the displayed database view, wherein the one or more categories are dynamically generated based at least in part on the intrinsic and Appeal 2012-002643 Application 11/610,463 3 extrinsic metadata such that, if none of the one or more data items falls under a given category, the given category is not displayed; filtering the database view in response to a selection of a filterable item, wherein the filtering comprises removing at least one of the one or more data items from the database view; and in response to removing the at least one of the one or more data items from the database view, removing one or more corresponding filterable items from the display area adjacent to the displayed database view. 11. An article of manufacture comprising a non-transitory computer- readable storage medium having program instructions stored thereon that, in response to execution by a computer system, cause the computer system to perform operations including: accessing a database, wherein the database based at least in part on a hierarchical data set; analyzing the hierarchical data set to identify one or more filterable items based on intrinsic and extrinsic metadata of one or more data items of the hierarchical data set; displaying the one or more data items in a database view; displaying the one or more filterable items organized under one or more categories, wherein the one or more categories are dynamically determined based at least in part on the intrinsic and extrinsic metadata such that, if none of the identified one or more filterable items belongs in a given category, the given category is not displayed; filtering the database view in response to a selection of a filterable item, wherein filtering the database view comprises removing at least one data item from the database view; and Appeal 2012-002643 Application 11/610,463 4 removing a filterable item from the display area adjacent to the displayed database view that corresponds to the at least one of the one or more data items removed from the database view. REFERENCES Grobler Frigon US 2003/0065673 A1 US 2005/0166156 A1 Apr. 3, 2003 Jul. 28, 2005 Picasa and Picasa Web Albums Help….1 REJECTIONS The Examiner made the following rejections: (1) Claims 1, 3, 5-9, 11, 13-16, 18, 19, 21, 23-26, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Frigon and Grobler.2 1 The Examiner has not listed Frigon in the Evidence Relied Upon and included Barsness, a reference not relied upon in any of the rejections (Ans. 4). We consider this to be harmless error. 2 We note the Examiner entered Appellants’ amendment cancelling claim 4, 17, and 27 and incorporating the limitations of claims 4, 17, and 27 into their respective independent claims (Advisory Action of March 4, 2011). However, the Examiner has not reflected that amendment and the consequences thereof in the Grounds of Rejection (Ans. 4-9). Appellants have stated the resulting rejection (App. Br. 9); the Examiner has addressed the claims under the resulting rejection (Ans. 13-14); and the Examiner has confirmed the Appellants’ statement of the Grounds of Rejection to be Reviewed on Appeal (Ans. 3). In the interest of compact prosecution, we consider the Grounds of Rejection to be those set forth by Appellants (Ans. 3) and as set forth above (§Rejections) in our Decision. We consider all other recitations of the rejections throughout the Appeal Brief (e.g. App. Br. 10, §2) and Answer (e.g. Ans. 11-12, reference to Picasa) to be incorrectly stated. Appeal 2012-002643 Application 11/610,463 5 (2) Claims 2, 10, 12, 20, 22, and 30 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Frigon, Grobler, and Picasa (Ans. 9-11). We have considered only those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 1 35 U.S.C. § 103(a): Claims 1, 3, 5-9, 11, 13-16, 18, 19, 21, 23-26, 28, and 29 Appellants assert their invention is not obvious over Frigon and Grobler because neither reference, taken alone or in proper combination teaches or suggests “in response to removing the at least one of the one or more data items from the database view, removing one or more corresponding filterable items from the display area adjacent to the displayed database view.” (App. Br. 11). Appellants further argue, even if “hiding” were “removing,” Grobler does not teach removing a corresponding filterable item from the display area when a data element is removed from the database view (App. Br. 13). Appellants additionally contend although Frigon teaches “filter selection area 224 allows a user to select a filter to apply to a set of items,” Frigon does not teach or suggest that if items in the database were removed and the filter were no longer applicable, the filter would also be removed (App. Br. 13; see also Reply Br. 3). Appeal 2012-002643 Application 11/610,463 6 Lastly, Appellants argue Grobler teaches away from the recited limitation because a user perceiving marks suggests none of the elements are removed and because “it is not at all clear” that incorporating Grobler’s visibility marks into Frigon’s system would have been useful or desirable (App. Br. 14). Thus, the issues presented by these arguments are: Issue 1: Has the Examiner erred in finding the combination of Frigon and Grobler teaches or suggests “in response to removing the at least one of the one or more data items from the database view, removing one or more corresponding filterable items from the display area adjacent to the displayed database view” as recited in claim 1? Issue 2: Has the Examiner improperly combined the teachings of Frigon and Grobler? ANALYSIS We are persuaded by Appellants’ arguments. Based on the Examiner’s findings, we determine the database view to be Frigon’s item presentation area 214 and the display area adjacent to the displayed database view to be Frigon’s filter view area 212, which includes view-by selection area 222 and filter selection area 224 (see Ans. 5). In light of this determination, we are not persuaded the Examiner has shown the combination of Frigon and Grobler teaches or suggests the disputed limitation. Specifically, the Examiner relies on paragraph 78 of Grobler, which teaches using visibility flags to hide or remove an item(s) in a database view Appeal 2012-002643 Application 11/610,463 7 and to hide a corresponding item (Ans. 14). We find this paragraph teaches if an element in the hierarchical directory structure does not have a hierarchical visibility mark (either user selected or propagated), that element is hidden when displayed to the user (p. 4, ¶ 0078). This paragraph further describes those elements without the hierarchical visibility mark, remain visible when displayed to the user (id.). However, we do not find this paragraph teaches or suggests that any corresponding item is removed when another item is hidden or removed, and do not find the Examiner provided sufficient explanation for this finding. The Examiner additionally relies on Frigon as teaching display of data filters only if they correspond to items that can be filtered by displayed filters (Ans. 13). The Examiner then finds that because Frigon discloses “filters displayed correspond to only items that can be filtered[,] it clearly suggest[s] that if items in the database were removed and the filter(s) no longer applies to any other items [in the] database[,] the filter would be removed from the display also . . .” (Ans. 14). However, the Examiner has not set forth with particularity where Frigon teaches or suggests this feature. Indeed, paragraph 37 of Frigon, upon which the Examiner relies, describes filter selection area 224, which allows a user to select a filter(s) to apply to a set of items and the resulting display of items in response to that choice. We furthermore, do not find Frigon teaches or suggests removal of a subfilter (e.g., a specific date filter) would remove a parent filter (e.g., a month filter (see filter selection area 224 of Figure 2C)). Accordingly, we are persuaded the Examiner erred in finding the combination of Frigon and Grobler teaches or suggests the limitations as Appeal 2012-002643 Application 11/610,463 8 recited in independent claim 1 and commensurately recited in claims 11 and 21. The Examiner has not shown Picasa cures the deficiencies of Frigon and Grobler. Accordingly, we do not sustain the rejection of claims 1, 3, 5-9, 11, 13-16, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 103(a) for obviousness over Frigon and Grobler. It follows, we do not sustain the rejection of claims 2, 10, 12, 20, 22, and 30 under 35 U.S.C. § 103(a) for obviousness over Frigon, Grobler, and Picasa. REJECTIONS OF CLAIMS 11-16 AND 18-20 UNDER 37 C.F.R. § 41.50(b) We make the following new ground of rejection using our authority under 37 C.F.R. § 41.50(b). Rejection: Claims 11-16 and 18-20 are rejected under 35 U.S.C. § 112, first paragraph for failing to comply with the enablement and written description requirements. Initially, we determine claim 11 is not in the same format as the claims in In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995). The claims set forth in Beauregard’s patent were structured as a combination of plural means-plus-function elements – which under 35 U.S.C. §112 (6) would be “construed to cover the corresponding structure described in the specification and equivalents thereof.” 3 In contrast, Appellants’ claim 11 3 [T]he Board rejected Beauregard’s computer program product claims under 35 U.S.C. § 101 on the basis of the printed matter doctrine. Beauregard appealed. The Commissioner now states “that computer programs embodied in a tangible medium, such as floppy diskettes, are Appeal 2012-002643 Application 11/610,463 9 does not recite any elements in means-plus-function language. Specifically, claim 11 recites: An article of manufacture comprising a non-transitory computer-readable storage medium having program instructions stored thereon that, in response to execution by a computer system, cause the computer system to perform operations including: accessing a database, . . .; analyzing the hierarchical data set . . .; displaying the one or more data items in a database view; displaying the one or more filterable items . . . ; filtering the database view . . . ; and removing a filterable item. . . . Therefore, claim 11, which does not invoke 35 U.S.C. §112 (6), is essentially devoid of anything that can be construed as structure, except for the recited non-transitory computer-readable storage medium. Thus, claim 11 is directed to a non-transitory computer-readable storage medium having program instructions stored thereon that perform particular functions. Although storing program instructions on a non-transitory computer- readable storage medium may change the physical structure of the storage patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.” The Commissioner states that he agrees with Beauregard’s position on appeal that the printed matter doctrine is not applicable. Thus, the parties are in agreement that no case or controversy presently exists. In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995). Appeal 2012-002643 Application 11/610,463 10 medium (e.g., at a bit level for magnetic storage), the claim does not specify the actual structure of the computer-readable storage medium. Furthermore, Appellants’ Specification neither discloses code or algorithms to perform the function, nor provides sufficient disclosure as to this actual physical structure that such code or algorithm would create on the computer-readable storage medium. As a result of this lack of disclosure, each operation could be coded in a variety of ways using a variety of languages, etc. Thus, the scope of claim 11 encompasses any and all (present and future) computer-readable storage medium, including instructions for performing the claimed functions. Accordingly, claim 11 is not in compliance with the enablement and description requirements as claim 11 exceeds the Appellants’ disclosure (see Fiers v. Revel 984 F.2d. 1164, 1171 (Fed. Cir. 1993). See also In re Swinehart 439 F.2d 210 (CCPA 1971) (discussing claims employing functional language encompassing any and all embodiments and that such claims should be rejected under 35 U.S.C. §112, first paragraph if the scope of the claim is beyond that justified by the disclosure)). As our reviewing court discussed in Invitrogen Corp. v. Clontech Labs. Inc.: Section 112 requires that the patent specification enable “those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’” to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts. Koito Mfg., Co., v. Turn-Key-Tech 381 F.3d 1142, 1155 (Fed. Cir. 2004) (quoting Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997) (citation omitted)). Appeal 2012-002643 Application 11/610,463 11 429 F.3d 1052, 1070 (Fed. Cir. 2005). The disclosure is necessary to put those skilled in the art on notice of the enforceable boundary of the commercial patent right; therefore, the law further makes the enabling disclosure operational as a limitation on claim validity. Because such a disclosure simultaneously puts those skilled in the art on notice of the enforceable boundary of the commercial patent right, the law further makes the enabling disclosure operational as a limitation on claim validity. “The scope of [patent] claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” Nat'l Recovery, 166 F.3d at 1196; see also In re Goodman, 11 F.3d 1046, 1050 (Fed.Cir.1993) (“[T]he specification must teach those of skill in the art 'how to make and how to use the invention as broadly as it is claimed.”); In re Fisher, 57 C.C.P.A. 1099, 427 F.2d 833, 839 (1970) (“[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.”) (footnote omitted). Invitrogen, 429 F.3d at 1070-71. The test for sufficiency of a written description is whether the disclosure “‘clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)). The disclosure must “reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. at 1351. The Specification does not support any and all (present and future) computer-readable storage medium, including instructions for performing the claimed functions. Appeal 2012-002643 Application 11/610,463 12 Claim 11 encompasses all coding of the recited operations as stored on non-transitory computer-readable storage medium. Our reviewing court has concluded that such all-encompassing claims do not comply with the enablement and written description requirements of 35 U.S.C. § 112, first paragraph, and “it is an attempt to preempt the future before it has arrived.” (See Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)). 4 Accordingly, we reject claim 11 under 35 U.S.C. §112, first paragraph for lack of enablement and written description. Claims 12-16 and 18-20 are similarly rejected. 4 We limit our Wands factors analysis to the “breadth of the claims” factor. The all-encompassing claims before us render this Wands factor sufficient to find the disclosure would require undue experimentation. Specifically, our controlling court has stated: In In re Wands, we set forth a number of factors which a court may consider in determining whether a disclosure would require undue experimentation. These factors were set forth as follows: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. at 737, 858 F.2d 731, 8 USPQ2d at 1404. We have also noted that all of the factors need not be reviewed when determining whether a disclosure is enabling. See Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed.Cir.1991) (noting that the Wands factors “are illustrative, not mandatory. What is relevant depends on the facts.”). Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir.1999). Appeal 2012-002643 Application 11/610,463 13 DECISION The Examiner’s rejection of claims 1, 3, 5-9, 11, 13-16, 18, 19, 21, 23-26, 28, and 29 under 35 U.S.C. § 103(a) as being unpatentable over Frigon and Grobler is reversed. The Examiner’s rejection of claims 2, 10, 12, 20, 22, and 30 under 35 U.S.C. § 103(a) as being unpatentable over Frigon, Grobler, and Picasa is reversed. In a new ground of rejection, we reject claims 11-16 and 18-20 under 35 U.S.C. § 112, first paragraph, as lacking enablement and written description. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2012-002643 Application 11/610,463 14 REVERSED 37 C.F.R. § 41.50(b) tj Copy with citationCopy as parenthetical citation