10335018 (B.P.A.I. Sep. 27, 2010)

Ex Parte Gurney et al

Board of Patent Appeals and InterferencesSep 27, 2010

10335018 (B.P.A.I. Sep. 27, 2010)

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. 10/335,018 12/31/2002 Daniel C. Gurney LOT920020043US1 (004) 5588 46321 7590 09/27/2010 CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER PITARO, RYAN F ART UNIT PAPER NUMBER 2174 MAIL DATE DELIVERY MODE 09/27/2010 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 DANIEL C. GURNEY and VINOD R. SERAPHIN ____________ Appeal 2009-009928 Application 10/335,018 Technology Center 2100 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JAY P. LUCAS, Administrative Patent Judges. DIXON, 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. Appeal 2009-009928 Application 10/335,018 2 The Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-3, 5, 7, 10, and 12. Claims 4, 6, 8, 9, 11, 13, 14, and 15 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. I. STATEMENT OF THE CASE The Invention The invention at issue on appeal relates to a method and a device for graphical user interface (GUI) and drop box control (Spec. 1). The Illustrative Claims Claims 1 and 7, the illustrative claims, read as follows: 1. An edit selection control article of manufacture comprising: a combo box coupled to a list of entries of full textual length; an edit box coupled to said combo box within the edit selection control and configured to display a selected one of said entries; and, list management logic coupled to said edit box and programmed to accept through said edit box as an alternative selection to said list of entries, a manually specified entry; the edit selection control having a structure defined by a dynamic markup language for use in a markup language document; and, selection transformation logic coupled to said edit box and Appeal 2009-009928 Application 10/335,018 3 programmed to transform said selected one of said entries into a hidden value and to return the computed value to a calling application based upon the selected one of the entries. 7. A method of selecting an entry in an edit selection control, the method comprising the steps of: receiving focus in the edit selection control; detecting a user request to drop down a list of entries in the edit selection control; responsive to a user selection of one of said entries, displaying an abbreviated version of said user selection in an editable text field; permitting manual entry of a selection in said editable text field in lieu of selecting one of said entries; transforming said selection into a hidden value; returning said hidden value to a calling programmatic entity; and, adding said manual entry to said list of entries. The References The Examiner relies on the following references as evidence: Google “Google”, Dec. 17, 2001 Internet: www.google.com URL: Http://web.archive.org/web/*/http://google.com (hereafter Google). Appeal 2009-009928 Application 10/335,018 4 Google Toolbar, March 2001, pp. 1010 URL:Http://web.archive.org/web/20010202030300/http://toolbar.goo gle.com (hereafter Toolbar). Vickery “CCombobox with Support for History”, Oct. 10, 2002 pp. 1- 6 URL: Http://www.codeguru.com/cpp/controls /combobox/article.php/c4945/ (hereafter Vickery). yCode Combo Box, “Screen Capture Image” URL: http://web.archive/web/20021129063058/http://www.ycode.com (hereafter yCode) The Rejections The following rejections are before us for review: Claims 7, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Google, Toolbar, and Vickery. Claims 1-3, and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Google, Toolbar, yCode, and Vickery. II. ISSUES Has the Examiner erred in finding that the combination of Google, Toolbar, yCode, and Vickery teaches or fairly suggests “transform said selected one of said entries into a hidden value and to return the computed value to a calling application”, as recited in independent claim 1 or Appeal 2009-009928 Application 10/335,018 5 “transforming said selection into a hidden value; returning said hidden value to a calling programmatic entity”, as recited in independent claim 7? III. PRINCIPLES OF LAW Claim Interpretation The claim construction analysis begins with the words of the claim. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). Obviousness “Obviousness is a question of law based on underlying findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying factual inquiries are: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the pertinent art, and (4) secondary considerations of nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citation omitted). Appeal 2009-009928 Application 10/335,018 6 IV. FINDING OF FACT The following finding of fact (FFs) is supported by a preponderance of the evidence. Vickery 1. Vickery discloses a History Combo class that supports for keys including reading from key strokes and saving to the registry (page 2). Vickery also discloses that a user can type an item into the combo, and then click “add to list”, and next time when the user runs the application, the item will appear in the history list (Fig. 3). V. ANALYSIS The Appellants have the opportunity on appeal to the Board of Patent Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a detailed explanation of a reasoned conclusion of unpatentability in the Examiner’s Answer. Therefore, we look to the Appellants’ Brief to show error in the proffered reasoned conclusion. Id. The Common Feature in Claims Independent claim 1, recites, inter alia, “transform said selected one of said entries into a hidden value and to return the computed value to a calling application”. Independent claims 7 and 12, recite, inter alia, Appeal 2009-009928 Application 10/335,018 7 “transforming said selection into a hidden value; returning said hidden value to a calling programmatic entity” contain these similar limitations. The recited limitations, even though different in wording, have the same scope. 35 U.S.C. § 103(a) rejections With respect to independent claims 1, 7, and 12, the Appellants contend that Vickery fails to disclose the feature of transforming an entry to a hidden value (App. Br. 7 and 9). According to the Appellants, the logic operator “and” is a mathematical function, not a value (Id. 7), and the “Examiner has mapped ‘hidden value’ not to a ‘value that is hidden’, but to an ‘operator that is hidden’.” (Reply Br. 4). The Examiner states that Vickery teaches the argued limitation in Fig. 3 (Ans. 4, 6 and 9). The Examiner also states that the “and” operator could be read as a hidden value because “the Examiner holds the position that value as in computer science, is a sequence of bits that is interpreted according to same data type . . . [f]or instance, the value could be an integer or floating point value, or a string.” Id., at 8-9. We disagree with the Examiner’s statements. We find that the paragraph of the Vickery reference relied upon by the Examiner only discusses recording an entry by a user to a history list displayed later to the user (FF 1). We do not find and the Examiner does not indicate where there is any teaching in Vickery for transforming an entry, let alone transforming an entry into a “hidden value.” One ordinary skill in the computer arts Appeal 2009-009928 Application 10/335,018 8 would not recognize that a logical operator is a value as the Examiner argued. Even if assuming the logical operator “and” is a kind of value, the logical operator is clearly not an entry by a user, or transforming this entry to a hidden value, especially in view of the specification. Because we agree with at least one of the Appellants’ contentions, we find that the Examiner has not made a requisite showing of obviousness as required to teach or fairly suggest the invention as recited in claims 1, 7, and 12 by the combination of Google, Toolbar, yCode, and Vickery. The rejection of the dependent claims 2, 3, 5, and 10 contains the same deficiency. The Appellants, thus, have demonstrated error in the Examiner’s reasoned conclusion for obviousness of the subject matter of claims 1-3, 5, 7, 10, and 12. We, therefore, cannot sustain the rejection of claims 1-3, 5, 7, 10, and 12 under 35 U.S.C. § 103. VI. CONCLUSION We conclude that the Examiner erred by finding that the combination of Google, Toolbar, yCode, and Vickery teaches or fairly suggests “transform said selected one of said entries into a hidden value and to return the computed value to a calling application”, as recited in independent claim 1 or “transforming said selection into a hidden value; returning said hidden value to a calling programmatic entity”, as recited in independent claim 7. Appeal 2009-009928 Application 10/335,018 9 VII. ORDER We reverse the obviousness rejections of claims 1-3, 5, 7, 10, and 12 under 35 U.S.C. § 103(a). REVERSED tkl CAREY, RODREGUEZ, GREENBURG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPOORATE CIRCLE SUITE 3020 BOCA RATON, FL 33487