Ex Parte Hao et al

Board of Patent Appeals and Interferences

Mar 31, 2005

09982481 (B.P.A.I. Mar. 31, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MING C. HAO, UMESHWAR DAYAL, MEICHUN HSU, DANIEL A. KEIM,
ADRIAN KRUG, and JULIAN LADISCH
____________
Appeal No. 2005-0433
Application No. 09/982,481
____________
ON BRIEF
____________
Before BARRY, LEVY, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 1-32, which are all the claims in the application.
We affirm-in-part, and enter a new ground of rejection in accordance with
37 CFR § 41.50(b).
Appeal No. 2005-0433
Application No. 09/982,481
-2-
BACKGROUND
The invention relates to placement of data for visualization of multidimensional
data sets. Representative claim 1 is reproduced below.
1. A method for arranging data, said method comprising:
receiving said data comprising a plurality of records, each said record
having a plurality of attributes;
determining a set of attributes selected from said plurality of attributes,
said set of attributes for placement of said plurality of records in a graphically
displayable array, said graphically displayable array comprising a plurality of
adjacent data points, each said data point representing one record of said
plurality of records;
arranging said plurality of records to construct said graphically displayable
array so that each of said adjacent data points is assigned a record.
The examiner relies on the following reference:
Tabei et al. (Tabei) 5,929,863 Jul. 27, 1999
Claims 1-30 stand rejected under 35 U.S.C. § 102 as being anticipated by Tabei.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Tabei.
We refer to the Final Rejection (Paper No. 7) and the Examiner’s Answer (Paper
No. 10) for a statement of the examiner’s position and to the Brief (Paper No. 9) for
appellants’ position with respect to the claims which stand rejected.
Appeal No. 2005-0433
Application No. 09/982,481
-3-
OPINION
Prior art -- Tabei
Appellants group claims 1 through 30 together, and submit arguments relating to
instant claim 1 in response to the § 102 rejection over Tabei. We select claim 1 as
representative, consistent with the rules in effect at the time of filing the Brief. See 37
CFR § 1.192(c)(7) (2004).
Appellants argue that the examiner errs in the finding of anticipation because
Tabei does not teach or suggest a plurality of adjacent data points in which each
adjacent data point is assigned a record. According to appellants, Tabei shows (e.g.,
Figure 11) a graph comprising a plurality of adjacent data points, but not every possible
data point in the graph is assigned a record; many “unassigned” data points exist
between the plotted records.
The examiner responds (Answer at 12-13) that the arguments are not
commensurate with the limitations of claim 1. The examiner finds, further, that Tabei’s
teachings are not limited to the embodiments depicted in the figures. For a large
number of records, the system is capable of drawing a graph such that each data point
corresponds to a record; i.e., with no “unassigned” data points.
With respect to anticipation, “the first inquiry must be into exactly what the claims
define.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). Instant
claim 1 recites that the graphically displayable array comprises “a plurality of adjacent
data points, each said data point representing one record of said plurality of records,”
Appeal No. 2005-0433
Application No. 09/982,481
1 Moreover, it seems unlikely that any “data points” would be in contact in an “array.”
2 What a reference teaches is a question of fact. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550,
1552 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041 (Fed. Cir. 1992).
-4-
and arranging the plurality of records to construct the array such that each of the
adjacent data points is assigned a record.
Claims are to be given their broadest reasonable interpretation during
prosecution, and the scope of a claim cannot be narrowed by reading disclosed
limitations into the claim. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550 (CCPA 1969).
Notwithstanding the implications of appellants’ argument, that data points are “adjacent”
does not necessarily mean there is contact between the data points.1 The word
“adjacent” may require no more of the subjects than their being “close to” or “lying near.”
See, e.g., The American Heritage Dictionary, Second College Edition at 79 (1982 ed.).
Appellants have not shown error in the examiner’s findings with respect to what
Tabei teaches beyond the express embodiments described.2 Aside from that, however,
we note that instant claim 1 sets forth a “plurality” of records -- or, at a minimum, two.
Tabei shows, in Figure 11, two displayed data points representing two records in the
lower left rectangle of the (topmost) graph (i.e., 0 to 25 “profit” and 0 to 250 “sales”).
The two data points are adjacent, at least in comparison with the data points that
Appeal No. 2005-0433
Application No. 09/982,481
3 We add that, even if “adjacent” were to require contact between data points, the claim 1 aspect
would be met when (only) two of the data points of Tabei were not separated by an “unassigned” data
point.
-5-
indicate the remainder of the records. Each of the two data points in Figure 11 is
assigned a record, consistent with what is actually required by instant claim 1.3
We thus are not persuaded that the rejection of representative claim 1 is in error.
We sustain the rejection of claims 1-30 under 35 U.S.C. § 102 as being anticipated by
Tabei.
We reverse, pro forma, the rejection of claims 31 and 32 under 35 U.S.C. § 103
over Tabei, since we are unable to ascertain the scope of the claims for any meaningful
comparison with the prior art. The reversal of claims 31 and 32 is for the reason that
rejections of claims over prior art should not be based on speculation and assumptions
as to the scope of the claims. See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962). We note, however, that we are not persuaded by the position set out in
the Answer that Tabei suggests a variable width column, or determines “a width of each
of the columns, the width of some columns being different than the width of other
columns,” based on the teachings relied upon in the reference.
New grounds of rejection
We enter the following new grounds of rejection against the claims in accordance
with 37 CFR § 41.50(b): Claims 31 and 32 are rejected under 35 U.S.C.
Appeal No. 2005-0433
Application No. 09/982,481
-6-
§ 112, second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention, and under
35 U.S.C. § 112, first paragraph, as appellants’ disclosure fails to provide written
description for the invention now claimed.
Base claim 31 recites “assigning records to every pixel in said columns....” The
language seems to require assigning a plurality of records to each pixel in the columns,
which does not appear consistent with formation of a “pixel bar chart.” The claim next
recites “applying a variable color to all of the pixels in all of the columns according to an
attribute of said records.” Applying a color to all of the pixels in all of the columns would
result in all pixels being of the same color. Whatever a “variable color” may be, it is
applied to all of the pixels in all of the columns -- as opposed to, for example, a unique
color applied to each pixel -- resulting in, again, all the pixels being of the same
“variable” color. We cannot ascertain the metes and bounds of the coverage of at least
base claim 31.
Further, appellants’ Brief does not point out support in the disclosure for the
language of present claims 31 and 32. Cf. 37 CFR § 1.192(c)(5) (2004) (“Summary of
Invention. A concise explanation of the invention defined in the claims involved in the
appeal, which shall refer to the specification by page and line number, and to the
drawing, if any, by reference characters.”).
To comply with the “written description” requirement of 35 U.S.C. § 112, first
paragraph, an applicant must convey with reasonable clarity to those skilled in the art
Appeal No. 2005-0433
Application No. 09/982,481
-7-
that, as of the filing date sought, he or she was in possession of the invention. The
invention is, for purposes of the “written description” inquiry, whatever is now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). For purposes of written description, one shows “possession” by descriptive
means such as words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41
USPQ2d 1961, 1966 (Fed. Cir. 1997). We do not find such descriptive means in the
disclosure for the inventions of claim 31 and claim 32.
CONCLUSION
The rejection of claims 1-30 under 35 U.S.C. § 102 is affirmed. The rejection of
claims 31 and 32 under 35 U.S.C. § 103 is reversed, pro forma.
New rejections of claims 31 and 32 under 35 U.S.C. § 112, first and second
paragraph are set forth herein.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 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
Appeal No. 2005-0433
Application No. 09/982,481
-8-
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 No. 2005-0433
Application No. 09/982,481
-9-
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART -- 37 CFR § 41.50(b)
LANCE LEONARD BARRY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2005-0433
Application No. 09/982,481
-10-
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400