Ex parte Heckel et al.

Board of Patent Appeals and Interferences

Feb 24, 1999

07504679 (B.P.A.I. Feb. 24, 1999)

In accordance with the examiner's footnote at the bottom of the first1
page of the Examiner's Answer dated April 28, 1995, the inventorship of this
reissue application has been changed.
Application for patent filed April 4, 1990, for Reissue of Patent No.2
4,736,308, granted April 5, 1988; based on Application 06/754,512, filed July
10, 1985, which, according to appellants, is a continuation-in-part of
Application 06/647,649, filed September 6, 1984, now abandoned.
1
Paper No. 65
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PAUL C. HECKEL
and CHARLES H. CLANTON1
______________
Appeal No. 96-1928
Application 07/504,6792
_______________
ON BRIEF
_______________
Before THOMAS, KRASS and MARTIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 96-1928
Application 07/504,679
2
Appellants have appealed to the Board from the examiner's
final rejection of what appears to us to be claims 1-3, 5-7,
9, 12, 13, 15, 16, 18, 20, 23, 24, 26, 27, 33, 43, 54, 55, 71,
72, 75, 76, 79-91, 95, 98-117, and 120-142, 144, 145 and 147-
158.
Representative claim 95 is reproduced below:
95. In a process executed in a computer with a data
display screen and strings of alphanumeric characters stored
in one or more files, a method for displaying the strings in
an area of the data display screen allocated to the process
for display, said allocated area containing a first display
area comprised of a plurality of lines, each said string
having a plurality of fields of alphanumeric characters,
comprising the steps of:
(a) fetching first and second strings from said one or
more files;
(b) simultaneously displaying on the data display screen
portions of a plurality of preselected fields of the first
string at a specified position on said lines so that portions
of a plurality of fields are displayed on one line of the
first display area, further wherein only one instance of each
portion of a field is displayed within said first display area
of the allocated area and portions of preselected fields of
the second string within a second display area within the
allocated area wherein at least one character is removed from
one of said fields of the first string to generate one of said
portions of the first string and,
(c) in response to input from an input device displaying
within said allocated display area all of the characters of
said field from which a character was removed while
maintaining the display of at least some portions of said
Appeal No. 96-1928
Application 07/504,679
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first and second string displayed in the same positions as
displayed in step (b).

The following references are relied on by the examiner:
Heckel 4,486,857 Dec. 4,
1984
(filed Oct. 6, 1982)
Vincent et al. (Vincent) 4,645,238 Feb.
24, 1987
(filed Apr. 21, 1983)
LisaList Manual, Apple Computer, Inc. (Copyright
1983)
In accordance with the supplemental examiner's answer,
Paper No. 53, dated March 6, 1996, and the additional
communication from the examiner identified as Paper No. 64,
dated June 16, 1998, any and all outstanding rejections under
35 U.S.C. § 251 of the claims on appeal have been withdrawn by
the examiner.
Of those claims listed earlier in this opinion believed
by us to be the claims on appeal, the examiner has set forth
rejections of each of them under 35 U.S.C. § 103. The
examiner considers the following claims obvious in light of
the teachings of Vincent and Heckel: claims 1, 2, 6, 12, 15,
16, 18, 20, 23, 24, 27, 75, 81, 95, 98, 99, 102, 103, 104,
105, 111-113, 120, 121, 141 and 142. To reject the following
Appeal No. 96-1928
Application 07/504,679
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claims the examiner adds to this basic combination of
references LisaList:
claims 3, 5, 7, 9, 13, 26, 33, 43, 54, 55, 71, 72, 76, 79, 80,
82, 83, 85-91, 100, 101, 106-110, 114-117, 123-127, 128-140,
144, 145, 147-158. These rejections are set forth at page 3
of the initial examiner's answer dated April 28, 1995. As to
the second rejection, the examiner does not explicitly include
here a rejection of claim 122, although it is expressed at
page 7 of answer. The bottom of page 10 of this answer
reveals the examiner's intent to reject claims 79-91 under 35
U.S.C. § 103 including claims 84, 87, 88, 89 and 90, although
it is not clear under which rejection of the stated rejections
the examiner intends to reject these latter claims. In any
event, based upon our decision, this question is moot.
Rather than repeat the positions of the appellants and
the examiner, reference is made to the briefs and the answers
for the respective details thereof.
OPINION
Generally for the reasons expressed by appellants in the
initial portions of the brief and reply brief dealing with the
Appeal No. 96-1928
Application 07/504,679
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combinability issue of the two major references, Vincent and
Heckel, and excluding the reasoning advanced by appellants
that Vincent teaches away from the combination, we reverse the
examiner's initial stated rejection under 35 U.S.C. § 103 and,
as such, the second stated rejection under 35 U.S.C. § 103
involving LisaList to reject additional claims.
From our detailed study of Vincent and Heckel, we find
ourselves in general agreement with these assertions made by
appellants in the brief and reply brief respectively:
The Examiner's prima facie case is defective.
The Examiner asserts without basis that Vincent not
being able to selectively expand fields is a
limitation of Vincent. Vincent makes no suggestion
that this is a limitation and the Examiner provides
no basis to suggest it is. As Vincent has the
capability with its Day Screen to expand and display
in full all fields simultaneously, there is no there
is no [sic] motivation to selectively expand fields.
When considered as a whole, Vincent teaches the non-
selectively expanding the display field.
Specifically, it teaches the Day Screen (Fig. 2)
which simultaneously displays all of the fields in
full including those compressed down to a single
character and the NOTE field which may only be
“partially” shown.
Thus Vincent's solution to the problem of showing
compressed fields is to display all fields at once.
Vincent's solution is a different solution to a
different field expansions problem from that taught
in the `857 patent. The Examiner asserts without
any basis that Vincent has a limitation which which
Appeal No. 96-1928
Application 07/504,679
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[sic] requires selectively expanding the fields.
The Examiner never says why selective expansion is
desirable or what problem it solves that is not
already solved by Vincent's Day Screen display of
all fields fully expanded. Vincent's solution
appears to work fine and be complete. [Principal
Brief on appeal, February 15, 1995, pages 13-14].
In fact, the combination does make the system
more complex, but does not solve any problem that
Vincent recognized. The problem that Vincent states
he is solving is to automatically generate the
month-at-a-glance screens from the day screen
without the user having to enter the information
twice. Appellant cannot find anywhere that Vincent
suggests the issue addressed by Heckel `857 -- the
ability to display a single record containing more
characters than can be displayed on a display screen
at one time -- is a problem. It appears that the
Examiner with hindsight has manufactured a problem
that does occur in Vincent to justify the
combination. Indeed, Vincent states this as a
virtue of their invention is that “The advantages of
these advances are that screen size does not have to
be increased” (Vincent: col. 2, lines 32-33).
Lacking a recognized problem, there is no incentive
to combine. [Reply Brief, July 3, 1995, pages
3 and 4].
Taking representative claim 95 as an example, the
examiner, at page 4 of the initial answer of April 28, 1995,
indicates that Vincent fails to teach certain aspects of this
claim. The examiner makes reference to column 1, lines 47-67
of Vincent allegedly isolating various deficiencies in this
Appeal No. 96-1928
Application 07/504,679
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reference. The examiner's view as to this column 1 portion of
Vincent, as expressed at page 12 of this answer as well as
pages 2 and 3 of the supplemental answer dated November 30,
1995, asserts that Vincent explicitly states that switching
the month screen to the day screen to see the missing
information is not efficient. The examiner's reasoning in
both answers appears to assert that Vincent fails to
completely solve the problem by failing to address the
situation when the length of the note information, apparently
in the month display screen in Figure 1 of Vincent, is longer
than the note display field as a basis for asserting that
Heckel's teachings would have remedied this deficiency.
We do not agree with this reasoning process of the
examiner.
Indeed, column 1 background assessment identified by the
examiner in Vincent is Vincent's assessment of the prior art
to him, whereupon the disclosure in Vincent's patent appears
to us to be directed at curing any known problems to him. We
do not regard Vincent's discussion in the written description
portion of his patent as indicating that any deficiencies
remain or any unsolved problems remain among those he has
Appeal No. 96-1928
Application 07/504,679
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chosen to provide solutions to his own assessment of the prior
art to him. The examiner's argumentative approach appears to
be a cloak for prohibited hindsight analysis. We are in basic
agreement therefore with appellants' earlier noted assessment
of Vincent's teachings and showings alone. We reach a similar
conclusion with respect to the examiner's statement of the
rejection of the other independent claims in other pages of
the principal examiner's answer.
The principal focus of Vincent is calendaring, not
generic data structures, as in Heckel, even though Vincent
does teach data structures for annotating daily and monthly
calendaring of events. Even if Vincent were found by the
artisan to have been deficient in some way or would have found
it desirable to modify Vincent in some way, a more simplified
and direct approach would have been more obvious to us than
the hindsight analysis proffered by the examiner to rely upon
Heckel's teachings and suggestions. If, as asserted by the
examiner, Vincent fails to completely solve problems stated by
him with respect to the prior art to him by failing to address
the situation when the length of the note on the month
calendar is longer than the note display field, and even if
Appeal No. 96-1928
Application 07/504,679
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such were independently realized by the artisan with respect
to Vincent's own teachings and suggestions, we find that it
would have been obvious to the artisan to have utilized
smaller print or smaller size day boxes in the month calendar
or abbreviations for the note data in an effort to accommodate
the note field at the bottom of the calendaring page and
expand it to include more data or to lengthen fields or to
permit more notes to be derived from the Figure 2 showing of
the individual day page. Vincent already teaches, for
example, the use of abbreviations and key symbols in deriving
each day box in the monthly calendar in Figure 1 from the
individual day display in Figure 2. Following these ideas in
our view is more consistent with approaches users of calendars
normally have undertaken generally, particularly those types
of calendars utilized by people for daily and monthly
scheduling of events to permit an expanded note field.
We characterize in another manner the examiner's approach
as being that, from the examiner's view the artisan could have
modified Vincent in light of Heckel's teachings to provide
expanded calendaring of events. This “could have modified”
Appeal No. 96-1928
Application 07/504,679
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approach is not sufficient within 35 U.S.C. § 103. However,
we
remain unconvinced from the collective teachings and
suggestions of Heckel and Vincent as well as the examiner's
reasoning that
it would have been obvious within 35 U.S.C. § 103 to have so
modified Vincent's teachings and suggestions in light of
Heckel.
We do not agree with the examiner's basic view that the
artisan would have reasonably, prospectively viewed the
combination of teachings and suggestions of Vincent and Heckel
in such a manner as to render obvious the subject matter of
the claims stated in the initial rejection on appeal. In a
similar manner, we remain unconvinced of the obviousness of
combining the additional teachings of LisaList to these two
references to reject the claims identified by the examiner in
the second rejection under 35 U.S.C. § 103.
Appeal No. 96-1928
Application 07/504,679
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In view of the foregoing, we have reversed both
rejections under 35 U.S.C. § 103 of all claims on appeal.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN C. MARTIN )
Administrative Patent Judge )

Appeal No. 96-1928
Application 07/504,679
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JDT/cam
Appeal No. 96-1928
Application 07/504,679
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Steven W. Lundberg
P. O. Box 2938
Minneapolis, MN 55402