Ex Parte Kumar et al

Patent Trial and Appeal Board

May 27, 2016

11592786 (P.T.A.B. May. 27, 2016)

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.
11/592,786 11/03/2006 Amar Kumar 247-050US 2249
131475 7590 05/27/2016
Dilworth IP - SAP
2 Corporate Drive, Suite 206
Trumbull, CT 06611
EXAMINER
SCHALLHORN, TYLER J
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
05/27/2016 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 AMAR KUMAR and WOLFGANG E. WALTER
____________________

Appeal 2014-008976
Application 11/592,786
Technology Center 2100
____________________

Before THU A. DANG, CARL L. SILVERMAN, and NORMAN H.
BEAMER, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–10, and 12–19. Claims 2 and 11 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to “capturing user
interface information to recreate a state of the user interface at a later time or
different place” (Spec. ¶ 1).
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B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method comprising:

converting a screen layout into an Extensible Markup
Language ("XML") string wherein converting includes
identifying an internal state of a plurality of software functions
each function of the plurality associated with a portion of the
screen layout at least a plural subset of the software functions
having associated therewith each at least one user input field,
each user input field residing at a defined location within the
screen layout and incorporating the internal state for each
software function into the XML string and wherein the internal
state includes the defined location and current content of the user
input fields associated with the plurality of software functions;
and

recreating the screen layout from the XML string at a
different place or time, at least in part, by supplying the internal
state information from the XML string to each software function
to return the software functions to the internal state from the
XML string and repopulating the user input fields residing at the
defined locations from the software function based on that
internal state.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dando US 2003/0058286 A1 Mar. 27, 2003
Tafoya US 6,829,607 B1 Dec. 7, 2004
Di Franco US 2005/0125715 A1 June 9, 2005
Cutler US 2005/0188329 A1 Aug. 25, 2005

David Powers, Foundation PHP for Dreamweaver 8, 17–21
(Chris Mills ed., Dec. 19, 2005) (“Powers”).

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Document Object Model Core, 1–51 (Arnaud Le Hors et al.
eds., Nov. 13, 2000) (“Le Hors”).

Claims 1, 3–8, 10, and 14–18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the teachings of Dando, Powers, and Di Franco.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Dando, Powers, Di Franco, and Le Hors.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Dando and Di Franco.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dando, Di Franco, and Tafoya.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dando, Di Franco, and Cutler.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dando, Di Franco, Powers, and Official Notice.

II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Dando, Powers, and Di Franco teaches or would have
suggested “converting” a screen layout into an XML string, which includes
“identifying an internal state of a plurality of software functions each
function of the plurality associated with a portion of the screen layout at
least a plural subset of the software functions having associated therewith
each at least one user input field,” each user input field “residing at a defined
location within the screen layout and incorporating the internal state for each
software function into the XML string,” wherein “the internal state includes
the defined location and current content of the user input fields associated
with the plurality of software functions” (claim 1) (emphases added).
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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Di Franco
1. Di Franco discloses a method “for the storage of display values
from one or more fields of a form of a graphical user interface (GUI)
application running on a computing device” (Abstr.). A user “can fill in a
form with data the user selects and then store that selected data in a data
storage file and then when the user requires, that selected data can be used to
repopulate a form opened by the user at any time” (¶ 15). The invention
includes “software code which in response to a load command by a user in
relation to an open form and a designated or default data storage file,
populates the fields of the form with the data stored in the file” (¶ 11).
Further, “a correlation for each field of the form may be stored in the data
storage file as name/value pairs, where for each field of the form the name is
an element identifier in the GUI application and the value is the display
value for that field” (¶ 16). The user “has the ability to save display values
from any form at any point in time” (¶ 85).

Dando
2. Dando discloses a “configurable user-interface component
management system . . . where frame containers contain a number of child
components and user-interface components” (Abstr.). “A view component
displays the information of a particular application and provides an area
where a user enters data and executes action on that data” (¶ 60).
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IV. ANALYSIS
Appellants contend that in Di Franco, “there is no association between
location on the screen and the content of a field” (App. Br. 10). According
to Appellants, while Di Franco “discloses storing values from input fields in
an association with an identifier for those fields . . . this is a distinct file
independent of the screen layout and independent of any location where the
fields may occur on the screen” (id.). More specifically, Appellants contend
“it is seminal to the function and purpose of Di Franco that the data note
[sic, not] be associated with a field having a known location because Di
Franco seeks to fill the field of any form regardless of their position on the
screen” (id.). Further, in Di Franco,
if the data is tied to the particular location of the fields [it] would
be unsuitable for population of either different versions of forms
or forms where the locations of the fields has changed . . . [t]hus,
the manner in which the Office attempts to combine the references
is inappropriate and could only have been motivated by
impermissible hindsight
(App. Br. 10–11).
Appellants further argue that “Di Franco saves the content of the form
input fields and associates it with a tag so that when that input field is
identified on a subsequent screen the data is copies [sic, copied] into the
input field,” and thus does not require, teach or suggest “a return of the
internal state of the software function with which an input field is associated
as a basis for repopulation of the field.” Rather, Di Franco “merely teaches
copying of data from one saved file to another” (App. Br. 11–12). Finally,
Appellants argue that “Di Franco is expressly intended to address the GUI
forms, which may be provided over the Internet from a third party, in other
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words, the user or populator has no control,” wherein, “to be useful, the data
must be separate from the screen layout” (App. Br. 12).
We have considered all of Appellants’ arguments and evidence
presented. However, we disagree with Appellants’ contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner’s findings,
and find no error with the Examiner’s conclusion that the claims would have
been obvious over the combined teachings.
We first note that Appellants do not specifically argue that cited
references lack the claimed features. Instead, Appellants’ arguments are
directed to that the proposed combination of Di Franco with Dando and
Powers would render Di Franco unsatisfactory for its intended purpose
and/or would require impermissible hindsight (App. Br. 10–12).
Di Franco discloses that a user “can fill in a form with data the user
selects and then store that selected data in a data storage file and then when
the user requires, that selected data can be used to repopulate a form . . . at
any time” (FF 1). No part of this disclosure requires that the form be
different. Specifically, no portion of Di Franco states that including
additional information, whether field location or any other data, in the data
storage file, would prevent the repopulation of a form. Further, Appellants
have not cited to any portion of Di Franco that suggests that including the
location of a field in a saved file including input field values would render
the Di Franco disclosure unsuitable for its intended purpose.
Mere attorney arguments that are unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843, slip op. at *7–8 (BPAI
Aug. 10, 2009) (informative).
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Although Appellants contend “it is seminal to the function and
purpose of Di Franco that the data note [sic, not] be associated with a field
having a known location because Di Franco seeks to fill the field of any
form regardless of their position on the screen” (App. Br. 10), Appellants
appear to view the combination in a different perspective than that of the
Examiner. The issue here is not whether the skilled artisan would have
bodily incorporated the entire system of Di Franco into the entire system of
Dando, to provide exclusively user input field data tracking. Rather, the
issue is whether the ordinarily skilled artisan, upon reading Dando and Di
Franco, would have found it obvious to provide for the tracking of user input
field data between times a user accesses the field, as shown in Di Franco, to
the method and system providing for the storage of data related to GUI
component location, as disclosed in Dando.
As the Examiner points out, the rejection “is based on a combination
of Di Franco with Powers and Dando, both of which teach aspects of saving
the screen layout of a user interface” (Ans. 2). Further, “both Di Franco and
Dando teach that they record the identifiers of the user interface
components” (Ans. 2). We, therefore, agree with the Examiner that “Di
Franco does not require recording the locations of the components, nor does
it preclude such” (Ans. 2–3), i.e., that Di Franco does not criticize, discredit,
or otherwise discourage saving location data. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).
The Supreme Court guides that the conclusion of obviousness can be
based on the background knowledge possessed by a person having ordinary
skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Here, Appellants have presented no evidence that providing a means of
saving both location and user input field data related to each GUI element
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would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Thus, we conclude that it would have been well within the skill of one
skilled in the art to combine Di Franco’s teachings with that of Dando in the
same field of endeavor. We agree with the Examiner that
[a]lthough the invention of Di Franco does not require recording
the locations of the components, nor does it preclude such. The
fact that the proposed combination would restore the location of
the fields on the screen would not hinder the operation of
matching the field identifiers with the saved input data.
(Ans. 2–3). Such a substitution would have been well within the skill of the
art. See KSR, 550 U.S. at 417. That is, the skilled artisan is “a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. We agree
with the Examiner that Appellants’ invention is simply a modification of
familiar prior art teachings (as taught or suggested by the cited references)
that would have realized a predictable result (id.). Minor differences
between the prior art and a claimed device may be a matter of design choice
absent evidence to the contrary (see In re Rice, 341 F.2d 309, 314 (CCPA
1965)).
We are also not persuaded that Di Franco’s disclosed embodiment
related to “GUI forms, which may be provided over the Internet from a third
party” necessarily results in “the user or [the] populator [having] no control”
(App. Br. 12). We agree with the Examiner, citing to paragraph 92, that Di
Franco “teaches that the user is integrating the functionality into ‘their’ [the
user’s] GUI application window, which suggests a fair degree of control
over the forms” (Ans. 3). We find this response persuasive, and further note
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that as Di Franco states that the user “has the ability to save display values
from any form at any point in time” (FF 1, emphasis added).
Finally, we must give the claim its broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). Although Appellants argue that Di Franco does not
require, teach or suggest “a return of the internal state of the software
function with which an input field is associated” (App. Br. 11–12), in claim
1, the term “internal state for each software function” is specifically defined
by the claim language to be (1) the defined location and (2) the current
content of the user input fields. A review of the Specification finds no
definition of the “internal state for each software function” more specific
than that defined in the claims. We do not find the Examiner’s response that
the broadest reasonable interpretation of a software function includes “the
functions (‘components’) behind the various user interface[s], as taught by
the cited references” is misplaced (Ans. 3). Support for this position is
found in Dando, which states that a “view component displays the
information of a particular application and provides an area where a user
enters data and executes action on that data” (FF 2, emphasis added).
Executing action on data entered into an area of an application suggests that
a software function acts on that data (id.).
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 1 over the combination of Dando, Powers,
and Di Franco.
As for claim 4, Appellants’ argument that “[Di Franco] uses a discrete
data file that is distinct from any screen layout or the form that is to be
populated by the values saved therein” (App. Br. 12–13). Further, with
respect to claim 14, Appellants argue that in Di Franco, “it is essential that
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that data be separate and merely tagged with the appropriate fields, so that
they can be appropriately populated regardless of their location . . . .” (App.
Br. 13–14). These arguments largely reflect the arguments presented with
respect to claim 1, and we incorporate our analysis herein, finding no error
with the Examiner’s rejection of claims 4 and 14 over the combination of
Dando, Powers, and Di Franco.
As for claim 9, Appellants argue that Di Franco “neither teaches nor
suggests the creation of the data structure containing these features nor does
it teach or suggest the processing of a static data structure to recreate the
display and the contents of user input fields . . . the Examiner has
misinterpreted ‘software object’ as it being a static data structure” (App. Br.
14–15). The Examiner responds, and we agree, that the “plain and ordinary
meaning of [‘static data structure’] is a data structure of fixed size . . . in
object oriented programming, data structures are implemented as objects”
(Ans. 4).
A review of the Specification discloses no specific definition of a
“static data structure” inconsistent with its plain meaning. More
specifically, at paragraphs 13 and 28, XML strings are noted as exemplary
static data structures, and that when “an embodiment of the invention
collects information about software application and user interface state, it
may place it in a ‘persistable’ or ‘static’ form. In other words, the
information is formatted so that it may conveniently be stored . . .” (id. at
28). Accordingly, we find no error in the Examiner’s broad but reasonable
interpretation that a static data structure may encompass a “container state
object” as disclosed by Dando (FF 2).
As for claim 12, Appellants argue that
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Tafoya relates to completion of partial information as a user
begins to type . . . predicts what the remainder will be from data
captured from a plurality of sources, not limited to the historical
entry in the particular field. Accordingly, a suggestion by the
Examiner that Tafoya in any way teaches or suggests an explicit
history of a particular field is factually incorrect.
App. Br. 15, emphasis added. The Examiner responds by noting that
“Tafoya teaches suggesting previous form entries . . . further suggestions
may come from other sources . . .” (Ans. 4–5).
Tafoya discloses a user input field for entering e-mail addresses used
to send e-mails, and includes a drop-down menu including previous entries
(Fig. 6; col. 2, ll. 17–25). The previous entries may be tracked from a user’s
previous entries when sending or receiving e-mail (id.). We find no error
with the Examiner’s reliance on Tafoya for disclosing and suggesting “states
of the software components include a history of entries of an input field of
the display screen” (claim 12, emphasis added). Accordingly, we find no
error in the Examiner’s rejection of claim 12 over the combination of Dando,
Di Franco, and Tafoya.
Appellants do not provide arguments for claims 3, 5–8, and 13–19,
and thus, we also affirm the rejection of claims 3, 5–8, 10, and 14–18 over
Dando, Powers. and Di Franco; of claim 5 over Dando, Powers, Di Franco,
and Le Hors; of claim 13 over Dando, Di Franco, and Cutler; and of claim
19 over Dando, Di Franco, Powers, and Official Notice.

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V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1, 3–10, and 12–19
under 35 U.S.C. § 103(a).1
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

1 In the event of further prosecution of this application, we leave it to the
Examiner to evaluate the claims for compliance with 35 U.S.C. § 101 in
view of the Supreme Court decision in Bilski v. Kappos, 130 S. Ct. 3218,
3221 (2010), Manual of Patent Examining Procedure (MPEP) revised §
2106.01 (9th Ed., Rev. 9, Nov. 2015), and post-Bilski application under §
101, including CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a
credit card transaction over the Internet to be nonstatutory as an abstract idea
capable of being performed in the human mind or by a human using a pen
and paper). In particular, we leave it to the Examiner to evaluate whether
claim 1’s “converting” and “recreating” of a screen layout constitutes an
abstract idea. We further refer to Content Extraction, where the Federal
Circuit has provided additional guidance on the issue of statutory subject
matter by holding claims to collecting data, recognizing certain data within
the collected data set, and storing that recognized data in memory, was not
tied to a specific structure or machine, and was thus an abstract idea and
ineligible under § 101. Content Extraction & Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014). Abstract ideas have been
identified by the courts by way of example, including fundamental economic
practices, certain methods of organizing human activities, an idea “of itself,”
and mathematical relationships/ formulas. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2355–56 (2014). Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02.