Ex Parte Lance

Patent Trial and Appeal Board

Jul 24, 2013

11164977 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN M. LANCE
__________

Appeal 2011-003276
Application 11/164,977
Technology Center 2100
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
computer-implemented method of validating a specified menu design. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as International
Business Machines Corporation (see App. Br. 4).
Appeal 2011-003276
Application 11/164,977

2
Statement of the Case
Background
The Specification teaches “a method of validating a menu design for a
computer program” (Spec. 3 ¶ 6). “The method can include identifying a
plurality of menu nodes, wherein each node is associated with at least one
attribute, comparing attributes of different menu nodes according to a use
case, and indicating whether a conflict exists between attributes of different
menu nodes for the use case” (Spec. 3 ¶ 6).
The Claims
Claims 1-14 and 21-26 are on appeal. Claim 1 is representative and
reads as follows:
1. A computer-implemented method of validating a
specified menu design for a computer program comprising:
storing a plurality of menu nodes for a menu design
for the computer program, wherein each menu node is
associated with at least one attribute and wherein the
plurality of menu nodes is arranged with a defined
hierarchical organization;
selecting a use case for the computer program,
wherein the use case specifies an operational state of the
computer program at a selected time during runtime and
which of the plurality of menu nodes are enabled;
determining which of the plurality of menu nodes are
enabled according to the use case;
comparing attributes of different ones of the menu
nodes that are enabled;
determining whether a conflict exists among the
attributes of the menu nodes that are enabled; and
displaying whether a conflict exists.

Appeal 2011-003276
Application 11/164,977

3
The issue
The Examiner rejected claims 1-14 and 21-26 under 35 U.S.C. §
103(a) as obvious over Jazdzewski2 and admitted prior art (Ans. 3-7).
The Examiner finds that
Jazdzewski discloses storing Identifying [sic] a
plurality of menu nodes for a menu design for the computer
program, wherein each node is associated with at least one
attribute and wherein the plurality of menu nodes is arranged
with a defined hierarchical organization; selecting a use case
for the computer program, wherein the use case specifies an
operational state of the computer program at a selected time
during runtime and which of the plurality of menu nodes are
enabled; determining which of the plurality of menu nodes
are enabled according to the use case (abstract, col., 2 lines,
17-23 and Figure 9); comparing attributes of different ones
of the menu nodes that are enabled according to a use case
specifying which of the plurality of menu nodes is enabled
(col., 25 lines, 1-6); and determining whether a conflict
exists among the attributes of the menu nodes that are
enabled; and displaying indicating whether a conflict exists
between (abstract, col. 16, lines, 55- 60).

(Ans. 3-4). The Examiner finds that “Jazdzewski does not explicitly
disclose a method of validating a menu design for a computer program”
(Ans. 4). The Examiner finds that “AAPA from similar field of endeavor
discloses a method of validating a menu design for a computer program
(Paragraph [2] - paragraph [4])” (Ans. 4).
The Examiner finds it obvious “to have modified Jazdzewski’s
teaching at the time of the invention was made with the teaching of AAPA.

2 Jazdzewski, C., US 6,002,867, issued Dec. 14, 1999.
Appeal 2011-003276
Application 11/164,977

4
The motivation to combine provides a technique or tool capable of
presenting menu state information” (Ans. 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Jazdzewski and Applicant Admitted
prior art render obvious the claimed “method of validating a specified menu
design for a computer program”?
Findings of Fact
1. Jazdzewski teaches that “the present invention relates to a
visual development system and methods for improved form-based
development of software programs” (Jazdzewski, col. 1, ll. 17-19).
2. Figure 9 of Jazdzewski is reproduced below:

“FIG. 9 is a block diagram illustrating internal operation of
visual form inheritance” (Jazdzewski, col. 4, ll. 32-33).
Appeal 2011-003276
Application 11/164,977

5
3. Jazdzewski teaches that properties of the “objects on the forms
can be modified using the property manager or inspector. In conjunction
with this operation, the user attaches or associates program code with
particular objects on screen (e.g., button object); the editor is used to edit
program code which has been attached to particular objects” (Jazdzewski,
col. 2, ll. 17-23).
4. Jazdzewski teaches that:
Before a component can actually be created, the update
manager confirms that the component being created has a
unique name. The name is to be unique not only in the
component but also all the descendants of that component.
Therefore, the NameExists function confirms that a
particular name does not lead to naming conflicts. In a
corresponding manner, when a component is deleted, the
Notification procedure is invoked for informing the update
manager (so that pointers which dereference through the
deleted component are no longer employed).

(Jazdzewski, col. 16, ll. 51-60).
5. The Specification teaches “menus are designed in a logical
fashion and in a way that allows a user to easily find the various functions
available within the program. Typically, a menu includes a top level set of
menu items, or nodes, with child menu nodes organized beneath each
respective top level menu node” (Spec. 1 ¶ 2).
6. The Specification teaches that “the menu specification specifies
the state of the menu for corresponding operational states of the program.
The operational state of the program, also referred to as a use case in some
instances, indicates the context of the program at a given point in time”
(Spec. 2 ¶ 3).
Appeal 2011-003276
Application 11/164,977

6
7. The Specification teaches that “quality engineers then utilize
the menu specification to validate the menu implementation within the
program since it is the menu specification that specifies the state of the menu
for different operational states, as reflected by different use cases, of the
program” (Spec. 2 ¶ 4).
Principles of Law
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
The “Description of the Related Art” section of the Specification
discusses the use of menu nodes in software programs (FF 5). The
Specification also discusses the concept of “use cases” (FF 6) and teaches
the desire to validate menu implementations relative to different “use cases”
(FF 7). The Examiner relies upon Jazdzewski to teach storing “menu nodes
for a menu design” (Ans. 3), “selecting a use case for the computer
program” (Ans. 3), “comparing attributes of different ones of the menu
nodes” (Ans. 4) and “determining whether a conflict exists among the
attributes of the menu nodes” (Ans. 4).
Appellant contends that “[n]otwithstanding that the cited portions of
Jazdzewski fail to make reference to menu nodes or any corresponding
Appeal 2011-003276
Application 11/164,977

7
structures, Jazdzewski also fails to disclose or suggest a use case which
indicates structures that are enabled, or of determining which of the plurality
of menu nodes are enabled according to the use case” (App. Br. 15).
We find that Appellant has the better position. The Examiner relies
upon the abstract, column 2, and figure 9 for menu nodes (see Ans. 4).
However, the Examiner does not identify where Jazdzewski teaches or
suggests menu nodes where a “top level menu node refers to the menu titles
or objects that typically are available across a task bar of a computer
program and when selected, cause a drop down menu to extend therefrom”
(Spec. 5 ¶ 16). Instead, Jazdzewski teaches objects and forms which may be
modified or edited (FF 1). We therefore agree with Appellant that
“Jazdzewski’s form is not synonymous with the term ‘menu node’ as recited
in Appellant’s claims” (App. Br. 12).
In particular, while the Examiner finds a teaching in Jazdzewski
regarding naming conflicts (FF 4), the Examiner does not find a suggestion
in Jazdzewski to perform the connected series of steps in association with
menu modes. That is, the Examiner finds no teaching or suggestion in
Jazdzewski of “selecting a use case . . . determining which of the plurality of
menu nodes are enabled according to the use case . . . comparing attributes .
. . of the menu nodes that are enabled . . . determining whether a conflict
exists among the attributes of the menu nodes” as required by claim 1.
Neither does Examiner explain how the “admitted prior art” teaches or
suggests comparing enabled attributes based on specific use cases to
determine a conflict in the same context as the invention.

Appeal 2011-003276
Application 11/164,977

8
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Jazdzewski and Applicant Admitted prior art render obvious the claimed
“method of validating a specified menu design for a computer program”.
SUMMARY
In summary, we reverse the rejection of claims 1-14 and 21-26 under
35 U.S.C. § 103(a) as obvious over Jazdzewski and admitted prior art.

REVERSED

lp