Ex Parte Le et al

Board of Patent Appeals and Interferences

Feb 7, 2005

09731650 (B.P.A.I. Feb. 7, 2005)

1
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not written for publication and is not binding precedent of the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 HANH KIM LE and GONGXIAN LIU

Appeal No. 2004-2271
Application 09/731,650

ON BRIEF

Before HAIRSTON, DIXON, and MACDONALD, Administrative Patent
Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-15.
Appeal No. 2004-2271
Application No. 09/731,650
2
Invention
Appellants’ invention relates to a graphical user interface
for data entry of a plurality of fields of information in a
computer system such as a web browser interface. A JAVA script
is employed to produce a form-like user interface in which a user
may enter a group of information in fields shown in a graphical
user interface window display area. The graphical user interface
is provided with a NEXT button and a PREVIOUS button, which allow
the user to indicate that he or she has more data to enter than
can be entered in the currently available view of the form in the
graphical user interface window display area. Appellants’
specification at page 11, lines 2-9.
Claim 11 is representative of the claimed invention and is
reproduced as follows:
11. A user display for entering a plurality of input data
on a networked client computer system, said computer system
having a processor suitable for controlling a user display and
receiving input from a user input device, a user selection
device, and a network interface, said user display comprising:
a quantity of rows of user input fields displayed in a
graphical user display area, said quantity of rows of input
fields being determined by a script received via said network
interface and being equal to a number of rows which can be
displayed in display area without causing partial rows or partial
fields to be displayed;
a “NEXT” button operable by said user selection device; and
Appeal No. 2004-2271
Application No. 09/731,650
1 We treat this rejection as solely a rejection under 35 U.S.C.
§ 102 as we are uncertain which claims the Examiner intends to
reject under 35 U.S.C. § 103. The Examiner has used form
paragraph 7.27 which is NOT intended to be commonly used as a
substitute for a rejection under 35 U.S.C. § 102. In other
words, whenever possible a single rejection should be made under
either 35 U.S.C. § 102 or 35 U.S.C. § 103(a) using appropriate
form paragraphs 7.15 to 7.19, 7.21 and 7.22. The MPEP permits an
alternative rejection to be made only in a few limited situations
where claim scope is at issue. That is not the situation before
us. Examples of circumstances where this paragraph may be
properly used are found in the Examiner Notes accompanying form
paragraph 7.27 in the MPEP.
3
an input storing function for storing user-input data in the
rows of user input fields into hidden fields responsive to
operation of said “NEXT” button such that a user may store an
unlimited quantity of user input data and continue indefinitely
to enter an unlimited amount of additional input data reusing the
same set of rows of fields until the user indicates all data has
been entered.
References
The references relied on by the Examiner are as follows:
Block et al. (Block) US 2003/0050976 A1 March 13, 2003
(Filed September 20, 2002 as a continuation of application
No. 09/546,000 filed on April 10, 2000)
Rejections At Issue
Claims 1-15 stand rejected under 35 U.S.C. § 102 as being
anticipated by or, in the alternative, under 35 U.S.C. § 103 as
being obvious over Block.1
Appeal No. 2004-2271
Application No. 09/731,650
2 Appellants filed an appeal brief on March 8, 2004. Appellants
filed a reply brief on July 16, 2004. The Examiner mailed an
Examiner’s Answer on May 19, 2004.
4
Throughout our opinion, we make references to the
Appellants’ briefs, and to the Examiner’s Answer for the
respective details thereof.2
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner’s rejections and the arguments of the
Appellants and the Examiner, for the reasons stated infra, we
affirm the Examiner’s rejection of claims 1, 3-6, 8-11, and 13-15
under 35 U.S.C. § 102; and we reverse the Examiner’s rejection of
claims 2, 7, and 12 under 35 U.S.C. § 102.
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants could
have made but chose not to make in the brief have not been
considered and are deemed to be waived by Appellants [see
37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing
37 CFR § 1.192(a)].
Appellants have indicated that for purposes of this appeal
the claims stand or fall together in five groupings:
Claims 1, 6, and 11 as Group I;
Claims 2, 7, and 12 as Group II;
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Application No. 09/731,650
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Claims 3, 8, and 13 as Group III;
Claims 4, 9, and 14 as Group IV; and
Claims 5, 10, and 15 as Group V.
Page 3 of the brief lists only four groupings. However,
Appellants argues the above five group of claims separately and
explains why the claims of each group are believed to be
separately patentable. See pages 4-9 of the brief and pages 1-7
of the reply brief. Appellants have fully met the requirements
of 37 CFR § 1.192 (c)(7) (July 1, 2002) as amended at 62 Fed.
Reg. 53169 (October 10, 1997), which was controlling at the time
of Appellants’ filing of the brief. 37 CFR § 1.192 (c)(7)
states:
Grouping of claims. For each ground of
rejection which appellant contests and which
applies to a group of two or more claims, the
Board shall select a single claim from the
group and shall decide the appeal as to the
ground of rejection on the basis of that
claim alone unless a statement is included
that the claims of the group do not stand or
fall together and, in the argument under
paragraph (c)(8) of this section, appellant
explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims
cover is not an argument as to why the claims
are separately patentable.
We will, thereby, consider Appellants’ claims as standing or
falling together in the five groups noted above, and we will
treat:
Appeal No. 2004-2271
Application No. 09/731,650
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Claim 11 as a representative claim of Group I;
Claim 12 as a representative claim of Group II;
Claim 13 as a representative claim of Group III;
Claim 14 as a representative claim of Group IV; and
Claim 15 as a representative claim of Group V.
If the brief fails to meet either requirement, the Board is free
to select a single claim from each group and to decide the appeal
of that rejection based solely on the selected representative
claim. In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465
(Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362, 1368, 69
USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. Whether the Rejection of Claims 1, 6, and 11 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us,
that the disclosure of Block does fully meet the invention as
recited in claims 1, 6, and 11. Accordingly, we affirm.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
Appeal No. 2004-2271
Application No. 09/731,650
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American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
With respect to independent claim 11, Appellants argue at
page 5 of the brief, “this paragraph [0090 of Block] teaches a
web site and pages within the website, and is silent as to any
sort of client-executable script, and specifically is silent as
to transmitting to the client device a script to produce a table
as we have claimed.” We find this argument unpersuasive.
Claim 11 recites that “said quantity of rows of input fields
being determined by a script received via said network
interface.” This section of claim 11 is a process limitation on
the product (a quantity of rows of input fields) being claimed.
It is well established that product-by-process claims are not
limited to the manipulations of the recited steps, only the
structure implied by the steps. “[E]ven though product-by-
process claims are limited by and defined by the process,
determination of patentability is based on the product itself.
The patentability of a product does not depend on its method of
production. If the product in the product-by-process claim is
the same as or obvious from a product of the prior art, the claim
is unpatentable even though the prior product was made by a
Appeal No. 2004-2271
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different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ
964, 966 (Fed. Cir. 1985) (citations omitted).
Appellants further argue at page 6 of the brief, “Examiner
has not stated in the Office Action where Block discloses such
dynamic table size.” We have reviewed claim 11 and find no such
limitation in the claim. We find that this argument is not
commensurate in scope with claim 11 and is unpersuasive for that
reason.
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 102.
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Application No. 09/731,650
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II. Whether the Rejection of Claims 2, 7, and 12 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us,
that the disclosure of Block does not fully meet the invention as
recited in claims 2, 7, and 12. Accordingly, we reverse.
With respect to dependent claim 12, Appellants argue at page
6 of the brief, “Block’s ‘back’ button, however, is not disclosed
as retrieving a data set previously stored.” We find this
argument persuasive. Claim 12 recites “an input recalling
function for recalling previously stored data in the user input
fields.” Block does not teach such a function.
Therefore, we will not sustain the Examiner’s rejection
under 35 U.S.C. § 102.
III. Whether the Rejection of Claims 3, 8, and 13 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us,
that the disclosure of Block does fully meet the invention as
recited in claims 3, 8, and 13. Accordingly, we affirm.
With respect to dependent claim 13, Appellants argue at page
8 of the brief, “[Block] does not state that selection of Block’s
Cancel button ‘clears all input data’, as the Examiner has
interpreted it, but only states that the user is returned to the
Appeal No. 2004-2271
Application No. 09/731,650
3 Dictionary of Computers, Information Processing &
Telecommunications, Second Edition, 1987, page 604. Copy provided
to Appellant.
10
previous page without any action being taken.” We find this
argument unpersuasive. A Cancel button is a stop button that
terminates or interrupts an operation.3 We find that clearing
all input data is inherent to termination of the data entry page
operation and return to the previous page.
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 102.
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Application No. 09/731,650
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IV. Whether the Rejection of Claims 4, 9, and 14 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us,
that the disclosure of Block does fully meet the invention as
recited in claims 4, 9, and 14. Accordingly, we affirm.
With respect to dependent claim 14, Appellants argue at page
8 of the brief, “[t]his passage [of Block] is silent as to the
data which is sent being a stored data set produced by a
downloaded, client-side script for producing tables of dynamic
size according to the screen display capabilities of the client
device.” We have reviewed claim 14 and find no such limitation
in the claim. We find that this argument is not commensurate in
scope with claim 14 and is unpersuasive for that reason.
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 102.
V. Whether the Rejection of Claims 5, 10, and 15 Under
35 U.S.C. § 102 is proper?
It is our view, after consideration of the record before us,
that the disclosure of Block does fully meet the invention as
recited in claims 5, 10, and 15. Accordingly, we affirm.
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Application No. 09/731,650
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With respect to dependent claim 15, Appellants argue at page
8 of the brief, “[t]his passage of the Block disclosure is silent
as to . . . the data set which was stored by a downloaded,
client-side script for producing tables of dynamic size according
to the screen display capabilities of the client device.” We
have reviewed claim 15 and find no such limitation in the claim.
We find that this argument is not commensurate in scope with
claim 15 and is unpersuasive for that reason.
Therefore, we will sustain the Examiner’s rejection under
35 U.S.C. § 102.
Other Issues
Should there be further prosecution of this or a continuing
application, we highly recommend that a search be made of DOS
based database data entry screen processes. To provide more
efficient operation the current invention dynamically parses data
entry into a sequence of windows each of which is fully shown on
the display. Due to hardware display limitations, older DOS
programs were forced to parse data entry into a sequence of
windows each of which was fully shown on the display. The open
question being, did these DOS programs dynamically parse the data
entry based on a script? We leave it to the Examiner to address
this issue.
Appeal No. 2004-2271
Application No. 09/731,650
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Conclusion
In view of the foregoing discussion, we have sustained the
rejection under 35 U.S.C. § 102 of claims 1, 3-6, 8-11, and
13-15; and we have not sustained the rejection under
35 U.S.C. § 102 of claims 2, 7, and 12.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a)(1)(iv).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
ARM:pgc
Appeal No. 2004-2271
Application No. 09/731,650
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