Ex Parte Lection et al

Board of Patent Appeals and Interferences

Apr 27, 2009

09862271 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID B. LECTION and MARCIA L. PETERS
____________________

Appeal 2008-3100
Application 09/862,2711
Technology Center 2100
____________________

Decided:2 April 27, 2009
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on May 22, 2001. The real party in interest is International Business
Machines Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 49.3 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appellants’ Invention
Appellants invented a method and system for managing and
displaying data sets in a graphical user interface (GUI) functioning as a
graphical image having a cylindrical configuration. (Spec. 1: 2-5.) As
depicted in Figure 2B, the GUI (50) includes a plurality of subcylinders (20),
each storing a distinct set of data (A, B, C) pertaining to a user such that the
GUI displays only one of the related data sets at a time. (Id. at 10:20-22 and
id. at 11:1-21.) Each of the data sets includes textual data that can be edited
in the GUI. (Id. at 15:18-22 and id. at 16:1-19.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A graphical user interface (GUI) for managing data sets, wherein
the GUI includes a cylindrical object which is associated with storing a
plurality of related data sets and displays to a user one of the related data sets
at a time, wherein the cylindrical object is a computer-generated graphical
image having a cylindrical configuration, and wherein each of said related
data sets include editable textual data, editable in the GUI display.

3 See note 6 infra.
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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Moller WO 99/30223 Jun. 17, 1999
Easty US 6,448,987 B1 Sep. 10, 2002
(filed Apr. 03, 1998)
Miller US 6,597,358 B2 Jul. 22, 2003
(filed Aug. 26, 1998)
Gallo US 6,636,246 B1 Oct. 21, 2003
(filed Mar. 17, 2000)

Rejections on Appeal
The Examiner rejects the claims4 on appeal as follows:
Claims 1-9, 12-13, 16-21, 23, 26-29, 31-33, 36, 38-41, and 43-48 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Gallo in view
of Moller.
Claims 10, 22, and 42 are rejected under 35 U.S.C § 103(a) in view of
Gallo in view of Moller and further in view of Easty.
Claims 14, 15, 24, 34, and 35 are rejected under 35 U.S.C. § 103(a) in
view of Gallo in view of Moller.
Claims 11, 25, 30, and 37 are rejected under 35 U.S.C. § 103(a) in
view of Gallo in view of Moller and further in view of Miller.

4 See id.
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Appellants’ Contentions
Appellants argue that the combination of Gallo and Moller does not
teach related data sets including textual data that are editable within the GUI,
as recited in independent claim 1. (App. Br. 7-8.5) In particular, Appellants
argue that while Gallo discloses a cylindrical configuration for storing in
each subcylinder a distinct icon linked to a webpage, the disclosed icons are
not related data sets. (Id. 7.) Further, Appellants argue that Moller is
deficient in a similar way. (Id.) Appellants also argue that while Moller
may disclose documenting a medical patient’s chart, such documentation
occurs outside of the GUI, and not in the GUI itself, as recited in
independent claim 1. (Id. 8.)

Examiner’s Findings/Conclusions
The Examiner finds that Gallo’s disclosure of a GUI having a
cylindrical configuration wherein each pane displays a webpage, which is
linked to other webpages associated with other panes in the GUI teaches the
related data sets. (Ans. 12.) Further, the Examiner finds that Moller’s
disclosure of a cylindrical structure having data sets pertaining to a specific
category and sorted chronologically teaches the related data sets. (Id.)
Additionally, the Examiner finds that Moller’s disclosure of hospital records
as one of its editable data would have suggested editable data sets in the GUI
to the ordinary skilled artisan (Id.). The Examiner therefore concludes that

5 See Appeal Brief filed April 20, 2007.
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the combination of Gallo and Moller renders independent claim 1
unpatentable. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that the
combination of Gallo and Moller renders independent claim 1 unpatentable?
In particular, the issue turns on whether the proffered combination teaches
related data sets including textual data that are editable in a GUI display.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Gallo
1a. As depicted in Figure 1, Gallo discloses a three dimensional
interface (10) having a plurality of portals (16), each having a sensory cue
(18) showing a webpage or a text document associated therewith. (Col. 6, ll.
15-40.)
1b. Gallo discloses that the sensory cue for each subsequent
webpage is accessible or linked to the sensory cue of the first webpage.
(Col. 5, ll. 11-18.)

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Moller
2a. As shown in Figure 1, Moller discloses a cylindrical graphic
interface (10) having a plurality of points (24, 25), each linked to
information pertaining to a category (e.g., literature, medical record)
information and sorted in chronological order. (P. 4, l. 23- p. 5, l. 21.)
2b. Moller also discloses that the points can also designate related
files in a database or Internet addresses. Thus, by clicking on one of the
points, a user can be linked to a related document for editing. (P. 7, ll. 4-11.)

Easty
3a. As shown in Figure 1b, Easty discloses a GUI having
individually selectable icons arranged along two concentric rings identifying
menu choices. The outer ring displays categories of available digital
contents while the inner ring displays subcategories of contents that can be
associated with each category. (Abstract.)
3b. Easty discloses that settings in either ring can be rotated to
designate the selection of a new category and/or subcategory. (Col. 5, ll. 17-
36.)

IV. PRINCIPLES OF LAW
Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be
patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
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skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 414).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account not only the specific teachings of
the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (citation omitted).

V. ANALYSIS
Claims 1-9, 12, 13, 16-21, 23, 26-29, 31-33, 36, 38-41, and 43-48
Independent claim 1 recites in relevant part related data sets including
textual data that are editable in a GUI display.
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As set forth in the Findings of Fact section, Gallo discloses a spherical
GUI having a plurality of portals, representing a plurality of webpages
linked with one another. (FF. 1a, 1b). Further, Moller discloses a
cylindrical GUI having displayed thereon a plurality of points representing
literary events or medical data of a patient sorted chronologically. (FF. 2a)
Moller also discloses that upon accessing the medical data linked to a
particular point in the GUI, a user can edit the accessed document. (FF. 2b.)
We agree with the Examiner that Gallo’s webpages, by dint of being linked
with one another, are related or tied together. We further agree with the
Examiner that Moller’s disclosure of points with linked information on the
GUI fairly and reasonably teaches related data sets since the linked
information displayed thereon pertain to a single category (e.g., medical data
or literature.) We also agree with the Examiner that Moller’s disclosure of a
user editing the linked documents in a category teaches related data sets that
are editable. It follows that Appellants have not shown that the Examiner
erred in concluding that the proffered combination renders independent
claim 1 unpatentable.
Appellants did not provide separate arguments with respect to the
rejection of claims 1-9, 12, 13, 16-21, 23, 26-29, 31-33, 36, 38-41, and 43-
48. Therefore, we select independent claim 1 as being representative of the
cited claims. Consequently, claims 2-9, 12, 13, 16-21, 23, 26-29, 31-33, 36,
38-41, and 43-48 fall together with representative claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
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Claims 10, 11, 14, 15, 22, 24, 25, 30, 34, 35, 37, 42, and 496
Appellants argue that the combination of Gallo, Moller, Easty, Miller
and Official notice does not render the cited claims unpatentable. (App. Br.
9-11.)
Firstly, Appellants argue that none of the other references cures the
deficiencies of the Gallo-Moller combination as argued in the discussion of
independent claim 1. (Id. at 9-10.) We do not agree. As discussed above,
we found no such deficiencies in the Gallo-Moller combination for the cited
other references to cure.
Secondly, Appellants argue that Easty does not teach utilizing a
rearrangeable cylindrical GUI for managing the editable textual data,
wherein the rearrangement of the cylinder occurs by designating one of the
subordinate subcylinders as a new key subcylinder, as recited in claim 10.
(Id.) We do not agree. Easty discloses rearranging an inner ring of a GUI
display to designate it as a newly selected subcategory associated with a
main category in an outside ring of the GUI. (FF. 3a, 3b.) We find that
Easty’s selection of the newly subcategory in the inner ring fairly and
reasonably teaches the new key subcylinder.
Thirdly, Appellants argue that the proffered combination does not
teach that the related data sets are ad hoc data that are entered by the user

6 We note that the Examiner’s statement of the rejection omits claim 49.
However, since Appellants’ arguments discuss the cited claim along with
this rejected group, we treat claim 49 as having been properly rejected
therewith.
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when filling web forms. (Id. at 10-11.) We do not agree. As discussed
above, Moller teaches that a user can enter or edit medical data records in a
webpage. We find that by entering data in a webpage record, Moller fairly
and reasonably teaches how to fill out an on-line form since the task of
filling out a record generally involves inputting information in one or more
fields in a database form. It follows that Appellants have not shown that the
Examiner erred in concluding that the proffered combination renders the
cited claims unpatentable.

VI. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1 through 49 as set forth above.

VII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 49.

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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

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