Ex parte Listou

Board of Patent Appeals and Interferences

Aug 30, 2000

08561178 (B.P.A.I. Aug. 30, 2000)

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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journal and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT LISTOU
________________
Appeal No. 1999-2716
Application 08/561,178
________________
HEARD: AUGUST 15, 2000
________________
Before JERRY SMITH, FLEMING and RUGGIERO, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 2-9, 11-18 and 20-22,
which constitute all the claims remaining in the application.

The disclosed invention pertains to the field of
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sorting and displaying text data objects using a computer
system. More
particularly, the invention is directed to the simplification
of the process by which a user designates parameters
associated with the text data objects and the order in which
the parameters are sorted.
Representative claim 20 is reproduced as follows:
20. A method for using a computer system to sort and
display text data objects, comprising the steps of:
a. imaging, on a display device controlled by the
computer system, a query dialog box,
wherein the query dialog box displays each of a plurality
of parameters associated with each of the text data objects,
forms a plurality of spaces for listing values associated with
each displayed parameter, and further forms a space for
selecting a sort order;
b. designating, for each displayed parameter, a
parameter value;
c. constructing a sort order from the displayed
parameters in the space for selecting a sort order;
d. selecting, using the computer system, text data
objects satisfying the designated values; and
e. sorting, using the computer system, the selected
text data objects according to the constructed sort order.
The examiner relies on the following reference:
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Microsoft Project for Windows Feature Guide, Version 1.0, 1990
by Microsoft Corporation, pages v, 22-33, 48-57, 85-95, 110-
111 and 137 (Feature Guide).
Claims 2-9, 11-18 and 20-22 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
the Feature Guide taken alone.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
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skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 2-9, 11-18 and 20-22. Accordingly, we
reverse.
Appellant has nominally indicated that for purposes of
this appeal the claims will stand or fall together in the
following two groups: Group I has claims 20-22, 5-9 and 14-18,
and Group II has claims 2-4 and 11-13. Consistent with this
indication appellant has made no separate arguments with
respect to any of the claims within each group. Accordingly,
all the claims within each group will stand or fall together.
Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed.
Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3
(Fed. Cir. 1983). Therefore, we will consider the rejection
against claims 20 and 2 as representative of all the claims on
appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
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determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
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facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
With respect to representative, independent claim 20,
the examiner indicates how the claim recitations are met by
the teachings of the Feature Guide [rejection mailed July 10,
1998, pages 3-4]. The examiner notes that the Feature Guide
does not explicitly show the list of parameters for sorting
displayed within the query dialog box, but instead, the
Feature Guide shows a sort button for presumably calling up an
additional sort window. The examiner determines that it would
have been obvious to the artisan to combine the contents of
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plural windows into a single window based on conventional
tradeoffs of window complexity and ease of use. The examiner
also finds that it would have been obvious to the artisan to
designate a parameter value for each of the displayed
parameters [id., pages 4-5 and answer, pages 5-7].
Appellant makes the following arguments: 1) The
program represented by the Feature Guide is not designed to
run in real time; 2) The Feature Guide does not enable a user
to designate parameter values and to select a sort order
within a single dialog box; 3) The Feature Guide does not
teach how to create new filters or edit present filters; 4)
The Feature Guide would
require more complicated actions by the user to achieve the
same results as appellant’s invention; 5) The Feature Guide’s
use of plural windows teaches away from appellant’s use of a
single window; 6) the examiner’s proposed modification to the
Feature Guide program would render the Feature Guide program
unsatisfactory for its intended purpose [brief, pages 12-24];
and 7) The motivation cited by the examiner is based on
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improper hindsight [reply brief].
After a careful review of the entire record before us,
we agree with the position argued by appellant. Although we
do not agree with all of appellant’s arguments noted above, we
do agree with the argument numbered 2) above and find it to be
dispositive of this appeal.
The independent claims recite that the query dialog
box displays a plurality of parameters associated with the
text data objects, values for these parameters and a space for
selecting a sort order from the displayed parameters. The
examiner views the invention as basically nothing more than
the screen shown on page 86 of the Feature Guide with the sort
button of that screen replaced by whatever screen is brought
up by pressing the sort
button. In other words, the examiner views the invention as a
trade off between clutter within a given screen or window and
the use of additional screens or windows. We are of the view
that the claimed invention requires more than this mere
substitution based on clutter.
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The sort button is labeled “K” in the Feature Guide
and “K” is identified as “To specify a sort order for tasks in
the report, choose this button” [page 86]. If one looks to
the various task reports set out in the Feature Guide, one can
see that the type of information listed on these task reports
is not the same information as shown in the edit task report
box on page 86. Thus, the types of parameters upon which
tasks in the task reports can be sorted are not related to the
items set forth as “A” to “G” in the edit task report box
shown on page 86. Therefore, a key feature of the claimed
invention is not present in the prior art as applied by the
examiner. More particularly, the query dialog box of the
claimed invention is not met by the edit task report box of
the Feature Guide because the parameters designated by the
examiner are not parameters upon which a sort is based as
required by the claimed invention. The parameters to be
sorted, their values and their sort order must all appear
within the query dialog box. The edit task report box on page
86 of the Feature Guide does not show any of these items.
Since we find that the examiner has not properly
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identified all the differences between the claimed invention
and the Feature Guide, and since he has not, therefore,
addressed the obviousness of these differences, we find that
the examiner has not properly established a prima facie case
of obviousness. Accordingly, we do not sustain the examiner’s
rejection of the appealed claims under 35 U.S.C. § 103.
Therefore, the decision of the examiner rejecting claims 2-9,
11-18 and 20-22 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS/ki
Paul J. Berman
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Application 08/561,178
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Covington and Burling
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