Ex Parte Loo et al

Board of Patent Appeals and Interferences

Mar 28, 2011

10886929 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROSE PON LOO, LEWIS W.B. CHARNOCK, JANAKI P.
KUMAR, VIVEK BHANUPRAKASH, and DEBORAH RODGERS
____________
Appeal 2009-008195
Application 10/886,9291
Technology Center 2100
____________

Before JEAN R. HOMERE, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on July 8, 2004. This application claims priority from provisional
application 60/512,966, filed October 21, 2003. The real party in interest is
SAP Aktiengesellschaft. (App. Br. 1.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 28. (App. Br. 2.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method, system, and computer program product
for utilizing a graphical scratchpad within a graphical user interface
(hereinafter “GUI”) of a computing system. (Spec. 1, ll. 5-6.)
Illustrative Claim
Independent claims 1 and 14 further illustrate the invention as
follows:
1. A method for providing a scratchpad window in a
graphical user interface (GUI) while using an application that
manages an interaction between an agent and an individual, the
method comprising:

upon entry of a first selection made by the agent in an
application window used by the application and displayed in the GUI
to the agent during the interaction with the individual, displaying the
scratchpad window in the GUI, the application operable to access a
database for a customer relationship management system during the
interaction between the agent and the individual;

accepting input from the agent that is entered as information
into the scratchpad window while the interaction between the agent
and the individual is occurring, the input including notes recorded by
the agent during the interaction between the agent and the individual
and related to the interaction;

upon entry of a second selection made by the agent in the
application window within the GUI, importing the information
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contained within the scratchpad window into a data-entry area of the
application window; and

persistently storing interaction information related to the
interaction between the agent and the individual, the interaction
information including information imported into the data-entry area of
the application window.

14. A method for providing a scratchpad window in a
graphical user interface (GUI) while using an application that
manages an interaction between an agent and an individual, the
method comprising:

during a first phase of the interaction between the agent and the
individual in the application, accepting input from the agent that is
entered into a graphical scratchpad using the GUI while the
interaction between the agent and the individual is occurring, the input
including notes recorded by the agent during the interaction between
the agent and the individual and related to the interaction, the
graphical scratchpad being displayed within a pop-up window within
the GUI, the application operable to access a database for a customer
relationship management system during the interaction between the
agent and the individual; and

during a second phase of the interaction between the agent and
the individual in the application, displaying in the graphical
scratchpad the previously accepted input and accepting additional
input from the agent that is further entered into the graphical
scratchpad using the GUI, wherein the second phase of the interaction
is distinct from the first phase.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Busey US 6,665,395 B1 Dec. 16, 2003
(filed Dec. 11, 1998)
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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 25 and 26 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1, 2, 5, 6, 8, 10, 12, 13, 23, 25, 27, and 28 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Busey.
Claims 3, 4, 7, 9, 11, 14 through 22, 24, and 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Busey.
Appellants’ Contentions
1. Appellants contend that independent claims 25 and 26 are
directed to statutory subject matter because Appellants’ Specification
explicitly defines embodiments of computer-readable medium as either a
memory or a storage device. (App. Br. 6.)
2. Appellants contend that although Busey’s disclosure enables a
user to create a pre-defined resource by entering text into a window, Busey
does not teach the creation of a new resource while an agent is interacting
with a customer. (Id. at 8.) Further, Appellants argue that Busey fails to
teach that the pre-defined resource includes notes pertaining to the
agent/customer interaction, and that the notes are recorded by the agent
during such interaction. (Id.; Reply Br. 2-3.) Additionally, Appellants
disagree with the Examiner’s position that activating both window (532) and
window (536) is possible because both windows are displayed at the same
instance in the user interface. (Reply. Br. 2.) Appellants contend that Busey
fails to teach that it is possible to activate both window (532) and window
(536) at the same time, such that the agent can create a resource in window
(536) while interacting with the customer in window (532). (Id.)
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3. Appellants contend that Busey fails to teach that the resources
in window (534) are editable. (App. Br. 9-10.) Appellants also argue that
Busey’s disclosure of storing resources in folders does not teach that the
resources are editable. (Id.) Further, Appellants disagree with the
Examiner’s position that a user can reopen a resource from window (534),
modify or add more content to the resource using window (536), and save
the modified resource. (Reply Br. 3-4.) Rather, Appellants contend that
Busey’s disclosure of activating window (536) by pressing the “create new
resources” button suggests that reopening and modifying existing resources
is not possible. (Id.)

Examiner’s Findings and Conclusions
1. The Examiner finds that independent claims 25 and 26 are
directed to non-statutory subject matter because Appellants’ Specification
indicates that “[t]he information carrier is a computer- or machine-readable
medium, such as the memory 404, the storage device 406, or a propagated
signal.” (Ans. 13-14.) (Emphasis added.) Therefore, the Examiner finds
that the claimed “machine-readable medium” can be broadly, but reasonably
construed to encompass a propagated signal. (Id. at 14.)
2. The Examiner finds that Busey’s figure 3A depicts window
(532) for communicating with a customer, and window (536) for creating a
resource. (Id.) In particular, the Examiner finds that Busey discloses
activating both windows (532 & 536) such that an agent can create a
resource in window (536) while interacting with a customer in window
(532). (Id.) Moreover, the Examiner finds that Busey’s disclosure of
creating a pre-defined resource by entering text into the window (536)
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amounts to recording notes during and related to the interaction between the
agent and customer. (Id. at 14-15.)
3. The Examiner finds that Busey’s disclosure of creating
resources in window (536) and saving the resources in window (534) also
encompasses reopening a resource stored in window (534) and modifying
the resource in window (536). (Id. at 15.) That is, during a first phase, the
Examiner finds that Busey discloses that an agent creates a resource in
window (536) and saves it to window (534). (Id. at 16.) During a second
phase, the Examiner finds that Busey discloses that the agent can reopen and
modify the resource stored in window (534) before saving it again, or
sending it to the customer. (Id.)

II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that
independent claims 25 and 26 are directed to non-statutory subject matter?
In particular, the issue turns on whether the claimed “[a] computer program
product tangibly embodied in machine-readable program . . .” encompasses
a transitory, propagating signal?
2. Have Appellants shown that the Examiner erred in finding that
Busey anticipates independent claim 1? In particular, the issue turns on
whether Busey teaches “accepting input from the agent that is entered as
information into the scratchpad window while the interaction between the
agent and the individual is occurring, the input including notes recorded by
the agent during the interaction between the agent and the individual and
related to the interaction,” as recited in independent claim 1.
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3. Have Appellants shown that the Examiner erred in concluding
that Busey renders independent claim 14 unpatentable? In particular, the
issue turns on whether Busey teaches or fairly suggests the following claim
limitations:
(a) “accepting input from the agent that is entered into a graphical
scratchpad using the GUI while the interaction between the agent and the
individual is occurring, the input including notes recorded by the agent
during the interaction between the agent and the individual and related to the
interaction,” as recited in independent claim 14; and
(b) “displaying in the graphical scratchpad the previously accepted
input and accepting additional input from the agent that is further entered
into the graphical scratchpad using the GUI,” as recited in independent claim
14.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Appellants’ Specification
FF 1. Appellants’ Specification states that “ . . . a computer program
product is tangibly embodied in an information carrier.” (Spec. 11, ll. 27-
28.) Further, Appellants’ Specification states that “[t]he information carrier
is a computer- or machine-readable medium, such as the memory 404, the
storage device 406, or a propagated signal.” (Id. at ll. 29-31.) (Emphasis
added.)

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Busey
FF 2. Busey’s figure 3A depicts an agent GUI that includes a
communication window (532) that displays the dialogue between a customer
and agent. (Col. 12, ll. 45-46; see also col. 13, ll. 56-57.)
FF 3. Busey figure 3A depicts organizing each resource into one or
more folders located in the resource window (534). (Col. 14, ll. 14-15.)
FF 4. Busey figure 3A depicts activating the resource creation
window (536) by selecting the “create new resources” button located on the
agent client main screen (400). (Id. at ll. 16-17.) Upon selecting the “create
new resources” button, Busey discloses that the resource creation window
(536) becomes the active window, thereby allowing an agent to type text or
a Uniform Resource Locator (hereinafter “URL”) therein. (Id. at ll. 17-19.)
Moreover, Busey discloses that a user can save the typed text or URL as a
resource in the resource window (534). (Id. at ll. 19-20.)

IV. ANALYSIS
35 U.S.C. § 101 Rejection
Claims 25 and 26
Independent claims 25 and 26 both recite, in relevant part, “[a]
computer program product tangibly embodied in machine-readable medium”
As detailed in the Findings of Fact above, Appellants' Specification
indicates that a computer program product may be tangibly embodied in an
information carrier.2 (FF 1.) Moreover, Appellants’ Specification discloses
that the information carrier is a machine-readable medium, such as a

2 While an article of manufacture can be used to tangibly embody a
propagated signal, we are uncertain as to how the propagated signal itself
can tangibly embody the computer program product.
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propagated signal. (Id.) We find that the claimed “computer program
product tangibly embodied in machine-readable medium” can be broadly,
but reasonably construed to encompass a transitory, propagating signal
containing information. Further, since the claim is not limited to a non-
transitory, tangible medium within one of the four statutory classes of 35
U.S.C. § 101,3 we agree with the Examiner that independent claims 25 and
26 are directed to non-statutory subject matter. (Ans. 13-14.)
35 U.S.C. § 102(e) Rejection
Claim 1
Independent claim 1 recites, in relevant part, “accepting input from
the agent that is entered as information into the scratchpad window while the
interaction between the agent and the individual is occurring, the input
including notes recorded by the agent during the interaction between the
agent and the individual and related to the interaction.”
As detailed in the Findings of Fact section above, Busey discloses an
agent GUI that includes a communication window, a resource creation
window, and a resource window. (FFs 2 & 4.) Busey discloses that the
communication window allows the agent and customer to exchange

3 “If a claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007). “A transitory, propagating signal . . . is not a
‘process, machine, manufacture, or composition of matter’ [under 35 U.S.C.
§ 101]” and, therefore, does not constitute patentable subject matter under §
101. Id. at 1357. Claims that are so broad that they read on nonstatutory as
well as statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d
1013, 1015 (CCPA 1972) (citation omitted) (“Claims which are broad
enough to read on obvious subject matter are unpatentable even though they
also read on nonobvious subject matter.”).
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dialogue, the resource creation window allows the agent to enter text or
URLs therein, and the resource window saves the text or URLs entered by
the agent in the resource creation window. (Id.)
We find that Busey’s disclosure teaches that an agent creates a new
resource by entering text or URLs into the resource creation window while
the agent interacts with the customer in the communication window. In
particular, we find that Busey’s disclosure of an agent entering text or URLs
into the resource creation window amounts to the agent recording notes
pertaining to the agent/customer interaction in the resource creation window
while such interaction is occurring in the communication window. Thus, we
find that Busey teaches the disputed limitation. It follows that Appellants
have not shown that the Examiner erred in finding that Busey anticipates
independent claim 1.
Claims 2, 5, 6, 8, 10, 12, 13, 23, 25, 27, and 28
Appellants do not provide separate arguments for patentability with
respect to independent claims 23 and 25, and dependent claims 2, 5, 6, 8, 10,
12, 13, 27, and 28. Therefore, we select independent claim 1 as
representative of the cited claims. Consequently, Appellants have not shown
error in the Examiner’s rejection of independent claims 23 and 25, and
dependent claims 2, 5, 6, 8, 10, 12, 13, 27, and 28, for the reasons set forth
in our discussion of independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
35 U.S.C. § 103(a) Rejection
Claims 3, 4, 7, 9, and 11
Appellants offer the same arguments set forth in response to the
anticipation rejection of independent claim 1 to rebut the obviousness
rejection of dependent claims 3, 4, 7, 9, and 11. (App. Br. 10.) We have
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already addressed this argument in our discussion of independent claim 1,
and we found it unpersuasive. Consequently, Appellants have not shown
that the Examiner erred in concluding that Busey renders dependent claims
3, 4, 7, 9, and 11 unpatentable.
Claim 14
Independent claim 14 recites, in relevant part:
1) accepting input from the agent that is entered into a graphical
scratchpad using the GUI while the interaction between the agent and
the individual is occurring, the input including notes recorded by the
agent during the interaction between the agent and the individual and
related to the interaction; and 2) displaying in the graphical scratchpad
the previously accepted input and accepting additional input from the
agent that is further entered into the graphical scratchpad using the
GUI.

As set forth above, we find that Busey teaches “accepting input from
the agent that is entered into a graphical scratchpad using the GUI while the
interaction between the agent and the individual is occurring, the input
including notes recorded by the agent during the interaction between the
agent and the individual and related to the interaction,” as recited in
independent claim 14.
Further, Busey discloses organizing the resources created in the
resource creation window in one or more folders located in the resource
window. (FF 3.) We find that an ordinarily skilled artisan would have
readily appreciated that an agent could utilize Busey’s agent GUI to retrieve
a previously created resource stored in a folder located in the resource
window, display such resource in the resource creation window, and modify
or edit the respective resource by entering additional text or URLs therein.
Alternatively, we find that an ordinarily skilled artisan would have also
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appreciated that an agent could be utilizing Busey’s agent GUI to enter text
or URLs into the resource creation window, activate and enter the
communication window in order to respond to a customer’s question, and
subsequently return to the resource creation window to enter additional text
or URLs therein. Thus, we find that Busey teaches or fairly suggests
“displaying in the graphical scratchpad the previously accepted input and
accepting additional input from the agent that is further entered into the
graphical scratchpad using the GUI,” as recited in independent claim 14. It
follows that Appellants have not shown that the Examiner erred in finding
that Busey anticipates independent claim 1.
Claims 15 through 22, 24, and 26
Appellants do not provide separate arguments for patentability with
respect to independent claims 24 and 26, and dependent claims 15 through
22. Therefore, we select independent claim 14 as representative of the cited
claims. Consequently, Appellants have not shown error in the Examiner’s
rejection of to independent claims 24 and 26, and dependent claims 15
through 22, for the reasons set forth in our discussion of independent claim
14. See 37 C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in rejecting
claims 25 and 26 as being directed to non-statutory subject matter under
35 U.S.C. §101
2. Appellants have not shown that the Examiner erred in rejecting
claims 1, 2, 5, 6, 8, 10, 12, 13, 23, 25, 27, and 28 as being anticipated under
35 U.S.C. § 102(e).
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3. Appellants have not shown that the Examiner erred in rejecting
claims 3, 4, 7, 9, 11, 14 through 22, 24, and 26 as being unpatentable under
35 U.S.C. § 103(a).
VI. DECISION
1. We affirm the Examiner’s decision to reject claims 25 and 26 as
being directed to non-statutory subject matter under 35 U.S.C. §101.
2. We affirm the Examiner’s decision to reject claims 1, 2, 5, 6, 8,
10, 12, 13, 23, 25, 27, and 28 as being anticipated under 35 U.S.C. § 102(e).
3. We affirm the Examiner’s decision to reject claims 3, 4, 7, 9,
11, 14 through 22, 24, and 26 as being unpatentable under 35 U.S.C. §
103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

erc