Ex Parte Lucke

Board of Patent Appeals and Interferences

Jan 26, 2005

09495217 (B.P.A.I. Jan. 26, 2005)

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written for publication and is not binding precedent of the Board.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. 9

UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HOLLY MICHELLE LUCKE
__________
Appeal No. 2004-1460
Application No. 09/495,217
__________
ON BRIEF
__________
Before THOMAS, KRASS, and JERRY SMITH, 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 1-16, which constitute
all the claims in the application.
The disclosed invention pertains to an improved graphical
user interface for interactively selecting objects and tasks to
perform operations in a computer system.
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Application No. 09/495,217
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Representative claim 12 is reproduced as follows:
12. A computer program product for providing a user
interface to select objects and tasks on at least one
computer system, said computer program product
comprising:
a plurality of processor executable instructions
recorded on signal-bearing media, wherein said
instructions, when executed by at least one processor,
cause the at least one computer system to present an
interactive selection window to a user on a display, said
window comprising:

an first pane for listing a plurality of objects
and receiving a user selection of an object listed
therein;
a second pane for listing a plurality of tasks and
receiving a user selection of a task listed therein, said
user selection of a task causing said task to be
performed, wherein at least some of said plurality of
tasks listed in said second pane are responsive to the
object selected from said first pane.
The examiner relies on the following reference:
Lindhorst et al. (Lindhorst) 6,268,852 Jul. 31, 2001
(filed Jun. 02, 1997)
Claims 1, 2, 5-8, 11-13 and 16 stand rejected under
35 U.S.C. § 102(e) as being anticipated by the disclosure of
Lindhorst. Claims 3, 4, 9, 10, 14 and 15 stand rejected under
35 U.S.C. § 103(a). As evidence of obviousness the examiner
offers Lindhorst taken alone.
Appeal No. 2004-1460
Application No. 09/495,217
3
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the brief along with the
examiner’s rationale in support of the rejections 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 does not support either of the
examiner’s rejections. Accordingly, we reverse.
We consider first the rejection of claims 1, 2, 5-8,
11-13 and 16 under 35 U.S.C. § 102(e) as being anticipated by the
disclosure of Lindhorst. Anticipation is established only when a
single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
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Application No. 09/495,217
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performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
Appellant has indicated that these claims stand or fall
together as a single group (brief, page 4), and we will consider
claim 12 as the representative claim for this group. The
examiner has indicated how he reads the invention of claim 12 on
the disclosure of Lindhorst (answer, pages 3 and 4). Appellant
argues that Lindhorst fails to disclose a window having both
object and task panes for launching tasks, in which a task is
performed responsive to selection from the task pane, and in
which the list of tasks displayed in the task pane is dependent
on the object selected in the object pane. Specifically,
appellant argues that the items in Lindhorst cited by the
examiner to meet the claimed object and task panes fail to
satisfy the claimed invention. Appellant asserts that the
actions displayed in Lindhorst are not tasks which are performed
responsive to a selection. Appellant also asserts that actions
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Application No. 09/495,217
5
displayed in Lindhorst are independent of the event selected by
the developer from the event pane. Appellant notes that in
response to selecting an action in Lindhorst, the action is
inserted into the script code, but the action itself is not
performed. Appellant notes that neither Lindhorst’s action pane
nor the code pane meets all the limitations of the claimed pane
for displaying tasks. Finally, appellant argues that Lindhorst
discloses an editing application, which is significantly
different from process navigation (brief, pages 6-12).
The examiner responds that Lindhorst fully meets the
claimed invention. The examiner asserts that Lindhorst discloses
that an event is triggered when a particular user action occurs,
and that once the user performs an action that triggers an event,
the corresponding event handling software is initiated and run on
the computer system. The examiner essentially finds that the
linkage of events and actions in Lindhorst meets the claimed
invention (answer, pages 5-8).
We will not sustain the examiner’s rejection of the
claims as being anticipated by the disclosure of Lindhorst. We
essentially agree with all of appellant’s arguments set forth in
the brief. Most importantly, we agree with appellant that
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Application No. 09/495,217
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neither the action pane nor the code pane of Lindhorst meets the
recitations of the second pane in representative claim 12. Claim
12 requires that the user selection of the task be made from the
second pane and that the selection results in the task being
performed. The action pane does not meet the claimed second pane
because selection of a task in the action pane of Lindhorst does
not cause the task to be performed. It only establishes a
computer program which will implement the task at some later time
if the action should occur. No task is performed simply in
response to the selection made in the action pane. The code pane
does not meet the claimed second pane because the tasks listed in
the code pane are not responsive to the object selected from the
event pane in Lindhorst. Therefore, the examiner’s findings of
anticipation are not supported by the disclosure of Lindhorst.
We now consider the rejection of claims 3, 4, 9, 10,
14 and 15 under 35 U.S.C. § 103(a) as being unpatentable over the
teachings of Lindhorst taken alone. 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, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
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Application No. 09/495,217
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factual 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 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,
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Application No. 09/495,217
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783 F.2d 1038, 1039-40, 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 and are deemed to be waived by appellant (see 37 CFR
§ 41.37(c)(1)(vii)(2004)).
Since the examiner’s findings with respect to Lindhorst
are incorrect for reasons discussed above, the examiner has
failed to establish a prima facie case of obviousness.
Therefore, we cannot sustain the examiner’s rejection of the
claims based on Lindhorst taken alone.
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Application No. 09/495,217
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In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-16 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JERRY SMITH )
Administrative Patent Judge )
JS/hh
Appeal No. 2004-1460
Application No. 09/495,217
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OWEN J. GAMON
IBM CORP., DEPT. 917
3605 HIGHWAY 52 NORTH
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