Ex Parte MacPhail

Board of Patent Appeals and Interferences

May 7, 2010

10042107 (B.P.A.I. May. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARGARET GARDNER MACPHAIL
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Appeal 2009-004491
Application 10/042,107
Technology Center 2100
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Decided: May 10, 2010
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Before JOHN A. JEFFERY, JAMES D. THOMAS, and DEBRA K.
STEPHENS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
The present invention addresses the problem of optimizing data
stored in a database so that it may be easily and conveniently
used for the limited size i.e. small display interfaces of PDAs,
personal palm devices and cellular telephones. Simply stated,
the present invention addresses this problem by providing a
database wherein a plurality of different types of data are in
turn further each represented by a plurality of strings of
sequential segments. Each segment of each of said plurality of
strings of each of said different types of data has a content
which fits the device display size. When a particular data type
is selected by a user at a display station, then in turn, the string
stored in the database, the segments of which fit the dimensions
of the limited display is provided from the database, and the
segments in the string are sequentially displayed.
(App. Br. 3; Figs. 1, 3, 7, 8.)

Representative Claim
1. A computer controlled database system for providing a
user with database output through a user interface having
predefined dimensions limiting the capacity of each
iterative segment of output comprising:
a database for storing a plurality of different types
of output data including:
means for storing in said database data segments
for each of the different types of stored data, each segment
having a capacity limited by said predefined dimensions of
said user interface; and
means for storing in said database a plurality of
strings of said segments, each string including a sequence
of segments of one different type of stored data;
means enabling a user to select one of said strings of
segments to be output; and
means for outputting said selected string of segments
at said user interface.

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Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Guck US 5,864,870 Jan. 26, 1999
Benschoter US 2003/0101230 A1 May 29, 2003
(filed Nov. 26, 2001)

Shin US 6,674,439 B1 Jan. 6, 2004
(filed May 8, 2000)

Claims 1-36, all claims on appeal, stand rejected under 35 U.S.C. §
103. In a first stated rejection as to claims 1-3, 8-11, 13-15, 20-23, 25-27,
and 32-35, the Examiner relies upon Shin alone. In a second stated
rejection, the Examiner relies upon Guck in addition to Shin as to claims 4-
7, 12, 16-19, 24, 28-31, and 36. Lastly, in a third stated rejection as to
claims 12, 24, and 36, the Examiner adds Benschoter to the combination of
Shin and Guck.

Claim Groupings
Based upon Appellant’s arguments in the principal Brief on appeal,
independent claim 1 is considered representative of the subject matter of
independent claims 1, 13, and 25 on appeal as well as their respective
dependent claims within the first stated rejection. Similarly, as to the second
stated rejection, Appellant considers dependent claim 4 as representative of
the subject matter of all claims within this rejection. Lastly, as to the third
stated rejection, Appellant relies for patentability upon the previously stated
arguments.

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ISSUE
Did the Examiner err in finding that Shin teaches a plurality of strings
of sequential data elements, each string having a plurality of segments,
where each segment has a capacity limited by predefined dimensions of a
user interface, as recited in representative independent claim 1 on appeal?
FINDINGS OF FACT (“FF”)
Shin’s Abstract is reproduced here:
A mobile terminal is provided which can obtain an image from
a server and change the size of the image so as to use the image
as a background image. An image obtaining unit obtains an
image from a server. An over-size decision unit decides
whether the entirety of the image obtained by the image
obtaining unit can be displayed within the display area in a
screen. When the over-size decision unit provides a negative
decision, an image resizing unit changes the size of the image
obtained by the image obtaining unit so that it can be displayed
within the display area in the screen.

The mobile terminals 10, 11 in Figure 1 operate in an
environment corresponding to Appellants’ disclosed invention. One
of these terminals is illustrated in a functional structure in Figure 4 as
relied upon by Examiner. This is the first embodiment of Shin’s
inventive contributions. The Examiner appears to argue that the
claimed database is the accumulative image storage unit 408 in Figure
4. Comparable capacities of the graphical interface or screen of these
terminals are illustrated in Figure 5 to compare the ability of the given
display element in a terminal device to display a certain area as well
as the requirements of the data to be displayed. The logic of how this
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is accommodated is shown in Figure 6 with examples in Figures 7
through 9. Of equal significance is the showing of a second
embodiment beginning in Figure 10, which appears to focus upon
accommodating HTML message data in various storage units and the
logic of processing in Figure 12 the type of HTML element
information stored. Thus, Shin clearly teaches the ability to store
different types of information, which features are emphasized in the
paragraph bridging columns 21 and 22 with respect to the Figure 13
showing in Shin as relied upon by the Examiner.

ANALYSIS
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions will be limited to the
following points of emphasis.
At pages 9 and 10 of the principal Brief and at pages 2 and 4 of the
Reply Brief, Appellant improperly argues that each segment of each of the
plurality of strings of each of the different types of data has a content which
fits the device display size. This argument is not coextensive with and does
not repeat what is actually claimed in representative claim 1 on appeal.
Actually, there is a much broader recitation where each segment has its
capacity limited by the predetermined dimensions of the user interface
recited. The Examiner’s findings in addition to our separate findings as to
Shin in this opinion clearly justify the Examiner’s conclusion that Shin
teaches the subject matter of representative independent claim 1 on appeal
argued not to be present in this reference.
Additionally, Appellant’s positions with respect to the storage size of
the cellular telephones in Shin being severely limited at pages 9 and 10 of
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the principal Brief, and repeated in the Reply Brief, is equally unavailing of
patentability since storage capacity of the claimed database is recited so
broadly as to be inclusive within the teachings of Shin.
The positions set forth in the principal Brief on appeal do not address
the Examiner’s reasoning in the Final Rejection directed at the non-
functional descriptive material recited, for example, within representative
independent claim 1 on appeal. The Examiner repeats these positions in the
Answer. In recognizing at page 4 of the Reply Brief that the claims
expressly and completely include what the Examiner has characterized as
nonfunctional descriptive material, Appellant appears to admit that the
Examiner’s position is correct since the positions taken there do not argue
before us that the Examiner’s positions as to this characterization are
incorrect. Appellant goes on to continue to assert this non-functional
descriptive material is the predicate of patentability for the subject matter of
representative independent claim 1 on appeal. We find this position
unpersuasive.
Next, we turn to the second and third state of rejections of certain
dependent claims rejected under 35 U.S.C. § 103 relying upon at least two
references. Appellant’s arguments beginning at page 12 of the principal
Brief on appeal do not argue that the Examiner-relied-upon additional prior
art references are not properly combinable within 35 U.S.C. § 103.
Appellant does not deny that Guck teaches database files having the
same type of data (i.e., image data) claimed, and appears to argue at the top
of page 13 of this Brief the same arguments presented with respect to the
initial rejection of representative independent claim 1 on appeal within the
first stated rejection under 35 U.S.C. § 103 over Shin alone. Moreover, as to
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the features of dependent claim 4 reciting that a type of data includes image
data, not only does Guck expressly teach storing that particular type of data,
but also the Examiner and our findings of fact in this opinion have indicated
that Shin already teaches this feature. Therefore, Guck is considered to be
cumulative as to this argued feature. As to features of dependent claim 12
rejected within the third stated rejection, Appellant’s position at the top of 14
of the principal Brief on appeal appears to concede that Benschoter teaches
the ability to change the order of segments to be displayed. The broadly
recited changing capabilities are reflective of the modifying capability
within the disclosed invention, a feature also taught within the teachings we
noted in our findings of fact with respect to Shin.

CONCLUSION AND DECISION
Appellant has not shown that the Examiner has erred in finding that
Shin teaches the ability to store different types of data having different
characteristics associated with them as applied to a particular user interface
as recited in representative independent claim 1 on appeal. Correspondingly,
Appellant has not shown that the Examiner has erred in the application of
additional prior art within 35 U.S.C. § 103. Therefore, we affirm the
Examiner’s three stated rejections of all claims on appeal, claims 1-36,
rejected under 35 U.S.C. § 103. All claims on appeal are unpatentable.

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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

erc

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