10628824 (B.P.A.I. May. 4, 2009)

Ex Parte Moore

Board of Patent Appeals and InterferencesMay 4, 2009

10628824 (B.P.A.I. May. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DENNIS B. MOORE __________ Appeal 2008-4314 Application 10/628,824 Technology Center 2100 __________ Decided:1 May 5, 2009 __________ Before JEAN R. HOMERE, JAY P. LUCAS, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON APPEAL 1 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). Appeal 2008-4314 Application 10/628,824 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–8, 11–19, 22–30, 33–41, and 44–47. Claims 9, 10, 20, 21, 31, 32, 42, and 43 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Invention The invention relates to methods and systems for providing a user with the ability to trigger one or more guided procedures associated with work-items (Spec. 2, ¶ [0004]). Independent claim 1 is illustrative: 1. A method comprising: providing a user-interface having a user-selectable list of work- items, each work-item having metadata describing a predefined user selectable list of guided procedures associated with the work-item; receiving a selected work-item and one or more selected guided procedures; and triggering the selected guided procedures associated with the selected work item, wherein each guided procedure includes a series of steps in a work-flow that are to be executed in parallel by a plurality of users collaborating on a project, and an owner is defined for one or more steps and responsible for completing the steps assigned to the owner. Appeal 2008-4314 Application 10/628,824 3 References The Examiner relies upon the following references as evidence in support of the rejections: Du 6,078,982 Jun. 20, 2000 Bellotti 2003/0135559 A1 Jul. 17, 2003 Rejection The Examiner rejects claims 1–8, 11–19, 22–30, 33–41, and 44–47 under 35 U.S.C. § 103(a) as being unpatentable over Belllotti in view of Du. Appellant’s Contentions Appellant argues that the combination of Bellotti and Du does not render independent claims 1, 12, 23, and 34 unpatentable (App. Br. 11–14; Reply. Br. 2–4) and that the cascading menus shown in figure 11 of Bellotti do not constitute a “selected guided procedure” (App. Br. 12). Examiner’s Findings/Conclusions The Examiner avers that Bellotti’s disclosure of cascading menus teaches or suggests a guided procedure “because the cascading menus guide a user through the possible tasks grouped under the user selected item” (Ans. 10). Appeal 2008-4314 Application 10/628,824 4 ISSUE Has Appellant shown that the Examiner erred in concluding that Bellotti teaches a selected guided procedure, as recited in independent claims 1, 12, 23, and 34? FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. 1. In figure 11, Bellotti shows “a menu of useful options available for a thrask” (¶ [0093] and Fig. 11) that is navigated “via cascading sub-menus” (¶ [0093] and Fig. 11). 2. Bellotti discloses that “the term thrask refers to a collection of related items in the browser . . . it is like a Microsoft Outlook™ thread” (¶ [0039]) and “is a cross between a task and a thread” (¶ [0040]). PRINCIPLES OF LAW Obviousness Section 103(a) 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). Appeal 2008-4314 Application 10/628,824 5 Appellant has 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 (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)). Claim Interpretation The scope of patent application claims are not determined “solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal quotation and citation omitted). ANALYSIS Figure 11 of Bellotti includes “a menu of useful options available for a thrask [navigated] via cascading sub-menus” (FF 1). In contrast, independent claims 1, 12, 23, and 34 recite that the guided procedure includes “a series of steps in a work-flow that are to be executed in parallel by a plurality of users collaborating on a project.” While the Examiner found that Bellotti discloses a series of steps in a work-flow that are executed by a plurality of users collaborating on a project (Ans. 11), the Examiner has not shown that the cascading sub-menus of Bellotti themselves are navigated by, Appeal 2008-4314 Application 10/628,824 6 and thus guide, a plurality of users collaborating on a project. We thus conclude that the Examiner has not demonstrated that Bellotti teaches a selected guided procedure as claimed in the patent application. Similarly, we do not find, and the Examiner does not demonstrate, that Du cures the noted deficiencies of Bellotti. Since we agree with at least one of the arguments advanced by Appellant in the Briefs, we need not reach the merits of Appellant’s other arguments. It follows that Appellant has shown that the Examiner erred in finding that the combination of Bellotti and Du renders independent claims 1, 12, 23, and 34 unpatentable. Because claims 2–8, 11, 13–19, 22, 24–30, 33, 35–41, and 44–47 incorporate this limitation as dependent claims, we find that Appellant has also shown error in the Examiner’s rejections of those claims. CONCLUSIONS OF LAW Based on the findings of facts and analysis above, we conclude that Appellant has shown that the Examiner erred in concluding that Bellotti teaches a selected guided procedure. DECISION We reverse the Examiner’s decision rejecting claims 1–8, 11–19, 22– 30, 33–41, and 44–47. REVERSED Appeal 2008-4314 Application 10/628,824 7 msc FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 901 NEW YORK AVENUE, NW WASHINGTON DC 20001-4413