Ex Parte Nishikawa et al

Patent Trial and Appeal Board

Sep 21, 2012

10806832 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/806,832 03/23/2004 Yuko Nishikawa 7114-81205-US 4230
37123 7590 09/24/2012
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
TAYLOR, JOSHUA D
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
09/24/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUKO NISHIKAWA, KAYAN GOLDEN, MICHAEL A.
BERGERON, HIMGAN WIBISONO, and PHILIP McKAY
____________

Appeal 2010-006452
Application 10/806,832
Technology Center 2400
____________

Before STEPHEN C. SIU, THOMAS L. GIANNETTI, and BRIAN J.
McNAMARA, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).

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STATEMENT OF THE CASE

The disclosed invention relates generally to sending mail from a
restricted communications network (Spec. 1). Claim 1 is representative and
reads as follows:
1. A method comprising:
- providing access to characterizing descriptors as individually
correspond to a plurality of discrete selectable items of data;
- providing at least a first and a second characterizing descriptor
filter;
- simultaneously displaying:
a first plurality of user-selectable characterizing descriptor filter
criteria as corresponds to the first characterizing descriptor filter, the
first plurality of user-selectable characterizing descriptor filter criteria
displayed as a horizontal row of user-selectable characterizing
descriptor filter criteria;
a second plurality of user-selectable characterizing descriptor
filter criteria as corresponds to the second characterizing descriptor
filter, the second plurality of user-selectable characterizing descriptor
filter criteria displayed as a horizontal row of user-selectable
characterizing descriptor filter criteria;
at least a portion of the characterizing descriptors as
corresponds to a present setting of the first and second plurality of
user-selectable characterizing descriptor filter criteria, the portion of
the characterizing descriptors as corresponds to a present setting of the
first and second plurality of user-selectable characterizing descriptor
filter criteria displayed as a horizontal row of characterizing
descriptors positioned between the first plurality of user-selectable
characterizing descriptor filter criteria and the second plurality of
user-selectable characterizing descriptor filter criteria.

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Application 10/806,832

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Claims 1-4 and 6-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ellis (U.S. Patent No. 7,065,709 B2; June 20, 2006),
Robertson (US Patent No. 7,149,983 B1; December 12, 2006), and Billmaier
(U.S. Patent No. 7,159,177 B2; January 2, 2007).
Claims 5, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ellis, Robertson, Billmaier, and Robarts (U.S. Patent
Publication No. 2005/0278741A1; December 15, 2005).

Issue
Did the Examiner err in rejecting claims 1-17?
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Analysis
With respect to claims 1, 10, and 12, Appellants argue that while
Robertson discloses “simultaneously display[ing] user-selectable
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characterizing descriptor criteria and characterizing descriptors
corresponding to a present setting of the first and second characterizing filter
criteria” (App. Br. 11), Robertson, according to Appellants, fails to disclose
or suggest that the first and second plurality of user-selectable characterizing
descriptor filter criteria are each displayed “as a horizontal row” and that the
corresponding characterizing descriptors are “‘positioned between the first . .
. and the second plurality of . . . characterizing descriptor filter criteria’” (Id.
at 11).
As the Examiner points out, Ellis discloses “descriptor criteria”
displayed in a vertical column (see, e.g., Fig. 9a) and that displayed elements
“may be displayed using any suitable list, table, grid, or other suitable
display arrangement” (col. 11, ll. 4-6). In other words, while Ellis explicitly
discloses an example of displaying “descriptor criteria” in a vertical column,
Ellis also suggests that one of ordinary skill in the art would have understood
that elements may be displayed in a variety of arrangements and formats.
We also agree with the Examiner that Ellis discloses horizontal arrows on
menu items (see, e.g., Fig. 9a) suggesting the horizontal scrolling or display
of display elements.
The Examiner also indicates that Robertson discloses displaying
multiple menus of “descriptor filter criteria” with corresponding
“characterizing descriptors (see, e.g., Fig. 38, elements 706/712 and 724,
respectively). Robertson, like Ellis, also discloses that elements may be
displayed in a variety of formats and orientations (e.g., col. 9, ll. 55-58 –
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“the results from a query can be displayed integrated with the search terms,
interleaved with the headings and sub-headings”; col. 22, ll. 9-12 – “A
results pane thus can be reconfigured to present results in a format designed
to correspond to the type of information (or command) being sought by the
user; or col. 24, ll. 22-23 – “various relationships between results for a
current filter can be presented in a variety of ways”). Hence, Robertson
discloses an explicit example of displaying at least two lists of “descriptor
filter criteria” and corresponding “characterizing descriptors,” the
“descriptor filter criteria” lists being in a vertical format, but that the display
of elements can be “reconfigured” to other formats as needed.
Based on Ellis and Robertson, we agree with the Examiner that it
would have been obvious to one of ordinary skill in the art to have displayed
“descriptor filter criteria” with corresponding results, as disclosed by both
Ellis and Robertson, and to have displayed the filter criteria and results in a
any of a number of formats, as suggested by both Ellis and Robertson at
least because Ellis and Robertson appear to provide this explicit disclosure.
The Examiner also indicates that Billmaier discloses that elements
“may be displayed horizontally” (col. 11, ll. 40-41) and “simultaneously”
(col. 11, ll. 33-34). Billmaier further provides an example of displaying
elements in horizontal rows (see, e.g., Figs. 9 and 10). We agree with the
Examiner that the combination of the display of multiple descriptor filter
criteria and corresponding characterizing descriptors either vertically or in
any number of formats known to one of ordinary skill in the art (as
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disclosed, for example, by Ellis and/or Robertson) and to have further
displayed the elements in horizontal rows (e.g., Billmaier discloses that a
known format for display of elements is in a horizontal orientation – see,
e.g., Figs. 9 and 10) would have been obvious. Such a combination would
have entailed no more than the mere combination of known elements,
performing their known functions (i.e., the known practice of displaying
known elements in a variety of formats (Ellis and Robertson) with the
disclosure that one known orientation to display elements is in a horizontal
format (Billmaier)) to achieve the predictable result of displaying elements.
Appellants argue that “Billmaier does not disclose [displaying
elements] in the same ‘horizontal row’” (App. Br. 12). We disagree with
Appellants, given the explicit disclosure of Billmaier of displaying elements
“horizontally” (col. 11, ll. 40-41).
Appellants also argue that “there is no correlation between
information in the quadrants of Billmaier because the quadrants are ‘used for
various purposes’” (App. Br. 12). We disagree with Appellants. Appellants
do not adequately explain how information that is “used for various
purposes” indicates that “there is no correlation between” the information.
In any event, even assuming Appellants’ contention to be correct that
information used for various purposes bears no correlation with itself,
Appellants do not sufficiently demonstrate that both Ellis and Robertson fail
to disclose or suggest information that correlates with itself (or other
information). As described above and pointed out by the Examiner,
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Robertson, for example, discloses characterizing descriptor filter criteria and
corresponding results, the results “corresponding” (or “correlating”) with the
filter criteria since the displayed results are obtained based on the criteria.
Appellants also argue that Billmaier discloses display elements that
“are not ‘user-selectable’” (App. Br. 13). Even assuming Appellants’
assertion to be correct, Appellants have not adequately demonstrated that the
display elements in Robertson and Ellis are not “user-selectable.” As
described above, and as indicated by the Examiner, the display elements in
both Robertson and Ellis are selected by a user and are therefore “user-
selectable.”
Appellants do not provide additional arguments in support of claims
2-9, 11, 13-17.
Conclusion of Law
The Examiner did not err in rejecting claims 1-17 under 35 U.S.C. §
103(a).

SUMMARY
We affirm the Examiner’s rejection of claims 1-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

rvb